Ex Parte Camp et al

Patent Trial and Appeal Board

Aug 27, 2014

12169143 (P.T.A.B. Aug. 27, 2014)

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.
12/169,143 07/08/2008 William O. Camp JR. 2002-901 / PU07 0433US1 8747
54472 7590 08/27/2014
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
FANG, PAKEE
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
08/27/2014 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 WILLIAM O. CAMP, JR., MARK GAVIN KOKES,
TOBY JOHN BOWEN, and WALTER M. MARCINKIEWICZ
____________

Appeal 2012-003761
Application 12/169,143
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1–20. Appellants appeal from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part and set forth new grounds of rejection for claim 1
under 35 U.S.C. § 103(a), pursuant to our authority under
37 C.F.R. § 41.50(b).
INVENTION
This invention relates “generally to communication systems. More
specifically, the invention relates to methods and apparatus for collecting
image data from camera-equipped communication devices for use in
assembling a composite representation of a visual subject.” (Spec. ¶ 1.)
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method of collecting digital image data associated with a
subject of interest, comprising:
receiving location data by an image collection server for a
camera-equipped mobile communication device in visual
proximity to the subject of interest;
determining whether the location data corresponds to a desired
view of the subject of interest;
sending an image capture request from the image collection
server to the mobile communication device, responsive to said
determining; and
receiving digital image data from the mobile communication
device in response to the image capture request.
(Contested limitations emphasized.)

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REJECTIONS
A. Claims 1–10 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Pande et al. (US Pub. 2004/0189517 A1,
published Sept. 30, 2004).
B. Claims 11–20 are rejected under 35 U.S.C. § 103(a) as being
obvious over Pande et al. in view of Sanz-Pastor et al. (US Pub.
2007/0242131 A1, published Oct. 18, 2007).

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of § 103
rejection B of claims 11–20 on the basis of representative claims 11 and 12.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1 We address § 102 rejection A of
claims 1–10 separately, infra.

ANALYSIS
Anticipation rejection of claim 1 over Pande
Regarding the anticipation rejection of claims 1–10, Appellants urge
that the Examiner has improperly relied on two entirely different
embodiments in Pande to support the rejection:
The Office Action’s analysis is confusing (and improper
as a matter of law) because it mixes and matches features from

1 Appellants filed a Notice of Appeal on June 23, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed.,
Rev. 8, July 2010.
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two entirely different embodiments of Pande’s system. The first
of these two embodiments is described in Pande’s paragraph
42, which describes a process initiated by the user of a wireless
device. The user captures a digital image of a site, and transmits
that image to a service center by pressing a key that requests a
list of nearby tourist attractions. (Pande ¶ 42.) The service
center then processes that image and associated data to
determine the location of the wireless device’s user. (Id.) Once
it knows the user’s location, the service center can send a list of
tourist attractions back to the user. (Id.) In the second
embodiment referenced by the Office Action, a “tagging”
process is initiated by the service center. (Pande Fig. 7, ¶¶ 55-
58.) A tagging command is sent to the wireless device from the
service center in order to locate the wireless device. (Pande ¶¶
55-56.) In response to the tagging command, the wireless
device captures an image, attaches location data if the wireless
device is equipped with an SPS receiver (e.g., a GPS receiver),
and sends it to the service center. (Pande ¶ 57.) The service
center then uses the SPS data, if available, to determine the
wireless device’s location, but in any case can compare the
received image to a database of reference images to determine
the device's location. (Pande ¶ 58.)

(App. Br. 10.)
Our reviewing court guides: Under § 102, the prior art reference
“must not only disclose all elements of the claim within the four corners of
the document, but must also disclose those elements arranged as in the
claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008) (citation and internal quotation marks omitted). “Thus, it is not
enough that the prior art reference discloses part of the claimed invention,
which an ordinary artisan might supplement to make the whole, or that it
includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.” Id. at 1371. (Emphasis added.)
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Here, we agree with Appellants that Pande’s paragraph 42 (referring
to wireless device 102, Figure 2) and Pande’s paragraph 55 (referring to
wireless device 102’, Figure 3) describe different embodiments.
Therefore, we find the evidence supports Appellants’ contention the
Examiner improperly relied on separate embodiments to support the
anticipation rejection over Pande. See Net MoneyIN, Inc., 545 F.3d at 1369.
Accordingly, we reverse the Examiner’s § 102 rejection of claims 1–10.

