NORTHWEST ANALYTICS, INC.

Patent Trials and Appeals Board

Jun 1, 2021

2019006735 (P.T.A.B. Jun. 1, 2021)

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.
15/194,435 06/27/2016 Sebastian Rapport 405427-0024 7980
20575 7590 06/01/2021
Miller Nash LLP
3400 U.S. Bancorp Tower
111 SW Fifth Avenue
Portland, OR 97204
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
06/01/2021 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):
eofficeaction@appcoll.com
patdocketing@millernash.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SEBASTIAN RAPPORT and
RICHARD SCOTT INSLEY
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Appeal 2019-006735
Application 15/194,435
Technology Center 2100
________________

Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

MORGAN, 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 1–21. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Northwest Analytics, Inc. Appeal Br. 3.
Appeal 2019-006735
Application 15/194,435

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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to a system that includes “a
screen data capture module to capture screen data in a window having a
window privacy setting presented to a user on a display device.” Abstract.
ILLUSTRATIVE CLAIM
(disputed limitations emphasized and bracketing added)
1. A system for creating collections having one or more
content types, comprising:
a display module configured to present a plurality of windows
to a user on a screen of a display device;
[1] a screen data capture module configured to capture first
screen data corresponding to a first area of the screen using a
first recording parameter, the screen data capture module
being further configured to capture second screen data
corresponding to a second area of the screen using a second
recording parameter, the second area of the screen being
distinct from the first area of the screen, and the second
recording parameter having a different value than the first
recording parameter;
a mixed-media collection (MMC) creation module configured
to create an MMC, the MMC incorporating at least some of the
first screen data and at least some of the second screen data; and
an MMC storage module configured to store the MMC.
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Application 15/194,435

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REFERENCES
The Examiner relies on the following references:
Name Reference Date
Clapper US 2003/0107584 A1 June 12, 2003
Nakamura US 2008/0084504 A1 Apr. 10, 2008
Hull et al. (“Hull”) US 7,672,543 B2 Mar. 2, 2010
REJECTIONS2
The Examiner rejects claims 1, 3–19, and 21 under 35 U.S.C. § 103(a)
as obvious over Hull and Nakamura. Final Act. 5–8.
The Examiner rejects claims 2 and 20 under 35 U.S.C. § 103(a) as
obvious over Hull, Nakamura, and Clapper. Final Act. 8–9.
ANALYSIS
In rejecting claim 1 as obvious, the Examiner finds that Hull’s
capturing of multimedia clips combined with Nakamura’s use of different
parameters in regions of a screen when superimposing a plurality of
foreground images onto a background image teaches or suggests recitation
[1]:
a screen data capture module configured to capture first screen
data corresponding to a first area of the screen using a first
recording parameter, the screen data capture module being
further configured to capture second screen data corresponding
to a second area of the screen using a second recording
parameter, the second area of the screen being distinct from the

2 The Examiner withdraws a rejection of claims 12–20 under 35 U.S.C.
§ 101. Ans. 8.
Appeal 2019-006735
Application 15/194,435

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first area of the screen, and the second recording parameter
having a different value than the first recording parameter.
Final Act. 5 (citing Hull 15:28–53; Nakamura ¶ 123). The Examiner
concludes that although “Hull does not spell out the ‘recording parameters’
as recited,” such recording parameters are “disclosed in Nakamura. Hence,
it would have been obvious to one of ordinary skill[] in the art at the time the
present invention was made to incorporate said feature of Nakamura into
Hull to enhance its display screen data capturing functions.” Id. at 6;
Ans. 8–9.
Appellant contends the Examiner erred because “[t]he effect switchers
of Nakamura . . . are unrelated to capturing any screen data at all. Rather,
Nakamura only describes superimposing foreground images onto a
background image based on a key fill signal and a key source signal.”
Appeal Br. 11. Appellant argues the Examiner fails to provide a “reason why
a person of ordinary skill in the art would look to Nakamura and pull a small
section of Nakamura that teaches placing foreground images on background
images using key fill signals and key source signals, and combine that with
the teachings of Hull.” Reply Br. 2. Appellant emphasizes that the
“parameters” of Nakamura have nothing to do with capturing
image data, and therefore cannot be combined to alleged teach
“a screen data capturing module configured to capture first
screen data corresponding to a first area of the screen using a
first recording parameter,” and “the screen data capture module
being further configured to capture second screen data
corresponding to a second area of the screen using a second
recording parameter.”
Id. at 3.
Appellant’s arguments are persuasive. The Examiner finds that
Nakamura “is cited for the ‘parameters’ for different regions of the screen,
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Application 15/194,435

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not for the screen data capturing.” Ans. 9. But the Examiner’s findings and
analysis fail to identify a reason having a rational underpinning why an
artisan of ordinary skill would have combined Nakamura’s use of different
parameters in different regions of a screen to superimpose a plurality of
foreground images onto a background image with Hull’s capturing of
multimedia clips in the manner of claim 1. The Examiner concludes that
such a combination would enhance Hull’s “display screen data capturing
functions.” Id. But the Examiner does not show that an artisan of ordinary
skill, relying on the teachings and suggestions of Hull and Nakamura, would
have recognized such enhancements could be realized but for reliance on the
teachings of the present application itself. Thus, the Examiner’s findings and
analysis fail to show, absent impermissible reliance on hindsight reasoning,
that claim 1, including disputed recitation [1], would have been obvious
based on the teachings and suggestions of Hull and Nakamura. Moreover,
the Examiner does not show that Clapper cures the noted deficiency of Hull
and Nakamura.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejections of claim 1, and claims 2–20, which have similar recitations.
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Application 15/194,435

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CONCLUSION
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–19, 21 103(a) Hull, Nakamura 1, 3–19,
21
2, 20 103(a) Hull, Nakamura,
Clapper
2, 20
Overall
Outcome
1–21

REVERSED