Ex Parte 6163816 et al

Patent Trial and Appeal Board

Sep 17, 2012

95001420 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,420 08/18/2010 6163816 RI1321366-816 7275
93143 7590 09/17/2012
Herskovitz & Associates, LLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
NALVEN, ANDREW L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HTC CORPORATION
Requester and Appellant

v.

FLASHPOINT TECHNOLOGY, INC.
Patent Owner and Respondent
____________

Appeal 2012-005564
Reexamination Control 95/001,420
Patent 6,163,8161
Technology Center 3900
____________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination proceeding appeal (the “‘816
Patent”) issued to Anderson et al. on December 19, 2000.
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A. STATEMENT OF THE CASE
SUMMARY
Third-Party Requester HTC Corporation (“HTC”) appeals under 35
U.S.C. §§ 134(c) and 315(b) the Examiner’s decision not to reject claims 1-
17.2 Patent Owner FlashPoint Technology, Inc.3 (“FlashPoint”) urges that
the Examiner’s decision should be affirmed.4 We have jurisdiction under 35
U.S.C. §§ 134(c) and 315(b).
An oral hearing was conducted on June 7, 2012. A transcript of that
hearing was made of record on July 18, 2012.
We reverse the Examiner’s decision not to reject claims 1-17.
RELATED JUDICIAL AND OTHER PROCEEDINGS
We are informed that the ‘816 Patent is involved in a proceeding
before the U.S. International Trade Commission styled In the Matter of
Certain Electronic Imaging Devices, Investigation No. 337-TA-726. (Resp,
Br., 1-2.)

2 See HTC’s “Brief on Appeal” filed June 1, 2011 (“App. Br.”) and
“Rebuttal Brief” filed October 27, 2011 (“Reb. Br.”).

3 See Patent Assignment Abstract of Title, Reel 0090668 Frame 0100 which
was entered into the record of this proceeding as “Title Report” on August
27, 2010.

4 See FlashPoint’s “Respondent Brief” filed July 1, 2011 (“Resp. Br.”).

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THE INVENTION
The ‘816 Patent characterizes its disclosed invention as relating
“generally to electronic imaging devices and more particularly to a system
and method for retrieving capability parameters in an electronic imaging
devices.” (‘816 Patent, 1:19-23.) As set forth in the ‘816 Patent (id. at
1:29-32):
Capability parameters are features of functions which control the
performance and utility of a given peripheral device, and which may
either have several values for selection by the user or have a fixed
value.

Claims 1, 9, 15, and 16 are independent claims. Claims 1 and 16 are
each directed to a “system for retrieving capability parameters” in an
electronic device. (App. Br., 30, 33, Claims App’x.) Claim 9 is directed to
a corresponding method for retrieving capability parameters in an electronic
device. Claim 15 is drawn to a “computer-readable medium” including
program instructions for performing steps in connection with retrieving
capability parameters. (Id. at 33.)
Claim 1 is representative and is reproduced below (App. Br., 30,
Claims App’x.):
1. A system for retrieving capability parameters in a hand held
electronic device comprising:

a series of capability parameter storage locations coupled to
said electronic device for containing value sets corresponding to said
capability parameters, wherein said one or more of said series of
capability parameter storage locations each includes:

a minimum value location containing a minimum
capability parameter value;
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a maximum value location containing a maximum
capability parameter value;

a factory defaults location containing a factory default
value; and

a list-of-integers location containing a capability
parameter list;

a capability command for retrieving said value sets from said
capability parameter storage locations; and

a parameter manager device coupled to said electronic device
for executing said capability command for retrieving said value sets
corresponding to said capability parameters wherein the value sets
describe the functional capability of the electronic device.

