Appeal No. 2006-2208
Application No. 10/782,265
art would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. See
also In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998). Such evidence is required in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
Contrary to the Examiner’s assertion, the limitation of
claim 1 related to the primary words appearing differently within
the closed captioning text than the remaining secondary words
does require that the primary words be displayed in a way that
makes them look different from the other words within the closed
captioning text. Additionally, the specification provides
exemplary means for making some words appear differently such as
italicizing, changing font, color and/or size and even animated
effects (specification, page 5, second full paragraph).
Therefore, the claims require that the primary words have some
kind of attribute that makes their appearance different from that
of the non-primary words. In that regard, we find the Examiner’s
broad interpretation that every word appears differently from the
other words by the virtue of being merely different words to be
unreasonable. We also agree with Appellant (reply brief, page 2)
that the words are required to appear differently within the
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007