Ex Parte 7349012 et al

Patent Trial and Appeal Board

Apr 19, 2016

90009870 (P.T.A.B. Apr. 19, 2016)

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.
90/009,870 01/11/2011 7349012 51020-056USC1RX 3070
42532 7590 04/20/2016
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
TRAN, HENRY N
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/20/2016 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
____________

APPLE INC.
Requester,

v.

MOBILEMEDIA IDEAS LLC,
Patent Owner.
____________

Appeal 2016-002009
Reexamination Control 95/001,614 and 90/009,8701
Patent 7,349,012 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and ANDREW J. DILLON,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

1 Reexamination Control Nos. 90/009,870 and 95/001,614 were merged into
a single proceeding. Decision Sua Sponte to Merge Reexamination
Proceedings, Feb. 9, 2012.
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Apple Inc. (“Requester”) appeals under 35 U.S.C. §§ 134 and 315 the
Examiner’s non-adoption of the rejection claims 150 and 151 over various
grounds. See generally App. Br.2 We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An oral hearing was conducted on April 13, 2016. A
transcript of that hearing will be added to the record in due course.

STATEMENT OF THE CASE
This proceeding arose from a May 3, 2011 request by Apple Inc.
(“Requester”) and HTC Corporation3 for an inter partes reexamination of
claims of U.S. Patent 7,349,012 B2, entitled “Imaging Apparatus with
Higher and Lower Resolution Converters and a Compression Unit to
Compress Decreased Resolution Image Data” and issued to Masayuki
Takezawa, Yoichi Mizutani, Hideki Matsumoto, Ken Nakajima, and
Toshihisa Yamamoto, on March 25, 2008 (“the ’012 patent”).
The ’012 patent describes an imaging apparatus for displaying an
image of an object on a finder in real-time. Spec. 1:16–18.

Claims 150 and 151 read as follows:

150. A digital still camera imaging apparatus, comprising:
an imaging unit for generating image data in response to image
light received from an object;
an output unit for outputting image data to a display;

2 Third-Party Requester’s Brief on Appeal under 37 C.F.R. § 41.67, filed
June 16, 2014 (App. Br.).
3 We are informed that HTC Corporation is no longer participating in the
present proceedings. App. Br. 1.
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an input signal processor configured to receive the image data
generated by the imaging unit, to selectively decimate the received
image data when reading image data from the imaging unit, to
perform an auto-focus function, an auto-iris function and white
balance adjustment;
a first resolution converter, comprising a horizontal direction
linear interpolation circuit and a vertical direction linear interpolation
circuit, for decreasing a resolution of image data generated by the
imaging unit and received from the input signal processor;
a second resolution converter for increasing a resolution of
image data that is to be outputted to the display via the output unit;
a CPU for controlling at least the input signal processor, the
first resolution converter and the second resolution converter;
a memory having a control program for the CPU stored therein;
a compression unit for compressing image data with a
resolution that is decreased by the first resolution converter;
an image memory that stores on-screen display data, wherein
the digital still camera imaging apparatus is configured to synthesize
the on-screen display data with resolution-increased image data to
generate synthesized data, and to output the synthesized data to the
display in finder mode in real time;
a communication circuit configured to output the image data to
outside wirelessly;
a bus connecting the first resolution converter, the second
resolution converter and the compression unit; and
a controller for controlling routing of image data over the bus,
wherein the controller is configured to perform control to permit the
first resolution converter, the output unit, the second resolution
converter and the compression unit to perform pre-set processing in a
time-divisional manner.

151. A digital still camera imaging apparatus, comprising:
an imaging unit for generating image data in response to image
light received from an object;
an output unit for outputting image data to a display;
an input signal processor configured to receive the image data
generated by the imaging unit, to selectively decimate the received
image data when reading image data from the imaging unit, to
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perform an auto-focus function, an auto-iris function and white
balance adjustment;
a decimator, comprising a horizontal direction linear
interpolation circuit and a vertical direction linear interpolation
circuit, for decreasing a resolution of image data generated by the
imaging unit and received from the input signal processor;
an interpolator for increasing a resolution of image data that is
to be outputted to the display via the output unit;
a CPU for controlling at least the input signal processor, the
decimator and the interpolator;
a memory having a control program for the CPU stored therein;
a compression unit for compressing image data with a
resolution that is decreased by the decimator;
an image memory that stores on-screen display data, wherein
the digital still camera imaging apparatus is configured to synthesize
the on-screen display data with resolution-increased image data to
generate synthesized data, and to output the synthesized data to the
display in finder mode in real time;
a communication circuit configured to output the image data to
outside wirelessly;
a bus connecting the decimator, the interpolator and the
compression unit; and
a controller for controlling routing of image data over the bus,
wherein the controller is configured to perform control to permit the
decimator, the output unit, the interpolator and the compression unit to
perform pre-set processing in a time-divisional manner.