THE PRIOR ART
Ueno et al. (“Ueno”) 5,479,206 Dec. 26, 1995
Thurlo 5,835,772 Nov. 10, 1998
Steinberg et al. (“Steinberg”) 6,006,039 Dec. 21, 1999

A document from the 1392 Trade Association titled “1394-based Digital
Camera Specification,” Version 1.04, August 9, 1996 providing instruction
as to use of the “IEEE 1394-1995” camera-to-PC interconnect. (“IEEE 1394
DCS”)

A document providing instruction in connection with a “TWAIN toolkit”
and designated as “TWAIN – Release v1.6-February 5, 1996” in its footers
contained within the document. (“TWAIN”)

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THE RELEVANT PROPOSED REJECTIONS
The Examiner declined to adopt the following rejections proposed by
HTC:5
(1) The anticipation of claims 1-17 under 35 U.S.C. § 102(b) by
TWAIN.
(2) The anticipation of claims 1-3, 5-11, and 13-17 under 35 U.S.C.
§ 102(b) by Ueno.
(3) The unpatentability of claims 1-17 under 35 U.S.C. § 103(a)
over Ueno and Steinberg.
(4) The unpatentability of claims 1-3, 5-11, and 13-17 under 35
U.S.C. § 103(a) over Ueno and IEEE 1394 DCS.
(5) The unpatentability of claims 1-3, 5-11, and 13-17 under 35
U.S.C. § 103(a) over Ueno and Thurlo.
B. ISSUE
Did the Examiner present an adequate basis for declining to adopt the
rejections proposed by HTC which are involved in this reexamination
proceeding appeal?
C. ANALYSIS
All of Flashpoint’s claims 1-17 on appeal have been proposed as
being either anticipated or obvious in view of the prior art. Each of

5 Although HTC’s Appeal Brief makes reference to eight issues involving
eight proposed grounds of rejection under the heading “Issues to be
Reviewed on Appeal” (App. Br., 12-13), the Brief also indicates that only
five of those proposed rejections are contested as a part of this appeal (id. at
14:3-5.) Accordingly, only five proposed rejections are before us on appeal.
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independent claims 1, 9, 15, and 16 include a similar feature in connection
with a capability parameter storage location associated with an electronic
device. In the context of the specification of the ‘816 Patent, the storage
location may be a “non-volatile memory” component residing in a computer
of an electronic device, such as a camera. (‘816 Patent, Figs. 1-3; claim 4.)
Claims 1, 9, 15, and 16 require, in particular, that one or more capability
parameter storage locations “each” include the following (App. Br., 30-34,
Claims App’x.):
a minimum value location containing a capability parameter value;
a maximum value location containing a maximum capability
parameter value;
a factory defaults location containing a factory default value; and
a list-of-integers location containing a capability parameter list[.]

For each of five proposed rejections involved in this appeal, the issue
centers on the requirement of a “capability parameter storage location”
associated with an electronic device including “each” of the pertinent values.
1. ANTICIPATION BY TWAIN
TWAIN is generally directed to a guidance or instruction manual in
connection with a software application for use with “image acquisition
devices” such as “desktop scanners, hand scanners” and “digital cameras.”
(TWAIN, p. 18-7.) There is no apparent dispute between any of HTC,
FlashPoint, and the Examiner that TWAIN discloses all of the above-noted
values in some fashion. However, in declining to adopt the HTC’s proposed
rejection, the Examiner expressed that TWAIN lacks disclosure that a given
capability parameter storage location contains “each” of the above-noted
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values. (RAN6, 2-3.) Indeed, it is that requirement, i.e., that a storage
location include all of the relevant values, which forms the sole basis for the
Examiner’s non-adoption of the proposed anticipation rejection based on
TWAIN.
HTC challenges the Examiner’s position, urging that various portions
of TWAIN describe “capabilities,” i.e., capability parameters, which support
four types of “containers.” (E.g., App. Br. 17.7) As explained by HTC,
examples of “capabilities” disclosed in TWAIN include
“ICAP_BRIGHTNESS” and “ICAP_CONTRAST.” (Id. at 21-23; Reb. Br.
3-5.) The “containers” of the capabilities are termed “TW_ONEVALUE,”
“TW_ARRAY,” “TW_RANGE,” and “TW_ENUMERATION” and
incorporate particular data values. (App. Br., 17; Reb. Br., 3-5.) HTC
equates the values in those containers to the values required by FlashPoint’s
claims (id. at 17-18). HTC’s position is not contested by either the
Examiner or FlashPoint.
According to FlashPoint, however, rather than disclosing that all of
four required containers and their contained values are associated with a
single given capability parameter, TWAIN simply sets forth that only certain

6 “RAN” refers to the Right of Appeal Notice mailed March 3, 2011. The
Examiner’s Answer mailed September 27, 2011 incorporates by reference
the content of the RAN in conjunction with the Examiner’s reasoning for
confirming the patentability of FlashPoint’s claims. (Ans., 1.) Accordingly,
this opinion cites to the RAN when referencing the Examiner’s reasoning.

