Marc Rashba

Patent Trials and Appeals Board

Dec 27, 2019

12784942 - (D) (P.T.A.B. Dec. 27, 2019)

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.
12/784,942 05/21/2010 Marc Rashba 200902899.02 9837
51518 7590 12/27/2019
MAYER & WILLIAMS PC
55 Madison Avenue
Suite 400
Morristown, NJ 07960
EXAMINER
HASAN, SYED Y
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
12/27/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@mwpatentlaw.com
kwilliams@mwpatentlaw.com
mwolf@mwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC RASHBA
Appeal 2018-004511
Application 12/784,942
Technology Center 2400
Before HUNG H. BUI, IRVIN E. BRANCH and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–11, 13, 14, 16–24, and 28–30.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as SONY
CORPORATION and SONY PICTURES ENTERTAINMENT INC.
Appeal Br. 2.
Appeal 2018-004511
Application 12/784,942
2
CLAIMED SUBJECT MATTER
Appellant describes the invention as relating to:
a technique for an interactive video system that allows a user to
place supplemental items such as images on a main image being
displayed. In one implementation, a user causes images of flying
food to be displayed on top of a playing movie. Supplemental
item data may be provided on the same media as is the main item
data, e.g., on an optical disc, and control information may be
provided on the media to control how supplemental item data is
applied and presented.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for enhancing a main item of video data
with a supplemental item, comprising:
a. a processor having a capability for executing
programming to implement playback of items of video data;
b. means for receiving video data for display;
d. storage means for storing data retrieved from a non-
transitory computer-readable medium or data received from a
network, or a combination of both types of data;
e. memory in communication with the video data
receiving means bearing computer readable instructions capable
of causing the video data receiving means to render and
playback a main item of video data, the main item of video data
including a series of images of video and to direct a signal
corresponding to the rendered played back video data to an
output jack; and
f. memory bearing computer-readable instructions
capable of causing a rendering of a supplemental item
superposed with the main item of video data during the
playback of the main item of video data, the supplemental item
including a series of images constituting an animation, the
rendering of the supplemental item in response to viewer input
Appeal 2018-004511
Application 12/784,942
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during playback, the viewer input choosing a location within
the main item of video data and a type of supplemental item to
be rendered, the type of supplemental item selected from a list
or a menu, and wherein the memory bearing computer readable
instructions capable of causing a rendering of a supplemental
item renders the supplemental item in two phases, a first phase
being an initial transitory animation, followed by a second
phase being a persistent or stationary image, and further
comprising memory in communication with the video data
receiving means bearing computer readable instructions capable
of causing the rendering of a removal of the supplemental item
and the directing of a signal corresponding to the rendering of
the removal to the output jack.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Schneider US 2003/0192049 A1 Oct. 9, 2003
McIntire US 2007/0250901 A1 Oct. 25, 2007
Thomas US 2009/0210790 A1 Aug. 20, 2009
Maracic US 7,920,208 B2 Apr. 5, 2011

REJECTIONS2
1. Claims 1, 2, 5, 6, 8–11, 13, 14, 16, 18–20, 22, 24, and 28–30
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schneider and
McIntire. Final Act. 5–17.
2. Claims 3, 17, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schneider, McIntire, and Thomas. Final Act. 17–18.

2 We note there is a dispute as to whether this application benefits from an
earlier priority date (February 4, 2004) of a previously filed application.
Final Act. 5–6. We do not address this dispute because it does not affect the
merits of the rejections at hand, as all the relied upon references are dated
well before the claimed earlier priority date.
Appeal 2018-004511
Application 12/784,942
4
3. Claims 4 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schneider, McIntire, and Maracic. Final Act. 18–19.
OPINION
Claim 1
Claim 1 recites, inter alia:
“wherein the memory bearing computer readable instructions
capable of causing a rendering of a supplemental item renders
the supplemental item in two phases, a first phase being an initial
transitory animation, followed by a second phase being a
persistent or stationary image.”
The Examiner finds Figure 39 illustrates a first area that displays a
media stream and a second area displays supplemental content, which,
according to Examiner “points to a first phase and a second phase.” Ans. 23.
The Examiner further finds that McIntire’s disclosure of depicting the
filmography of an actress in response to a signal and also depicting an image
of a sweater that the actress is wearing teaches depicting an animation in the
first phase and a stationary image in the second phase. Ans. 25 (citing
McIntire ¶ 350).
Appellant argues3 “nowhere does McIntire show or suggest that the
‘advertisement’ of FIG. 39 follows the ‘entire animation’ referred to in
paragraph 156. That is, nothing in McIntire shows or suggests that the
supplemental information has two phases that are rendered in a particular

3 Appellant additionally argues that McIntire does not teach the
“superposed” limitation of claim 1. Appeal Br. 8. However, because the
identified argument is dispositive of the appeal, we do not reach the merits
of this additional argument.
Appeal 2018-004511
Application 12/784,942
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sequence. Rather, paragraph 156 simply makes a general statement that the
supplemental information may be an ‘entire animation’ and, in an entirely
unconnected and unrelated passage, McIntire shows one particular example
of supplemental information in the form of an advertisement.” Appeal Br. 8.
We are persuaded of Examiner error. We do not discern from the
disclosures of Figure 39 of McIntire and from its discussion of displaying
supplemental information in the form of an actress’ filmography and an
image of the sweater being worn that McIntire renders supplemental item in
two phases, where the first phase is transitory animation and the second is a
persistent or stationary image. In particular, we do not find sufficient
evidence that the actress’s filmography or the image of the sweater is a
transitory animation followed by a stationary image, nor has the Examiner
sufficiently explained how McIntire’s disclosure in this respect teaches how
the filmography and/or the image of the sweater teaches a transitory image
followed by a stationary image.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, or of independent claims 11 and 19, which contain
similar limitations and which were rejected on a similar basis. Final Act. 7,
11 and 14. For the same reason, we do not sustain the Examiner’s rejection
of claims 2–6, 8–10, 13, 14, 16–18, and 20–24 which depend from one of
claims 1, 11 or 19.
Claims 28, 29 and 30
Claims 28, 29 and 30 do not include either the “superposed” limitation
or the limitation requiring rendering of a supplemental item in “two phases,”
a first phase being an initial transitory animation, followed by a second
phase being a persistent or stationary image. See Appeal Br. 14–16 (Claims
Appeal 2018-004511
Application 12/784,942
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App.) Appellant’s arguments therefore do not apply to these claims. We,
therefore, summarily affirm the Examiner’s rejections of these claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 8–
11, 13, 14,
16, 18–20,
22, 24
103(a) Schneider,
McIntire
1, 2, 5, 6, 8–
11, 13, 14,
16, 18–20,
22, 24
28–30 103(a) Schneider,
McIntire
28–30
3, 17, 21 103(a) Schneider,
McIntire, Thomas
3, 17, 21
4, 23 103(a) Schneider,
McIntire, Maracic
4, 23
Overall
Outcome
28–30 1–6, 8–11,
13, 14, 16–
24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART