9051147 Canada Inc.

Patent Trials and Appeals Board

Jul 28, 2020

2019002837 (P.T.A.B. Jul. 28, 2020)

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.
15/262,995 09/12/2016 Alex Shah 092283.000986 1044
23377 7590 07/28/2020
BakerHostetler
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
PATEL, NIRAV G
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ALEX SHAH and CHARLES A. MYERS
_____________

Appeal 2019-002837
Application 15/262,995
Technology Center 2600
______________

Before JOSEPH L. DIXON, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. Because the 35 U.S.C. § 101 and obviousness-type double
patenting rejections of claims 3, 11, 12, and 18 have been withdrawn by the

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a).
According to Appellant, Avigilon Corporation, the parent company to
9051147 Canada Inc., is the real party in interest (Appeal Br. 1).
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Examiner (see Ans. 4), only the anticipation rejection of claims 1, 2, 4–10,
13–17, 19, and 20 is before us on appeal.2 We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention “relates to a method
and system for meta-tagging a collection of digital photos containing an
image of an individual or individuals” (Spec. ¶ 3). By using biometric facial
recognition software to measure facial features such as the distance between
the eyes, nose width, depth of eye sockets, and cheekbone/jaw/chin lines,
individuals can be identified in crowds by comparing images to a database
(see Spec. ¶¶ 4–8, 14). This allows a feature vector to be created for the
individual being searched for, and provides the ability to search a database
(e.g., a social networking web site or other database) of digital photos for
individuals having a matching feature vector (see Spec. ¶¶ 30, 31).
Appellant claims a system (claim 1), method (claim 9), and computer
readable medium with instructions to perform a method (claim 16) for
identifying an individual using a feature vector. Independent claims 1, 9,
and 16 have commensurate scope, and claim 1 is illustrative of the claimed
subject matter:
1. A system for identifying an individual, the system comprising:
a server configured to receive a first set of one or more
photos from a computing device, the first set of one or more

2 Although Appellant requests the allowability of claims 3, 11, 12, and 18
“be acknowledged by the Board” (Reply Br. 1), the proper venue for
evaluating the allowability of these claims is before the Examiner upon
further prosecution, if any.
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photos including at least one photo containing a facial image of
an individual; and
a database accessible to the server including a second set
of two or more photos corresponding to a plurality of existing
feature vectors of images of target individuals depicted in the
second set of two or more photos,
wherein the server is configured to process the first set of
one or more photos to generate a feature vector for the facial
image of the individual;
wherein the server is configured to compare the generated
feature vector to the plurality of existing feature vectors to find
an existing feature vector of an image of a target individual that
most closely matches the generated feature vector;
wherein the server, based on the closest match, is
configured to identify each photo among the second set of two or
more photos in which the image of the target individual is
present;
[A] wherein the server is configured to create a third set
of two or more photos that includes [A1] the at least one photo
containing the facial image of the individual and [A2] each photo
among the second set of two or more photos in which the image
of the target individual is present; and
wherein the server is configured to send the third set of
two or more photos to the computing device.

Appeal Br. 15, Claims Appendix (emphases and bracketed information
added).

EXAMINER’S REJECTIONS
(1) The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter, without significantly more
(see Final Act. 4). Because the Examiner has withdrawn this rejection in the
Answer (see Ans. 4; see also Reply Br. 1), we do not reach the merits or
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otherwise review this rejection in our decision, and we will not address
Appellant’s arguments (see Appeal Br. 5–12) directed thereto.
(2) Claims 1–20 stand rejected based on the judicially created doctrine
of non-statutory obviousness-type double patenting, over claims 1–10 of
Shah et al. (US 9,465,817 B2; issued Oct. 11, 2016). Final Act. 9. Because
the Examiner has withdrawn this rejection in the Answer (see Ans. 4; see
also Reply Br. 1), and a terminal disclaimer has been filed and approved, we
do not reach the merits or otherwise review this rejection in our decision.
(3) Claims 1, 3, 7–9, 11, 14–16, and 18 stand rejected based on the
judicially created doctrine of non-statutory obviousness-type double
patenting, over claims 1–10 of Myers et al. (US 8,798,321 B2; issued Aug.
5, 2014). Final Act. 9. Because the Examiner has withdrawn this rejection
in the Answer (see Ans. 4; see also Reply Br. 1), and a terminal disclaimer
has been filed and approved, we do not reach the merits or otherwise review
this rejection in our decision.
(4) The Examiner rejected claims 1, 2, 4–10, 13–17, 19, and 20 under
35 U.S.C. § 102(b) as being anticipated by Gokturk et al. (US 2006/0251292
A1; issued Nov. 9, 2006) (hereinafter, “Gokturk”). Final Act. 5–7; Ans. 4–
5. In the rejection of claims 1, 9, and 16, the Examiner cites Figures 6, 12,
and 16 and paragraphs 37, 61, 148, 268, 272, 273, and 282 of Gokturk (see
Final Act. 5–6; Ans. 4–5).