7 We observe that page 17 of HTC’s Appeal Brief makes reference to a chart
from TWAIN supposedly found “at page 29” of that reference. Review of
TWAIN, however, reveals that the pertinent chart is found on page 2-14 of
TWAIN.
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of the containers, and their contained values, are ever included together in
the capability parameter. In its Respondent Brief, FlashPoint summarizes its
position in that regard with respect to the “ICAP-BRIGHTNES” parameter
as (Resp. Br., 4:3-6) (emphasis in original):
The ICAP_BRIGHTNESS parameter may include some of these
containers, but importantly, will not use or include both of the TW_
ENUMERATION and TW_RANGE containers. In short, the TW_
ENUMERATION and TW_RANGE containers are mutually
exclusive in TWAIN.

The underlying premise for that “mutually exclusive” assertion is that
the values stored in connection with the TW_ENUMERATION container
are described as “probably not uniform” (Resp. Br., 4:7-14, citing to TWAN
8-13) whereas the values associated with TW_RANGE are described as
“uniformly distributed between a minimum and a maximum value (id. at
4:15-20, citing to TWAIN 8-32.) FlashPoint thus apparently takes the view
that because of some sort of dichotomy between value sets that may be non-
uniform versus those that may be uniform, the respective containers must be
precluded from both being present. (Id. at 5:10-20.)
We have considered FlashPoint’s argument. However, it is not
evident why FlashPoint takes the view that the TW_ENUMERATION and
TW_RANGE containers are “mutually exclusive” simply because they may
contain data of differing content. We are cognizant that FlashPoint
concludes that “[f]or parameters that require numerous values, either a
TW_ENUMERATION container or a TW_RANGE container may be used,
but not both.” (Resp. Br., 4:25-26.) Yet, FlashPoint does not suitably
articulate any sound underlying rationale for that conclusion beyond merely
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the general and inadequately explained postulation that the “probably not
uniform” (TWAIN, 8-13) nature of the values in TW_ENUMERATION and
the “uniformly distributed” (id. at 8-32) nature of the values in TW_RANGE
somehow establishes exclusivity as between those containers. We do not
discern why uniformity of the content of one data or value set as compared
with another conveys that containers containing such values may not both be
present in the memory of an electronic device, e.g., a digital camera.
Moreover, we observe that the values in TW_ENUMERATION are
expressed as “probably not uniform.” That the pertinent values may
“probably” not be uniform does not even itself exclude uniform values. In
other words, even if not necessarily probable, TWAIN reasonably conveys
that there are circumstances in which the values contained in TW_
ENUMERATION may, in actuality, be uniform. In providing for such a
circumstance, TWAIN’s disclosure undermines the basis for FlashPoint’s
assertion that TW-RANGE and TW_ENUMERATION are “mutually
exclusive.”
Furthermore, in explaining the “data structure” of the various
pertinent containers, TWAIN provides that “[i]n general, most capabilities
can have more than one of these containers applied to them depending on
how the particular Source implements the capability.” (TWAIN, 2-14.)
Thus, TWAIN makes clear that a given capability may have multiple
containers, and their respective values, applied to it. We note that during
oral argument, counsel for FlashPoint expressed that TWAIN may
incorporate “two or three” of the values discussed above as a part of an
electronic source device but does not contemplate retrieving all four of the
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pertinent values. (Oral Hr’g, 26:4-13.) 8 In our view, is not apparent what
underlying restriction establishes that retrieving two or three values is
possible, yet retrieving four capability values was not contemplated by, or is
inhibited in, TWAIN. Indeed, when queried in that regard, FlashPoint’s
counsel did not meaningfully articulate a suitable explanation as to why
retrieval of all four of the required values should be regarded as excluded in
TWAIN. (Id. at 28:14-30:22.)
We have fully considered FlashPoint’s arguments appearing in its
Respondent Brief and the position of the Examiner as set forth in the
Examiner’s Answer and RAN. However, for the reasons discussed above
and articulated in HTC’s Appeal and Rebuttal Briefs, we agree with HTC
that TWAIN reasonably conveys a system and method for retrieving
capability parameters in a hand held electronic device, such as a scanner or
digital camera, in which each of the various values appearing in claims 1, 9,
15, and 16 are included in a capability parameter storage location associated
with the electronic device. We are not persuaded that the Examiner was
correct in declining to adopt the anticipation rejection of claims 1-17 based

