Ex Parte van Rijn

Board of Patent Appeals and Interferences

Jul 14, 2011

11145505 (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/145,505 06/02/2005 Percy van Rijn PA3292REI 2929
22830 7590 07/14/2011
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
07/14/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PERCY VAN RIJN
____________

Appeal 2011-006772
Application 11/145,505
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006772
Application 11/145,505

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 25-34. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for an internet message
system. (Specification 1:10-11).
Claim 25, reproduced below, is representative of the subject matter on
appeal.

25. A system for generating a personalized video message
comprising: a camera configured to generate a motion video
image of a user; a microphone configured to generate audio
data provided by the user; a computing device coupled to the
camera and to the microphone, the computing device hosting a
messaging module stored in memory that is executable by a
processor to activate the camera and the microphone upon
receiving a user selection corresponding to generating a
personalized video message via user input to the computing
device;
a database coupled to the messaging module and storing audio
and visual messages, wherein the messaging module is further
executable to return to pre\- recorded audio and visual messages
when the user selection is not received within a specified time
period;
a data management module stored in memory and executable
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by a processor to store the motion video data and the audio data
in memory, the motion video data and the audio data
comprising a portion of a personalized video message; and
a network interface configured to establish a connection to a
network from a plurality of networks and transmit the
personalized video message stored in memory over the
network, the personalized video message transmitted to a
recipient via the plurality of networks, wherein at least one of
the plurality of networks is a wireless network.

The Examiner relies upon the following as evidence of
unpatentability:
Baber US 5,343,386 Aug. 30, 1994
Buckley US 5,561,604 Oct. 1, 1996
Ludwig US 5,689,641 Nov. 18, 1997
Tullis US 5,802,314 Aug. 30, 1998

The following rejections are before us for review.
The Examiner rejected claims 25-27 under 35 U.S.C. § 103(a) over
Ludwig in view of Buckley.
The Examiner rejected claims 28-31 under 35 U.S.C. § 103(a) over
Tullis in view of Buckley.
ISSUE
The issue of obviousness turns on whether a person with ordinary skill
in the art would understand that given that Buckley discloses sound and
graphics are inextricably connected with one another in its system, that an
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invitation message generated by the system would, by inference, have both
visual and audio components?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
We adopt the Examiner’s findings as set forth on pages 4-31.

ANALYSIS
We affirm the rejections of claims 25-34.
Appellant’s arguments against each of claims 25, 26, 27 and 28, 30 31
are based on perceived deficiencies of Buckley. Inasmuch as Appellant
raises the same issues with respect to each of these claims, we discuss them
together, addressing each of Appellant’s arguments in turn.
Appellant argues that “… Buckley does not disclose “returning to pre-
recorded audio and visual messages” as required by the claims. (Appeal Br.
26).
The Examiner found that Buckley discloses "return[ing] to pre-
recorded audio and visual messages when the user selection is not received
within a specified time period" at column 11 lines 19 and 20. (Answer 9).
Here, Buckley discloses “[i]f he or she does not do so [(decide to purchase)]
after a certain time interval the operation reverts to the start condition.” We
further find that Buckley discloses at column 11, lines 13 and 14, “upon
touching the screen 11 an explanatory video is generated with associated
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sound ….” We read the explanatory video of Buckley as the start condition,
and hence find that the claim limitation is met by Buckley at these portions
of his disclosure.
Even if we were to read the invitation message in Buckley as the start
condition which invites the customer to touch the screen to obtain more
information as to the operation of the machine (col.11, ll. 9-10), the
Examiner has nevertheless made a number of findings (Answer 23-25)
showing that sound and graphics are inextricably connected with one
another in the system such that the invitation message by inference would
have both visual and audio components. See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). (In making the obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”)
Appellant next argues that with respect to the combination of Ludwig
and Buckley, “the Examiner has not provided a reasonable basis to conclude
that the person of ordinary skill would combine the references relied upon in
the Office Action.” (Appeal Br. 27).
We disagree with Appellant.
First, to the extent Appellant seeks an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418, 419 (2007).
Second, the Examiner found that “both references belong to the same
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field of endeavor and employ same elements.” (Answer 26). In addition, the
Examiner found that each reference discloses “a system comprising a
processor, a display and a memory configured to enable a customer to
generate a personalized messages/products. The only difference is the type
of software employed for certain operations.” (Answer 26).
Appellant does not challenge these findings.
Thus, left unchallenged these findings alone support our finding that
the references used in the combination under 35 U.S.C. § 103(a) are
analogous art. The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in order to
rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992).
As such, we find rationale support in the record for the combination
under 35 U.S.C. § 103(a) because the Examiner reasoned that because the
references share the same field of endeavor, it would be reasonable to
combine them. Id. (“[I]t is necessary to consider ‘the reality of the
circumstances,’ -in other words, common sense-in deciding in which fields a
person of ordinary skill would reasonably be expected to look for a solution
to the problem facing the inventor.” Id. (quoting In re Wood, 599 F.2d 1032,
1036 (CCPA 1979))). In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).

Appeal 2011-006772
Application 11/145,505

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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claim 25-34 under
35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 25-34 is AFFIRMED.

AFFIRMED.

MP