Ex Parte Alsaud

Patent Trial and Appeal BoardDec 23, 2013

11502710 (P.T.A.B. Dec. 23, 2013)

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. 11/502,710 08/10/2006 Mohammed Alsaud 11483-1 9367 7590 12/24/2013 Klaus P. Stoffel Wolff & Samson PC One Boland Drive West Orange, NJ 07058 EXAMINER CARLOS, ALVIN LEABRES ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 12/24/2013 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 ____________________ Ex parte MOHAMMED ALSAUD ____________________ Appeal 2012-002405 Application 11/502,710 Technology Center 3700 ____________________ Before: ANTON W. FETTING, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002405 Application 11/502,710 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final rejection of claims 1-5, 7-13, 15, 16, 18, and 30-32. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. CLAIMED INVENTION Claim 9, reproduced below, is illustrative of the claimed subject matter: 9. A method comprising: displaying, on a display screen of a device, a plurality of example photographic images; receiving from a user a selection of one of the displayed photographic images; and displaying simultaneously, on the display screen, the selected photographic image and a diagram comprising information relating to how the photographic image was taken, including a graphical representation showing distances between at least two of a camera, a light, and a screen. REFERENCE Malloy Desormeaux US 6,526,234 B1 Feb. 25, 2003 REJECTION Claims 1-5, 7-13, 15, 16, 18, and 30-32 are rejected under 35 U.S.C. § 102(b) as being anticipated by Malloy Desormeaux. Appeal 2012-002405 Application 11/502,710 3 ANALYSIS Claim 9 We choose to address independent claim 9 first, and then address independent claim 1. Appellant relies on the same arguments for claim 9 as presented for claim 1. Br. 7. Independent claim 9 recites the method step of “displaying simultaneously, on the display screen, the selected photographic image and a diagram comprising information relating to how the photographic image was taken, including a graphical representation showing distances between at least two of a camera, a light, and a screen.” Br., Clms. App’x. The Examiner finds that Malloy Desormeaux discloses, inter alia, a digital memory configured to store a plurality of example photographic images and corresponding diagrams (column 11 lines 15-27), comprising information relating to how the example photographic images were taken, the information for a respective photographic image comprising a graphical representation showing distances between at least two of a camera, a light, and a screen (see figures 21 and 24, column 4 lines 1-10, column 18 lines 42-67 and column 19 lines 1-36), and a digital display screen configured to display simultaneously at least one of the example images and a corresponding diagram. Ans. 4-6. The Examiner is relying on revision suggestions as both the images and diagrams to be displayed. Revision suggestions are used to create a second archival image based on an original archival image. (col. 18, ll. 41-40). These revision suggestions can be presented as “a combination of derived images and indicia.” (col. 19, ll. 7-8). The indicia type of revision suggestions are “text messages 138a or icons 138b” (col. 18, l. 67 - col. 19, l.1) used to communicate the suggested effect required to produce the second image. Examples of indicia are Appeal 2012-002405 Application 11/502,710 4 shown as “Z”, or “zoom.” See Fig. 26. The Examiner does not explain how text messages or icons can be a “diagram . . . showing distances between at least two of the camera, light, and screen” as claimed. Thus, these indicia are not a “diagram . . . showing distances between at least two of the camera, light, and screen.” Revision suggestions which are displayed as derived image are referred to as “revision suggestion images” (col. 19. ll. 4-6). We understand the “revision suggestion images” to be the claimed “example photographic images.” Appellant argues that the revision suggestions of Malloy Desormeaux are not a diagram that displays distances between objects. In particular, the Appellant argues Fig. 24 shows a photograph that includes a person, a building and landscape in the background, and the sun. The photographs of Figs. 21 and 24 do not show a “distance” between “at least two of a camera, a light, and a screen,” as claimed. As stated above, merely showing a sun in a photograph does not constitute the claimed “graphical representation” showing a distance a “camera” and a “light.” Br. 5. Appellant further argues that the revision suggestions merely provided suggestions of other ways to photograph the subject, but do not include a graphical representation including distances. In particular, Appellant argues that Fig. 21 shows three depictions of revision suggestions for other ways of photographing the subject. While this passage discusses “reaiming the camera to relocate the subject at two- thirds of the distance from the bottom edge of the picture,” there is no teaching or suggestion of the claimed “graphical representation showing distances between at least two of camera, a light, and a screen”. Id. Appeal 2012-002405 Application 11/502,710 5 To address this shortcoming, the Examiner further finds the claimed diagram is explicitly shown by the “revision suggestion images” and adds the user [following] the illustration would implicitly show[] a distance between a “camera” and a “light,” or a distance between a “camera” and a “screen,” or a distance between a “light” and a “screen” by changing the aiming of the camera to relocate the subject at two-thirds of the distance from the bottom edge of the picture, reorienting the camera in a horizontal position, and zooming in/moving closer to the subject in order to produce the displayed graphical revision suggestion. Ans. 9. The Examiner appears to be relying on the “revision suggestion image” as both the claimed “photographic image” and claimed “diagram . . . showing distances between at least two of the camera, light, and screen.” The Appellant argues “[Malloy ]Desormeaux discloses display devices that display various photographs and other information, none of the devices displays, simultaneously, an image and a ‘corresponding diagram’ that shows ‘distances between at least two of a camera, a light, and a screen,’ as claimed.” App. Br. 6. Because the indicia of the revision suggestion do not constitute the claimed diagram, and the revision suggestion images cannot be both the “photographic image” and the “diagram”, the Examiner has erred by finding that the Malloy Desormeaux discloses displaying simultaneously the “photographic image” and a “diagram comprising . . . graphical representation showing distances between at least two of a camera, a light, and a screen.” Accordingly, we do not sustain the rejection of independent claim 9, or claims 10-13, 15, 16, 18, 31, and 32 which depend therefrom, as anticipated by Malloy Desormeaux. Claim 1 Appeal 2012-002405 Application 11/502,710 6 Appellant argues claims 1-5, 7, 8, and 30 as a group. Br. 7. We select claim 1 as the representative claim, and claims 2-5, 7, 8, and 30 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 recites a digital memory configured to store data and a digital display to simultaneously display data. The data is further defined as “example photographic images” and “corresponding diagrams.” See Br., Clms. App’x. Appellant’s arguments above are all directed at novelty based on the type of data stored and displayed. However, the claim terms “example photographic images” and “corresponding diagrams” are merely descriptions of respective “data.” When descriptive material is not functionally related to the claimed embodiment, the descriptive material will not distinguish the invention from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). We therefore interpret these terms as merely labels describing the two types of data, “example photographic images” and “corresponding diagrams.” That is, we give “example photographic images” and “corresponding diagrams” its broadest reasonable interpretation as any data, as consistent with the Specification and as specifically defined in claim 1. As Appellant’s arguments are all based on distinguishing the claimed data types from the data stored and displayed by the prior art, Appellant’s arguments are not persuasive. Accordingly, we affirm the rejection of independent claim 1, and claims 2-5, 7, 8, and 30 which stand or fall therewith, as anticipated by Malloy Desormeaux. Appeal 2012-002405 Application 11/502,710 7 DECISION For the above reasons, the Examiner’s decision to reject claims 1-5, 7, 8, and 31 is affirmed and the Examiner’s decision to reject claims 9-13, 15, 16, 18, 31, and 32 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART rvb