ISSUE ON APPEAL
Based on Appellant’s arguments (Appeal Br. 12–14; Reply Br. 1–2),
the following principal issue is presented:
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Did the Examiner err in rejecting claims 1–20 under 35 U.S.C.
§ 102(b) over Gokturk because the Examiner fails to show that Gokturk
discloses, expressly or inherently, each and every limitation and element of
claims 1, 9, and 16, as arranged in those claims, including creating a third set
of two or more photos (see e.g., claim 1, limitation A, including limitations
A1 and A2), as set forth in claims 1, 9, and 16?

ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 5–7) in light
of Appellant’s arguments (Appeal Br. 12–14; Reply Br. 1–2) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Briefs (Ans. 4–5). We concur with Appellant’s contentions
(Appeal Br. 12–14; Reply Br. 1–2) that the Examiner erred in finding each
of independent claims 1, 9, and 16 (as well as claims 2, 4–8, 10, 13–15, 17,
19, and 20 depending respectively therefrom) anticipated by Gokturk.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a ‘rational connection
between the facts found and the choice made.”’ Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
This is done by presenting, for anticipation, a prima facie case.
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
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applicant is not entitled to a patent on the claim scope that he seeks — the
so-called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
“burden of proof [is] on the [USPTO] to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)); see also Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential) (Examiner has initial burden to
set forth basis for any rejection so as to put Appellant on notice of reasons
why Appellant is not entitled to patent on claim scope sought, i.e., a prima
facie case).
In anticipation, “the Board must compare the construed claim to a
prior art reference and make factual findings that ‘each and every limitation
is found either expressly or inherently in [that] single prior art reference.’”
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (citation omitted). In case
of doubt as to whether claims of an application are anticipated, the scales
should be inclined toward the applicant. See In re Coley, 40 F.2d 982, 986
(CCPA 1930) (“Where there is such doubt, the scales should be inclined
toward the applicant.”).
In the instant case, the Examiner’s notification to Appellant of the
determination of the anticipation of independent claims 1, 9, and 16 is found
at pages 5 through 6 of the Final Action. With regard to claim 1, and
specifically limitation A therein, the Examiner, in the Final Action, relies on
paragraph 272 and Figure 16 as anticipating the claimed subject matter set
forth in limitation A, as follows:
Regarding Claim 1, Gokturk teaches . . . wherein the server is
configured to create a third set of two or more photos that
includes the at least one photo containing the facial image of the
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individual and each photo among the second set of two or more
photos in which the image of the target individual is present
(Paragraph 272, Figure 16: The search module returns search
result 1738, which contains persons that match the individual
being searched).