8 BEN WITHROW: Out of the four you get – out of the four, for example,
you have different parameters, right? So you may have 50 parameters on
this source device. Let’s say it’s a scanner. The point is is [sic] that those –
in each one of those – for each one of those parameters, they’ll have the
different configuration. One may need a range. One may need a list of
integers. What happens in TWAIN is that it sets up a data structure specific
to the – to what it needs to get. And the point in all of this is that TWAIN
never contemplates a situation where you would need all four. They’re
either – they’re going to get two or three of them. They never do all four of
them.
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on TWAN as proposed by HTC at pages 48-76 of the Request for
Reexamination filed August 18, 2010.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.77(b),
and for the foregoing reasons, we enter, as a new ground of rejection, HTC’s
above-noted rejection of FlashPoint’s claims 1-17 under 35 U.S.C. § 102(b)
as anticipated by TWAIN.
2. ANTICIPATION BY UENO
The Examiner refused to reject claims 1-3, 5-11, and 13-17 as
anticipated by Ueno for essentially the same rationale discussed above in
connection with TWAIN, i.e., that Ueno does not disclose a capability
parameter storage location which includes each of the values recited in
claims 1, 9, 15, and 16. (RAN, 3-4.)
In challenging the Examiner’s refusal, HTC characterizes Ueno as
disclosing “a series of capability parameter storage locations 17B, 17C and
17D.” (App. Br., 24) HTC also provides the following assessment of
Ueno’s disclosure (App. Br., 25):
The capability parameter storage location 17B “stores camera
control parameters for shutter control and adjustment of white balance
and black balance” (see Ueno at 12:65-67.) In fact, the capability
parameter storage location 17B stores “the camera control parameters
that have been set using the display unit 40 and the keyboard 36 or
mouse 37” (see Ueno at 25:1-4.) The capability parameter storage
location 17C stores “a presently prevailing controlled variable” (see
Ueno at 13:1-2.) The camera can read from the capability parameter
storage location 17C, “the presently prevailing set [of] controlled
variables” to be “displayed on the display unit 40” (see Ueno at 25:4-
7.) The capability parameter storage location 17D is for “temporarily
storing camera control parameters transmitted from the host computer
30” (see Ueno at 13:2-4.) Thus, each capability parameter storage
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location (each of 17B, 17C and 17D) in Ueno includes different
versions of the claimed minimum, maximum, default and list-of-
integer location.

FlashPoint does not address HTC’s above-quoted description of
Ueno’s disclosure. Having reviewed Ueno, including the above-cited
portions, we conclude that HTC’s assessment of the reference is in accord
with its plain disclosure and readily conveys that an electronic camera may
include various camera control parameters having values which may be set
via operation of a keyboard 36 or mouse 37 and display unit 40 of computer
30 and which are then stored directly in the memory of camera 10. Each of
memories 17B, 17C, and 17D, in storing camera control parameters are, in
our view, reasonably regarded as capability parameter storage locations.
With respect to the particular data values, the Examiner made the following
findings (Ans. 4) (emphasis in original):
The display examples show separate menus utilizing different
parameter types. For example, the exposure menu shows the
minimum and maximum values of F.14 and F.15.0 (Ueno, Figure 13).
The LUT menu shows a list of integers LUT1 through LUT5 along
with a default value (Ueno, Figure 9).

