Ex parte Mathias

The opinion in support of the decision being entered today was not written for publication and is
not binding precedent of the Board.
UNITES STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES 	. .
Ex parte HERMAN MATHIAS
Appeal No. 2005- 1851
Application 0916 12,788
HEARD
August 10,2005
Before THOMAS, BLANKENSHIP, AND MACDONALD, Administrative Patent Judges.
Per curiam.
L
MA1LED
AUG 1' 9 2005 	.
PAT. & T.M OFF ICE
BOARD OF PATENT APPEALS
AND INTERFERENCES	Z
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-25 and 27-30. Claim 26
has been canceled.
We AFFIRM.
&

Appeal No. 2005- 1851
Application 09/612,788
Invention
Appellant's invention relates to an on-screen icon and method for producing said icon
where the icon provides for viewing scores of team sports contests, comprising an on-screen,
scoreboard-style insert displayed in conjunction with a televised image of the sporting event.
Appellant's specification at page 2, lines 21-23.
Claim 1 is representative of the claimed invention and is reproduced as follows:
1. An on-screen icon for viewing the score of a broadcast sporting event between
contestants having color uniforms, comprising:
a on-screen, scoreboard style insert displayed over the broadcasted image
of the sporting event, wherein said insert provides a first section for displaying the
name and score of the first contestant and provides a second section for displaying
the name and score of the second contestant, and
wherein the first and second sections appears on the icon in a color
scheme that is selected to substantially match at least one color of the uniform of
each contestant.
References
The references relied on by the Examiner are as follows:
Mantha 	6,137,487 	October 24,2000
(Filed February 24, 1997)
AMERICAN GLADIATORS O 1991 (hereinafter AG- 1991) on compact disk and screen
shots on paper.
Applicant's Admitted Prior Art in the Background of the Invention (AAPA).
Rejections At Issue
Claims 1, 4, 21, 22,25,27,28, and 30 stand rejected under 35 U.S.C. § 102 as being
anticipated by AG- 1991.

Appeal No. 2005- 1851
Application 0916 12,788
Claims 2, 11, 12, 14,23, and 24 stand rejected under 35 U.S.C. 9 103 as being obvious
over the combination of AG-1991 and AAPA.
Claims 3, 5-10, 13, 15-20, and 29 stand rejected under 35 U.S.C. 9 103 as being obvious
over the combination of AG- 1991 and anth ha.]
Throughout our opinion, we make references to the Appellant's briefs, and to the
Examiner's Answer for the respective details t h e r e ~ f . ~
OPINION
With full consideration being given to the subject matter on appeal, the Examiner's
rejections and the arguments of the Appellant and the Examiner, for the reasons stated infra, we
affirm the Examiner's rejection of claims 1,4, 21,22,25, 27,28, and 30 under 35 U.S.C. 8 102,
and we affirm the Examiner's rejection of claims 2,3,5-20, 23, 24, and 29 under
35 U.S.C. 5 103.
Only those arguments actually made by Appellant have been considered in this decision.
Arguments that Appellant could have made but chose not to make in the brief have not been
considered. We deem such arguments to be waived by Appellant [see 37 CFR 5 41.37(c)(l)(vii)
effective September 13, 2004 replacing 37 CFR 3 1.192(a)].
Appellant has indicated that for purposes of this appeal the claims stand or fall together in
two groupings:
' The Examiner lists claims 13 and 15-20 together with claims 3, 5-10, and 29 as rejected on the
same grounds. We note that the grounds of rejection of claims 13 and 15-20 should include all
the references applied to claim 11 from which they depend. Given Appellant has not complained
of the Examiner's oversight, Appellant has waived the right to raise that issue.
Appellant filed an appeal brief on June 28, 2004. Appellant filed a reply brief on April 25,
2005. The Examiner mailed an Examiner's Answer on March 10,2005.

Appeal No. 2005- 1851
Application 0916 12,788
Claims 1- 10,21-22,25, and 27-30 as Group I; and
Claims 11-20 and 23-24 as Group 11.
See page 4 of the brief. Appellant argues each group of claims separately and explains why the
claims of each group are believed to be separately patentable. 	Further, Appellant separately
argues the rejections that rely on the Mantha reference (Claims 3, 5-10, 13, 15-20, and 29). See .
pages 19-21 of the brief. Appellant has fully met the requirements of 37 CFR 5 1.192 (c)(7)
(July 1, 2002) as amended at 62 Fed. Reg. 53169 (October 10, 1997), which was controlhg at
the time of Appellant's filing of the brief. 37 CFR 5 1.192 (c)(7) states:
Grouping of claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the
Board shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of that claim
alone unless a statement is included that the claims of the group do
not stand or fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the claims of the
group are believed to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as to why
the claims are separately patentable.
We will, thereby, consider Appellant's claims as standing or falling together in four groups based
on the grounds of rejection and Appellant's arguments, and we will treat:
Claim 1 as a representative claim of Group I (claims 1, 4, 21, 25, 27, 28, and 30);
Claim 2 as a representative claim of Group I1 (claim 2);
Claim 1 1 as a representative claim of Group I11 (claim 11, 12, 14, and 23-24); and
Claim 3 as a representative claim of Group IV (claims 3, 5-10, 13, 15-20,,and 29).
If the brief fails to meet either requirement, the Board is free to select a single claim from each
group and to decide the appeal of that rejection based solely on the selected representative claim.

