Ex Parte August et al

Patent Trial and Appeal Board

Dec 31, 2012

10197470 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/197,470 07/18/2002 Katherine G. August 129250-001039/US 9799
32498 7590 01/02/2013
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
LO, WEILUN
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
01/02/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KATHERINE G. AUGUST, DANIEL D. LEE and
MICHAEL POTMESIL
____________

Appeal 2010-004399
Application 10/197,470
Technology Center 2100
____________

Before RICHARD TORCZON, SALLY C. MEDLEY and
KRISTEN L. DROESCH, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2010-004399
Application 10/197,470

2
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 2, 4-13 and 15-221. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ disclosed invention is related to a system and method for
visually communicating the meaning of information to the hearing impaired
with a graphical display of sign language animations. (Figs. 1-2, Abs., Spec.
pp. 2-5).
Independent claims 1 and 12 are illustrative and are reproduced below
(disputed limitations in italics):
1. A system for visually communicating information to
the hearing impaired comprising:
an association unit adapted to:
associate each information element with its known
sign language symbol; and
generate an animation which comprises an avatar
uniquely representing and identifying a user of the system
visually signing a new sign language symbol to the receiver
for each element not associated with a known sign language
symbol, wherein each element not associated with a known
sign language symbol is weighted according to its
contribution to the overall meaning of the information to be
communicated.

1 Claims 3 and 14 have been cancelled. The Notice of Appeal indicates that
the Examiner’s final rejection of claims 1, 2, 4-13 and 15-22 is appealed. In
contrast, the Appeal Brief indicates that claim 22 is withdrawn from
consideration on Appeal. App. Br. 1, 3, 4 and 8. Since Appellants’ Notice of
Appeal includes claim 22, and Appellants’ Reply Brief refers to that claim as
well, we treat all of claims 1, 2, 4-13 and 15-22 as subject of the Appeal.
Appeal 2010-004399
Application 10/197,470

3
12. A method for visually communicating information to
the hearing impaired comprising:
associating each information element with its known sign
language symbol; and
generating an animation which comprises an avatar
uniquely representing and identifying a user of the system
visually signing a new sign language symbol for each element
not associated with a known sign language symbol to the
receiver, wherein each element not associated with a known
sign language symbol is weighted according to its contribution
to the overall meaning of the information to be communicated.

Rejections
Claims 12 and 15-22 stand rejected under 35 U.S.C. § 101 as being
drawn to nonstatutory subject matter.
Claims 1, 2, 4-13 and 15-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Greene (US 6,377,925 B1,
Apr. 23, 2002), Ikeda (US 5,990,878, Nov. 23, 1999), Berger (US
5,510,981, Apr. 23, 1996) and Bravin (US 7,333,507 B2, Feb. 19, 2008).
ISSUES
Did the Examiner err in determining that the invention recited in
independent claims 12 and 22 is drawn to nonstatutory subject matter?
Did the Examiner err in determining that the combined teachings of
Greene, Ikeda, Berger and Bravin teach or suggest “an avatar uniquely
representing and identifying a user of the system,” as recited in independent
claims 1, 12 and 22?
Appeal 2010-004399
Application 10/197,470

4
ANALYSIS
§ 101
Applying the machine-or-transformation test set forth in In re Bilski,
545 F.3d 943 (Fed. Cir. 2008), the Examiner finds that claims 12 and 15-22
do not recite a process of transformation nor tie the process to another
statutory class by reciting a machine. Final Office Action (“FOA”) 2; Ans.
2-4. Specifically, the Examiner explains that the “generating an animation
which comprises an avatar . . .” limitation of claim 12 does not limit the
process step to a specific machine and at best represents a step for creating
data or a drawing to depict something. Ans. 22.
Appellants initially argue that the Examiner erred because the
Examiner does not indicate that the claims are directed at a fundamental
principle or mental process before applying the machine-or-transformation
test and thus failed to satisfy the fundamental principle requirement of In re
Bilski. App. Br. 4-5; Reply Br. 1; see also Reply Br. 4-5. Appellants’
arguments are unpersuasive. We are unaware of, and Appellants do not
direct us to persuasive authority in support of, a requirement for an initial
fundamental principle inquiry.
Appellants further argue that even if the fundamental principle prong
of In re Bilski is satisfied, the claims satisfy the machine-or-transformation
test. App. Br. 5. While we recognize that the machine-or-transformation test
is not the sole test for determining subject matter eligibility, it is nonetheless
an important clue and the only factor at issue in the Appeal before us. See
Bilski v. Kappos, 130 S. Ct. 3218, 3321 (2010).
Appellants argue that the claims satisfy the second prong of the
machine-or-transformation test. App. Br. 6-7; Reply Br. 2-4. Specifically,
Appeal 2010-004399
Application 10/197,470