Final Act. 5–6.
Notably, Gokturk’s Figure 16 does not show/disclose any set of
photos at all, and does not indicate how the “system in which searching for
images based on their contents can be performed” (Gokturk ¶ 23) to produce
the “first set of one or more photos,” “second set of two or more photos,”
and “third set of two or more photos” recited in claims 1, 9, and 16. Figure
16 only shows/discloses a search result 1738 that is communicated between
an image store 1746 and a search module 1730. Although Gokturk
describes, with regard to Figure 16, that “search and retrieval of images is
one type of functionality that can be achieved with the detection and
recognition of persons, text, and objects in images” (Gokturk ¶ 267),
Gokturk is silent as to the search result 1738 containing two or more photos
including “at least one photo containing a facial image of an individual” and
each photo found “in which the image of the target individual is present” as
recited in claims 1, 9, and 16.
Paragraph 272 of Gokturk, relied on by the Examiner as disclosing
disputed limitation A recited in claim 1 (and as commensurately recited in
claims 9 and 16), states as follows:
If input to the search module 1730 is a signature (such as
when received by image input 1702 or possibly from selection
input 1708), then a different type of search may be performed.
Signature input 1722 is not text based, and as such, the criteria
1732 derived from that input may be non-text. In one
embodiment, the criteria 1732 corresponds to the signature input
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1722, and it is matched or compared (less precise than match)
against other signatures in the signature index 1744. In one
embodiment, a nearly exact match to the signature input 1722 is
identified, meaning that the search result 1738 will comprise of
images of the person who appears in the objectified image. In
another embodiment, similarity matching is performed, meaning
the search result 1738 may comprise of image files containing
persons (or even dogs or animals) that are similar in appearance,
but different than the person appearing in the image.
Gokturk ¶ 272 (emphasis added). As can be seen from paragraph 272
reprinted above, no less than three embodiments are described by Gokturk in
this paragraph alone. The Examiner makes it clear (see Final Act. 6; Ans. 4–
5) that the specific embodiment relied on as teaching the third set of two or
more photos is the embodiment producing search result 1738 which
comprises “images of the person who appears in the objectified image” (i.e.,
images of “a target individual” as recited in claims 1, 9, and 16) based on “a
nearly exact match” being found (Gokturk ¶ 272). The Examiner reasons
that “[a]s the result (third set) contains at least two images of the individual,
the Gokturk reference reads on the claim limitations” (Ans. 5).
However, the search result 1738 is not described as a set of images
that includes the original facial image of the individual being searched for
(i.e., the recited “first set of one or more photos”), along with “each photo
among the second set of two or more photos in which the image of the target
individual is present” (claim 1) (emphasis added), as claimed. Furthermore,
the “nearly exact match” photos are neither the original image, or
necessarily exact matches. Under the Examiner’s claim interpretation and
reading of Gokturk, the third set of photos consists of ones of the second set
of photos that were found to be a nearly exact match for the individual
searched for (i.e., plural photos possibly containing the individual being
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searched for), therefore any two photos having images that nearly match the
target individual would meet limitation A recited in claim 1. A near match,
though, is not the same as the original image or an actual match.
The Examiner reasons that because Gokturk discloses outputting
plural images that match the objectified image (i.e., the recited images from
the “second set of two or more photos” in the database that match the facial
image of the individual being searched for), Gokturk discloses “a third set of
two or more photos that includes the at least one photo containing the facial
image of the individual and each photo among the second set of two or more
photos in which the image of the target individual is present” (claim 1,
limitation A) (emphases added). However, because Gokturk does not
clearly disclose that the original facial image from the first set of photos
(e.g., the objectified image 1706 which is the input 1708 as described in ¶
269) is included, or combined, with the nearly matching images found from
a search of the second set of photos, the Examiner has not shown all of the
elements claimed, as arranged in claims 1, 9, and 16. To establish
anticipation, every element and limitation of the claimed invention must not
only be found in a single prior art reference, but must be arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (emphasis added). In the case before us, this burden has not
been met by the Examiner.
Furthermore, in an anticipation rejection, “it is not enough that the
prior art reference . . . includes multiple, distinct teachings that [an ordinary]
artisan might somehow combine to achieve the claimed invention.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Rather, the reference must “clearly and unequivocally disclose the claimed
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[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.” Id. (quoting In
re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking
and choosing may be entirely proper in the making of a 103, obviousness
rejection . . . it has no place in the making of a 102, anticipation
rejection.” Arkley, 455 F.2d at 587–88. Although Gokturk’s system must
have an original photo of the individual being searched for (“the objectified
image” of Gokturk’s paragraph 272), Gokturk does not disclose creating a
set of photos (i.e., the recited third set) that includes both (1) the original
photo (i.e., the recited “photo containing a facial image” that constitutes the
“first set of one or more photos”), and (2) the photos of the target individual
found through the matching process.