Appeal No. 2005- 1851
Application 09/612,788
In re McDaniel, 293 F.3d 1379, 1383,63 USPQ2d 1462,1465 (Fed. Cir. 2002). See also In re
Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. 	Whether the Rejection of Claims 1,4,21,25,27,28, and 30 Under
35 U.S.C. $ 1 0 2 is proper?
It is our view, after consideration of the record before us, that the disclosure of AG-1991
does fully meet the invention as recited in claims l , 4 , 21,25, 27, 28, and 30. Accordingly, we
affirm.
With respect to independent claim 1, Appellant argues at pages 10-13 of the brief and
pages 2-8 of the reply brief, that in AG-1991, the insert is not "displayed over the broadcasted
image of the sporting event" as required by claim 1. Rather, Appellant contends "these updates
appear on the viewing screen only during commercial breaks, during breaks for interviews or
after the competition had ceased." For purposes of our decision we will treat Appellant's
argument above as being persuasive as to the teaching of the AG-1991 prior art. However, even
accepting this as a given, we find Appellant's overall argument ~ n ~ e r s u a s i v e . ~
It is axiomatic that anticipation of a claim under 8 102 can be found only if the prior art
reference discloses every element of the claim. See In re King, 801 F.2d 1324, 1326,231 USPQ
136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,485 (Fed. Cir. 1984). I
In our review of the AG- 1991 reference, we find the reference teaches everything recited
in claim 1 except the limitation "sporting" as argued by Appellant. We note that Appellant does
We also note that it appears to us that a strong case can be made that a broadcasted sporting
event includes commercial breaks, interview breaks, and the period immediately after the
competition has ceased.

Appeal No. 2005-1851
Application 0916 12,788
not argue otherwise. Specifically, Appellant does not argue that AG-1991 fails to teach the
insert is displayed over the broadcasted image of an event (contestant interview). Rather,
Appellant argues AG-1991 fails to teach the event is a sporting event at the time of the display of
the insert. 	As previously stated, we will take as a given that in AG-1991 the broadcasted
television program image (nonfunctional descriptive material) is an event, but not a sporting
event. 	Therefore, AG-1991 does not explicitly teach nonfunctional descriptive material in the
form of a sporting event. However, our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise been anticipated by
. 	the prior art. In re Ngai, 367 F.3d 1336, 1339,70 USPQ2d 1862,1864 (Fed. Cir. 2004). Cf. In
re Gulack, 703 F.2d 1381, 1385,217 USPQ 401,404 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material will not distinguish
the invention from the prior art in terms of patentability).
Common situations involving nonfunctional descriptive material are:
- a computer-readable storage medium that differs from the prior art solely with
respect to nonfunctional descriptive material, such as music or a literary work,
encoded on the medium,
- a computer that differs from the prior art solely with respect to nonfunctional
descriptive material that cannot alter how the machine functions (i.e., the
descriptive material does not reconfigure the computer), or
- a process that differs from the prior art only with respect to nonfunctional
descriptive material that cannot alter how the process steps are to be performed to
achieve the utility of the invention.

Appeal No. 2005- 1851
Application 091612,788
Thus, if the prior art suggests storing a song on a disk, merely choosing a particular song to store
on the disk would be presumed to be well within the level of ordinary skill in the art at the time
the invention was made.
We agree with the Examiner that the prior art anticipates claim 1 because it teaches each
and every limitation of the claim. The difference between the prior art and the claimed invention
is simply a rearrangement of nonfunctional descriptive material (the particular broadcasted
image). Therefore, we will sustain the Examiner's rejections under 35 U.S.C. 8 102 and
35 U.S.C. !j 103.
11. 	Whether the Rejection of Claim 2 Under 35 U.S.C. $ 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would have suggested to one of ordinary skill in the art
the invention as set forth in claim 2. Accordingly, we affirm.
With respect to dependent claim 2, Appellant presents no arguments in addition to those
presented for claim 1. We have addressed those arguments above, and have found them to be
unpersuasive.
Therefore, we will sustain the Examiner's rejection under 35 U.S.C. 5 103.