FlashPoint does not address the above-quoted findings of the
Examiner. We do not discern that either the Examiner or HTC are incorrect
in their position that the capability parameter values set forth in FlashPoint’s
claims are disclosed in Ueno. Although the Examiner subsequently
concluded that “each” of those values is not set forth in a capability
parameter storage location, we observe that Ueno makes clear that all of the
camera control data or values that were selected on the display unit 40 are
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ultimately stored in “main memory 17,” including, specifically, memory
17B. (Ueno, 18:38-47.) Given the above-noted disclosure in Ueno, we are
not persuaded that the Examiner was correct in urging that each of the
pertinent values of FlashPoint’s claims is not stored in a capability parameter
storage location.
For the foregoing reasons, we conclude that the Examiner’s basis for
declining to adopt the anticipation rejections proposed by HTC based on
Ueno is not correct. Accordingly, we are not persuaded that the claims
should not have been rejected as anticipated by Ueno. Pursuant to our
authority, we enter HTC’s proposed rejection of claims 1-3, 5-11, and 13-17
as anticipated by Ueno which appears on pages 76-106 of the Request for
Reexamination.
3. UNPATENTABILITY BASED ON UENO
The Examiner also refused to adopt the following rejections under 35
U.S.C. § 103(a): (1) claims 1-17 over Ueno and Steinberg; (2) claims 1-3, 5-
11, and 13-17 over Ueno and IEEE 1394 DCS; and (3) 1-3, 5-11, and 13-17
over Ueno and Thurlo. The Examiner’s rationale for the refusal is premised
on the belief that Ueno does not disclose a capability parameter storage
location having each of the recited values in claims 1, 9, 15, and 16 and that
the alleged deficiency is not made up by any of Steinberg, IEEE 1394 DCS,
or Thurlo. For the reasons discussed above, we do not agree with the
Examiner’s position as to the content of Ueno.
Moreover, we also observe that even if the Examiner’s position is
correct, the pertinent rejections that were proposed were based on
obviousness. An inquiry into obviousness does not require that the prior art
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set forth the precise teachings directed to the specific subject matter claimed.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, inferences
and creative steps that a person of ordinary skill in the art would employ can
be taken into account. Id.
In this case, the record does not reflect that each of the pertinent
values was not readily understood to those of ordinary skill in the art as a
known type of capability parameter associated with hand-held electronic
devices. Instead, the focus of this appeal is simply whether a storage
component termed a “capability parameter storage location” may include
each of the pertinent values. As understood from the Specification of the
‘816 Patent, a computer “memory” constitutes a suitable such storage
location. Ueno discloses that its electronic camera includes several memory
components, e.g., memories 17B, 17C, 17D, suitable for storing capability
parameters. The content of Ueno reflects the understanding in the pertinent
art with respect to the data storing capability of computer memories. A
person of ordinary skill in the art, who is also one of ordinary creativity,
KSR Int’l Co., 550 U.S. at 421, would have readily appreciated or inferred
that any of those available memories would have been available and viable
as a storage location for the known capability parameter values relevant for a
given electronic device.
We conclude that the record does not convey that the Examiner was
correct in declining to reject FlashPoint’s claims based on Ueno.
Correspondingly, we enter the following rejections proposed by HTC in its
Request for Reexamination: (1) claims 1-17 over Ueno and Steinberg9; (2)

9 Request for Reexamination, pp. 127-170.
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claims 1-3, 5-11, and 13-17 over Ueno and IEEE 1394 DCS10; and (3) 1-3,
5-11, and 13-17 over Ueno and Thurlo11.
D. CONCLUSION
The Examiner did not present an adequate basis for declining to adopt
the rejections proposed by HTC which are involved in this reexamination
proceeding appeal.
E. ORDER
The Examiner decision not to adopt the following rejections proposed
by HTC is reversed:
(1) The anticipation of claims 1-17 under 35 U.S.C. § 102(b) by
TWAIN.
(2) The anticipation of claims 1-3, 5-11, and 13-17 under 35 U.S.C.
§ 102(b) by Ueno.
(3) The unpatentability of claims 1-17 under 35 U.S.C. § 103(a)
over Ueno and Steinberg.
(4) The unpatentability of claims 1-3, 5-11, and 13-17 under 35
U.S.C. § 103(a) over Ueno and IEEE 1394 DCS.
(5) The unpatentability of claims 1-3, 5-11, and 13-17 under 35
U.S.C. § 103(a) over Ueno and Thurlo.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground

10 Id. at pp. 170-207.

11 Id. at pp. 207-249.
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of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
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is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).

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REVERSED

PATENT OWNER:
HERSKOVITZ & ASSOCIATES, LLC
2845 DUKE STREET
ALEXANDRIA, VA 22314

THIRD-PARTY REQUESTER:
PEKINS COIE LLP
P.O. BOX 1247
SEATTLE, WA 98111-1247