The cited references are as follows:

Watanabe US 5,499,345 Mar. 12, 1996
Yuyama US 5,612,732 Mar. 18, 1997
Anderson ’137 US 5,933,137 Aug. 3, 1999
Lourette US 5,978,016 Nov. 2, 1999
Anderson ’535 US 6,563,535 May 13, 2003
Kijima JP H8-317295 Nov. 29, 1996

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M. Takahashi et al., “A Shared-Bus Control Mechanism and a Cache
Coherence Protocol for a High-Performance On-Chip
Multiprocessor,” IEEE, Feb. 3, 1996 (“Takahashi”).

T. Iguchi, et al., “A Digital Image Signal Processing LSI for Multi-
Use Video Camera,” Proceedings of Annual Meeting of The Institute
of Image Information and Television Engineers (31), July 26, 1995
(“Iguchi”).

Requester appeals the Examiner’s non-adoption of the rejection of
claims 150 and 151 under 35 U.S.C. § 112, 1st paragraph (enablement);
under 35 U.S.C. § 103(a) as unpatentable over Iguchi, Lourette, Takahashi,
Watanabe and any one of Anderson ’535 or Anderson ’137; and under
35 U.S.C. § 103(a) as unpatentable over Kijima, Iguchi, Yuyama,
Anderson ’137, Lourette, Takahashi, and Watanabe.

ISSUE

Did the Examiner err in not rejecting claims 150 and 151?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Enablement
Claim 150 recites a first resolution converter comprising a horizontal
direction linear interpolation circuit and a vertical direction linear
interpolation circuit, for decreasing a resolution of image data generated by
the imaging unit. Claim 151 recites a decimator, comprising a horizontal
direction linear interpolation circuit and a vertical direction linear
interpolation circuit, for decreasing a resolution of image data generated by
the imaging unit.
Requester argues that although the Specification discloses “us[ing]
linear interpolation circuits to decrease the resolution of image data,” the
Specification fails to “teach a person of ordinary skill in the art how the . . .
circuit . . . as described [in the Specification] can decrease resolution” or
how to “lower resolution of image data by interpolating or by performing
linear interpolation processing.” App. Br. 44-46. In other words,
Requester argues that one of skill in the art would have had to engage in
undue experimentation in order to decrease resolution with a circuit that is
disclosed to decrease resolution. The Examiner disagrees with Requester’s
contention that one of skill in the art would have had to resort to undue
experimentation to practice this claim feature. Action Closing Prosecution,
Sept. 27, 2013 (“ACP”) 24–25. We agree with the Examiner.
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As an initial matter, we note that claim 150 recites a first resolution
converter for decreasing a resolution of image data, and claim 151 recites a
decimator for decreasing a resolution of image data. Neither claim 150 nor
claim 151 appears to also recite either a first resolution converter or a
decimator for decreasing a resolution of image data “by interpolating or by
performing linear interpolation processing.” Hence, we need not consider
whether or not the Specification would have enabled one of skill in the art to
decrease a resolution of image data by interpolating or by performing linear
interpolation processing.
In any event, Requester provides insufficient evidence to show
persuasively that, given the disclosure provided in view of the level of skill
in the art, level of predictability of the art, state of the prior art, nature of the
invention, or the quantity of experimentation needed to make or use the
invention based on the content of the disclosure, for example, that one of
skill in the art would, in fact, have had to resort to undue experimentation to
decrease resolution of image data with a device disclosed as decreasing
resolution of image data. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Requester does not specifically reference any of these or other relevant
factors that would support a finding that one of skill in the art would have
had to resort to undue experimentation to practice the claimed invention of
decreasing resolution of image data given the disclosure provided. While
Requester cites to the Declaration of Jack D. Grimes, Ph.D. Under 37 C.F.R.
§ 1.132, November 26, 2012 (“Grimes Decl.”), Requester does not indicate
where Dr. Grimes addresses these or any other relevant factors that would
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support Requester’s contention that one of skill in the art would have had to
resort to undue experimentation to perform the claimed invention.
The Examiner did not err in refusing to adopt the rejection of
claims 150 and 151 under 35 U.S.C. § 112, first paragraph (enablement).