Appeal No. 2005- 1851
Application 091612,788
ItI. 	Whether the Rejection of Claims 11,12,14, and 23-24 Under 35 U.S.C. 	103 is
proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would have suggested to one of ordinary skill in the art
the invention as set forth in claims 1 1, 12, 14, and 23-24. Accordingly, we affirm.
In rejecting claims under 35 U.S.C. 5 103, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443,1444 (Fed. Cir.1992). See also In re Piasecki, 745 F.2d 1468, 1472,223 USPQ
785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing that some objective
teaching in the prior art or knowledge generally available to one of ordinary skill in the art
suggests the claimed subject matter. In r e Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the Appellant. Oetiker, 977 F.2d at 1445,24 USPQ2d at 1444.
See also Piasecki, 745 F.2d at 1472,223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the pertinent
evidence and arguments. ''In reviewing the [Elxarniner's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." 	Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. "[Tlhe Board must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are deemed to support the
agency's conclusion." 	In r e Lee, 277 F.3d 1338,1344,61 USPQ2d 1430, 1434 (Fed. Cir.
2002).

Appeal No. 2005- 1851
Application 091612,788
With respect to dependent claim 11, at pages 16-19 of the brief, Appellant again argues
the "sporting event" distinction discussed above. We again find the argument unpersuasive for
the reasons noted above.
Appellant also argues on page 18-19, that the selection step is neither shown nor
suggested by the AAPA or by the prior art reference cited by the Examiner. Notwithstanding
Appellant's arguments to the contrary, Appellant admits at lines 12-16 of page 19, "the [AG-
19911 reference could be combined with the admitted prior art [AAPA] to reject the claims at
issue" if Appellant were claiming as his invention "using color coded icons during intermissions
in the broadcast of sporting events." 	Gwen we have already held that there is no patentable
difference between a broadcasted image of an interview (during intermission) and the
broadcasted image of a sporting event, and Appellant admission that the references could be
combined to reject "using color coded icons during intermissions in the broadcast", we take this
as an admission that the rejection is correct.
Therefore, we will sustain the Examiner's rejection under 35 U.S.C. 8 103.
IV. 	Whether the Rejection of Claims 3,s-10,13,15-20, and 29 Under 35 U.S.C. 	103
is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would have suggested to one of ordinary skill in the art
the invention as set forth in claims 3, 5-10, 13, 15-20, and 29. Accordingly, we affirm.
With respect to dependent claim 3, Appellant argues at pages 19-21 that it is not
reasonable to combine Mantha with the AG- 1991 reference.

Appeal No. 2005- 1851
Application 09/612,788
In our review of the references, we find AG-1991 teaches the background (nonfunctional
descriptive material) on the icon is color-coded to a uniform color of a contestant. 	AG-1991
does not explicitly teach nonfunctional descriptive material in the form of letters representing
each contestant name can be color-coded. However, as previously discussed, nonfunctional
descriptive material cannot lend patentability to an invention that would have otherwise been
taught by the prior art. We find that since AG-1991 teaches nonfunctional descriptive material
on the icon is color-coded to a uniform color of a contestant, AG-1991 teaches all the limitations
of claim 3.
It is our view that Mantha is merely cumulative to the teachings of AG-1991. Therefore,
Mantha is not necessary for a proper rejection under 35 U.S.C. 5 103 of representative claim 3,
as AG-1991 discloses all that is claimed. A disclosure that anticipates under 35 U.S.C. 8 102
also renders the claim unpatentable under 35 U.S.C. 5 103, for "anticipation is the epitome of
obviousness." Jones V. Hardy, 727 F.2d 1524, 1529,220 USPQ 1021,1025 (Fed. Cir. 1984).
See also In r e Fracalossi, 681 F.2d 792,794,215 USPQ 569,571 (CCPA 1982); In r e Pearson,
494 F.2d 1399, 1402, 181 USPQ 641,644 (CCPA 1974).~Accordingly, the Examiner's
obviousness rejection of representative claim 3 is sustained based on AG- 1991 alone.
Alternatively, since AG-1991 teaches all the limitations' of claim 3 as discussed above, its
teachings provide more than sufficient basis to combine the cumulative teachings of Mantha with
the AG- 1991 reference in a rejection under 35 U.S.C. 5 103.
Therefore, we will sustain the Examiner's rejection under 35 U.S.C. 8 103.
The Board may rely on less than all of the references applied by the Examiner in an
obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d
491,496, 131 USPQ 263,266-67 (CCPA 1961); In re Boyer, 363 F.2d 455,458 n.2 150 USPQ
441,444 n.2 (CCPA 1966).

Appeal No. 2005- 1851
Application 0916 12,788
Conclusion
In view of the foregoing discussion, we have sustained the rejection under
35 U.S.C. 8 102 of claims 1,4, 21, 22, 25, 27, 28, and 30; and we have sustained the rejections
under 35 U.S.C. 8 103 of claims 2, 3,5-20,23,24, and 29.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR 8 1.136(a)(l)(iv).
AFFIRMED
BOARD OF PATENT
) 	APPEALS AND
Administrative Patent Judge 	) 	INTERFERENCES
1
ALLEN R. MACDONALD 	)
Administrative Patent Judge 	1

Appeal No. 2005- 1851
Application 0916 12,788
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