5
Appellants assert that: (1) “the associating step necessarily transforms
‘information elements’ into ‘known sign language symbol(s)’”; and (2) “the
generation step transforms each information element that cannot be so
associated into an avatar that uniquely represents and identifies a user of the
system visually signing a new sign language symbol.” App. Br. 7; see also
Reply Br. 3-4. Appellants further assert that the generation of an animation
is an electronic transformation of specific data into a visual depiction of a
specific physical object/substance. App. Br. 7.
Appellants’ arguments are unpersuasive. Appellants do not
meaningfully explain how making an association between each information
element with a known sign language symbol necessitates a transformation of
the information elements. Rather than require a transformation, the
association between the information elements with known sign language
symbols may broadly include the human thought process of correlating an
information element with a known sign language symbol. Appellants also do
not meaningfully explain how the generating an animation step necessarily
involves a transformation of an information element. We agree with the
Examiner that generating an animation broadly includes a step for creating
data or a drawing to depict something. See Ans. 22. We further agree with
the Examiner that an animation can be generated by an artist drawing each
step of a fictional person performing a visual sign and then displaying the
pages at a given speed to another user (i.e., a flip book animation). Ans. 22-
23.
Appeal 2010-004399
Application 10/197,470

6
For all these reasons, we sustain the rejection of claim 122 and
dependent claims 15-21, which have not been separately argued, as directed
to non-statutory subject matter. Appellants do not present arguments
separately addressing independent claim 22. See footnote 1 supra.
Accordingly, we summarily affirm the Examiner’s rejection of independent
claim 22 as directed to non-statutory subject matter. We note that claim 22
has substantially identical limitations to the limitations at issue for claim 12.3
§ 103
The Examiner does not rely upon the combination of Greene, Ikeda,
and Berger for teaching or suggesting “an avatar uniquely representing and
identifying a user of the system,” as recited in independent claims 1, 12 and
22. FOA 3-7; Ans. 4-9. The Examiner relies on Bravin for describing a sign
language generator that presents an avatar including a torso, arms, hands and
head where the avatar may have gender, age, ethnicity and general
appearance characteristics to positively identify the speaker to another. FOA
6; Ans. 8. The Examiner directs attention to Bravin’s suggestion that the
sign language generator can allow the user to specify how the avatar is

2 The Examiner withdrew the rejection of claim 13, stating that the recitation
“displaying of the animation” ties the method to another statutory class of
invention. Ans. 2. In the event of further prosecution, we invite the
Examiner to reconsider the withdrawal of the rejection since the scope of
“displaying the avatar and the known sign language symbols” recited in
claim 13 may include the Examiner’s example of a flip book animation. Cf.
Ans. 22-23.
3 The additional limitation in claim 22 of “communicating a receiver’s signs
with at least two other users via one or more handheld devices,” can be
broadly interpreted according to the Examiner’s example of displaying
animation pages of a flip book (i.e., handheld device) at a given speed.

Appeal 2010-004399
Application 10/197,470

7
shown through the avatar font 74. FOA 7; Ans. 8-9 (citing Bravin col. 6, ll.
20-35; Figs. 5-6). The Examiner further explains that the general appearance
settings of the avatar allow for hair color, hair length, skin tone, eye color,
eye shape, nose shape and mouth shape to be set by the user. Ans. 24 (citing
Bravin col. 5, ll. 5-31).
Appellants argue that to the extent that a user in Bravin can customize
an avatar, such customizations are not unique and are limited to general
physical characteristics; multiple users are allowed to select the same
general characteristics and form the same generic avatar. App. Br. 8; Reply
Br. 6. Appellants also argue that the Examiner’s interpretation of unique
characteristics is inconsistent with the specification which discloses that “a
user can provide a representation of himself or herself to be used in the
avatar, or as the avatar,” which necessarily includes unique not generalized
characteristics of the user. App. Br. 8-9 (citing Spec. ¶ 0035). Appellants
further assert that the claimed invention is not obvious because an avatar
uniquely representing and identifying a user cannot be generated without
extraordinary skill, or without referring to Appellants’ Specification, and
asserts that the modeling of facial expressions in a generic avatar is
particularly difficult. Reply Br. 6-7.
Appellants’ arguments are unpersuasive. We decline to interpret “an
avatar uniquely representing the user” as narrowly as Appellants wish such
that it includes the modeling of facial expressions. Appellants do not direct
us to objective evidence, such as an express definition in Appellants’
Specification, to demonstrate that “an avatar uniquely representing the user”
necessarily includes modeling of facial expressions. Moreover, Appellants
do not direct us to a disclosure in the Specification which provides sufficient
Appeal 2010-004399
Application 10/197,470

8
insight regarding the specificity or uniqueness of the representation that can
be provided by the user. See Spec ¶ 0035.
Consistent with the Examiner’s findings, we broadly construe “an
avatar uniquely representing the user” to include an avatar that can be
modified by the user to specify gender, age group, ethnicity and general
appearance which may include, hair color, hair length, skin tone, eye color,
eye shape, nose shape and mouth shape, such as the avatar described by
Bravin. See Bravin col. 6, ll. 25-32. Our interpretation of “an avatar uniquely
representing the user” is consistent with Appellants’ Specification which
merely discloses that a user can provide a representation of himself or
herself to be used in the avatar or as the avatar.
For all these reasons, we sustain the rejection of claims 1, 2, 4-13 and
15-21 as obvious over Green, Ikeda, Berger and Bravin. Appellants do not
present arguments separately addressing independent claim 22. See footnote
1 supra. Accordingly, we summarily affirm the Examiner’s rejection of
independent claim 22 as obvious over Green, Ikeda, Berger and Bravin.
DECISION
We AFFIRM the rejection of claims 12 and 15-22 under 35 U.S.C.
§ 101.
We AFFIRM the rejection of claims 1, 2, 4-13 and 15-22 under 35
U.S.C. § 103(a).

AFFIRMED

Appeal 2010-004399
Application 10/197,470

9

msc