Furthermore, in finding a claim anticipated under 35 U.S.C. § 102,
the Board cannot “fill in missing limitations” simply because a skilled
artisan would immediately envision them from the prior art. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed.
Cir. 2017) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
1376, 1381 (Fed. Cir. 2015)); see Microsoft Corp. v. Biscotti, Inc., 878 F.3d
1052, 1069 (Fed. Cir. 2017) (citation omitted) (holding “anticipation is not
proven by ‘multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention”’); see also Microsoft Corp., 878
F.3d at 1086 (Newman, dissenting) (to anticipate, a reference must show
“the same components, having the same function, combined in the same way
for the same purpose”). We will not resort to speculation or assumptions to
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cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967); see also In re Coley, 40 F.2d at 986.
In this light, Appellant’s contentions that Gokturk fails to disclose all
of the recited limitations, as arranged, in claims 1, 9, and 16 are persuasive
(see Appeal Br. 12–14; Reply Br. 1–2).
In addition, the broadest reasonable interpretation differs from the
broadest possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383
(Fed. Cir. 2017); see also MPEP § 2111 (“The broadest reasonable
interpretation does not mean the broadest possible interpretation. Rather, the
meaning given to a claim term must be consistent with the ordinary and
customary meaning of the term (unless the term has been given a special
definition in the specification), and must be consistent with the use of the
claim term in the specification and drawings.”). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” Smith, 871 F.3d at 1382–83
(quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Appellant’s claims, when read in light of the entire Specification and
corresponding drawings, support an understanding that the first set of one or
more photos is different than the third set of two or more photos. See
Chicago Bd. Options Exch., Inc. v. Int’l Securities Exch., LLC, 677 F.3d 1361,
1369 (Fed. Cir. 2012) (where the patentee chose to use different terms to
define the “receiver address” and the “scalable address,” it is presumed that
those two terms have different meanings).
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In this light, we conclude the Examiner has applied the broadest
possible interpretation, and not the broadest reasonable interpretation, in
finding Gokturk anticipates claims 1, 9, and 16 — all of which, when read in
light of the supporting Specification and accompanying drawings, resulting
in error. The Examiner’s strained interpretation of the arrangement of
elements set forth in claims 1, 9, and 16 is unreasonably broad and
inconsistent with the Appellant’s Specification and Drawings supporting the
subject matter claimed. As such, it does not accord with the broadest
reasonable interpretation standard. See In re Smith Int’l, Inc., 871 F.3d at
1382–83 (stating that “the Board cannot construe the claims so broadly that
its constructions are unreasonable under general claim construction
principles . . .” and that giving claim terms “a strained breadth in the face of
the otherwise different description in the specification [is] unreasonable”
(internal quotation marks omitted)); TriVascular, Inc. v. Samuels, 812 F.3d
1056, 1062 (Fed. Cir. 2016) (“While the broadest reasonable interpretation
standard is broad, it does not give the Board an unfettered license to interpret
the words in a claim without regard for the full claim language and the
written description.”).
“In the context of anticipation, the question is not whether a prior art
reference ‘suggests’ the claimed subject matter[;] . . . [r]ather, the dispositive
question regarding anticipation is whether one skilled in the art would
reasonably understand or infer from a prior art reference that every claim
element is disclosed in that reference.” AstraZeneca LP v. Apotex, Inc., 633
F.3d 1042, 1055 (Fed. Cir. 2010) (internal brackets and quotation marks
omitted). Here, this is not the case. “[D]ifferences between the prior art
reference and a claimed invention, however slight, invoke the question of
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obviousness, not anticipation.” Net MoneyIN, Inc., 545 F.3d at 1371
(emphasis added). Here, this is the case.
A prior art reference that “must be distorted from its obvious design”
does not anticipate a patent claim or new invention. In re Chudik, 851 F.3d
1365, 1374 (Fed. Cir. 2017) (“Prior art that ‘must be distorted from its
obvious design’ does not anticipate a new invention.”) (quoting In re Wells,
53 F.2d 537, 539 (CCPA 1931)); accord Topliff v. Topliff, 145 U.S. 156, 161
(1892) (“It is not sufficient to constitute an anticipation that the device relied
upon might, by modification, be made to accomplish the function performed
by the patent in question, if it were not designed by its maker, nor adapted,
nor actually used, for the performance of such functions.”) (emphasis
added). Again, here, there are too many differences between what is recited
in claims 1, 9, and 16, and what is disclosed by Gokturk, for Gokturk to
anticipate the claims.
In view of the foregoing, Appellant’s arguments (Appeal Br. 12–14;
Reply Br. 1–2) that Gokturk fails to anticipate claims 1, 9, and 16 are
persuasive, and Appellant has shown the Examiner’s anticipation rejection
of claims 1, 2, 4–10, 13–17, 19, and 20 to be in error. And, based on
Gokturk’s disclosure discussed above, we find the Examiner improperly
relies upon Gokturk to disclose and anticipate the disputed claim limitations
(see Warner, 379 F.2d at 1017), and thus failed to present a prima facie case
of anticipation.

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CONCLUSION3
The Examiner’s rejection of claims 1, 2, 4–10, 13–17, 19, and 20 is
reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 2, 4–10,
13–17, 19,
20
102(b) Gokturk 1, 2, 4–10,
13–17, 19,
20

REVERSED

3 Although not before us on Appeal, we leave it to the Examiner to evaluate
whether the independent claims are obvious under 35 U.S.C. § 103(a) over
the combination of Gokturk alone or in combination with another reference.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.