Obviousness
Claim 150 recites an image memory that stores on-screen display
data. Requester argues that Anderson ’137 discloses this feature.
Comments by Third Party Requesters to Patent Owner’s Response in Inter
Partes Reexamination Under 37 C.F.R. § 1.947, November 26, 2012
(“Comments”) 33, 34, 50. The Examiner states that the cited references
(including Anderson ’137) each fail to disclose or suggest this feature.
RAN 91–93. We disagree with the Examiner.
As Requester indicates, Anderson ’137 discloses “mode-specific
items, such as images, icons, and text, are displayed” on an LCD screen.
Anderson ’137 7:13-40. The Examiner does not explain sufficiently how
this disclosure of Anderson ’137 differs from “on-screen display data,” as
recited in claim 150.
Claim 150 recites an apparatus that is configured to synthesize the on-
screen display data with resolution-increased image data to generate
synthesized data. Requester argues that Anderson ’137 discloses this
feature. Comments 29-30 (citing Anderson ’137 7:13-40). The Examiner
states that the cited references (including Anderson ’137) each fail to
disclose or suggest this feature. RAN 91–93. We disagree with the
Examiner.
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Anderson ’137 discloses, for example, that a “high-resolution image is
available” that is then “copied . . . to the frame buffer . . . for display.”
Anderson ’137 17:1-3. In other words, Anderson ’137 discloses “on-screen
display data” (i.e., the high-resolution image that is displayed) that is derived
from “resolution-increased image data” (i.e., the high-resolution image).
The Examiner does not explain sufficiently how this disclosure of Anderson
’137 differs from the disputed claim feature.
Claim 150 recites an apparatus that outputs the synthesized data to the
display in finder mode in real time. Requester argues that Anderson ’137
discloses this feature. Comments 29-30 (citing Anderson ’137 7:13-40).
The Examiner states that the cited references (including Anderson ’137)
each fail to disclose or suggest this feature. RAN 91–93.
As indicated above, Anderson ’137 discloses, for example, that a
“high-resolution image is available” that is then “copied . . . to the frame
buffer . . . for display.” Anderson ’137 17:1-3. In other words, Anderson
’137 discloses outputting synthesized data (i.e., the high resolution image) to
the display (i.e., displaying the data). The Examiner does not explain
sufficiently how this disclosure of Anderson ’137 differs from the disputed
claim feature.
Claim 150 recites a controller for controlling routing of image data
over the bus and configured to perform control to permit pre-set processing
in a time-divisional manner. Requester argues that either one of Takahashi
or Watanabe discloses this feature. Comments 35, 50. The Examiner states
that the cited references (including Takahashi and Watanabe) each fail to
disclose or suggest this feature. RAN 91–94.
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Watanabe discloses a “bus arbitration system” (Watanabe Abstract)
that contains components to control operation of the system (e.g.,
“control 4” – Watanabe 2:37). Likewise, Takahashi discloses a “shared-bus
control mechanism” (Takahashi Title) that contains components to control
operation of the mechanism (e.g., a “multiprocessor” – Takahashi 314). The
Examiner does not explain sufficiently how these disclosures of Watanabe
or Takahashi differ from the disputed claim feature.
Requester argues that it would have been obvious to one of ordinary
skill in the art to have combined the teachings of Anderson ’137, Iguchi,
Lourette, Takahashi, and Watanabe or the teachings of Kijima, Iguchi,
Yuyama, Anderson ’137, Lourette, Takahashi, and Watanabe. Requester
further provides rationales as to why it would have been obvious to one of
ordinary skill in the art to have combined the teachings of the cited
references. Comments 33-50. Patent Owner argues that it would not have
been obvious to one of ordinary skill in the art to have combined the cited
references. Resp. Br. 12–13. While Patent Owner argues generally that it
would not have been obvious to one of ordinary skill in the art to have
combined the cited references in the manner suggested by Requester because
Requester “fails to propose any reason to combine the references as applied
to these claims” (Resp. Br. 12-13), Patent Owner does not point out specific
flaws in the rationales to combine the references that Requester does provide
(see e.g., Comments 33-50). Therefore, we are not persuaded by Patent
Owner.
In view of the above, we need not consider the propriety of the
Examiner’s non-adoption of the rejection of claims 150 or 151 based on
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other grounds (i.e., grounds based on Anderson ’535). Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009).

DECISION
We affirm the Examiner’s non-adoption of the rejection of claims 150
and 151 under 35 U.S.C. § 112, 1st paragraph (enablement), but we reverse
the Examiner’s non-adoption of the rejection of claims 150 and 151 under
35 U.S.C. § 103(a) as unpatentable over Iguchi, Lourette, Takahashi,
Watanabe, and Anderson ’137 or over Iguchi, Lourette, Takahashi,
Watanabe, Anderson ’137, Yuyuma, and Kijima.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that 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 proceeding 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. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
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ground of rejection and also state all other grounds
upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
November 2, 2002 may not be taken “until all parties’ rights to request
rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
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appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

Patent Owner:

Proskauer Rose, LLP
One International Place
Boston, MA 02110

Third Party Requester – 95/001,614

Sterne, Kessler, Goldstein & Fox, PLLC
1100 New York Avenue, NW
Washington, DC 20005

Third Party Requester – 90/009,870

Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1940 Duke Street
Alexandria, VA 22314