Rejection of claims 11, 15, 16, and 20 under § 103
Regarding claim 11, Appellants refer to Sanz-Pastor, Figure 7 and
paragraph 54 and contend: “At most, Sanz-Pastor discloses sending
emergency alert messages from a server to client devices. Sanz-Pastor does
not disclose alerting a user of a mobile communication device to an image
capture request received from a remote device.” (App. Br. 16.)
Appellants contention is unpersuasive. Appellants are attacking the
teachings of the references in isolation and do not specifically rebut the
Examiner’s ultimate legal conclusion of obviousness which is based on the
combined teachings and suggestions of Pande and Sanz-Pastor (which is
relied on as evidence that alerts on mobile devices are known). One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants further contest the Examiner’s proffered rationale to
modify Pande with the mobile device alert feature of Sanz-Pastor (¶ 54):
Appellant further submits that the rationales articulated by the
Office Action for combining Pande’s tagging feature with the
message filtering technique in Sanz-Pastor are misguided, and
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fail to provide a rational underpinning to support the legal
conclusion of obviousness. The tagging feature in Pande is
designed for locating lost children or lost property, situations
where a user of a mobile communication device may not be
available to operate the mobile communication device. (Pande
¶ 55.) This is further evidenced by the statement in Pande that
states “in such an embodiment, the wireless device is not
required to have a display, input unit, microphone or speaker.”
(Id.) Of course, without a display, input unit, microphone, and
speaker, a user of the wireless device cannot be alerted of a
received image capture request, nor can the user input the
image capturing command. However, the important issue is that
the tagging feature in Pande is designed to be automatic,
without involvement of a user. A person skilled in the art would
not be prompted to combine the tagging feature in Pande with
Sanz-Pastor’s message filter system, because doing so would
provide no improvement to Pande's system.

(App. Br. 16.)
Appellants’ arguments are unpersuasive because the contentions
appear to be grounded on an erroneous premise: a bodily incorporation of
all of the teachings of Pande’s system and wireless device into all the
teachings of the Sanz-Pastor system. We find Pande’s tagging feature
embodiment where the imager 202 is remotely activated (¶ 55) (as
referenced by Appellants – App. Br. 16) does not preclude the wireless
device from having a display, input unit, microphone or speaker. Moreover,
the Examiner merely looks to the secondary Sanz-Pastor reference for a
general teaching of a mobile device alert feature (¶ 54), and does not rely on
incorporating Pande's entire system into the system and method of Sanz-
Pastor.2 We reproduce the Examiner’s proffered rationale:

2 “The test for obviousness is not whether the features of a secondary
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[I]t would have been obvious for one of ordinary skill in the art
at the time of invention to combine the image and coordination
initiation by other in the mobile communication system of
Pande with the alerting the user when important event occurs of
Sanz–Pastor to improve the user’s awareness of the situation
and the action being taken or requested by the other party, thus;
empowering the user with the information provided.

(Ans. 9–10.)
We find the Examiner has provided “some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). We are mindful the skilled artisan would have been “able to fit the
teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR,
550 U.S. at 420–21. Further, our reviewing court guides: to be nonobvious,
an improvement must be “more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 401.
On this record, we are not persuaded the Examiner’s proffered
combination of the method and system of Pande with the wireless device
alert feature of Sanz-Pastor would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). For these reasons, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of

reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
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obviousness for representative independent claim 11. Accordingly, we
sustain the Examiner’s § 103 rejection of representative claim 11. Claims
15, 16, and 20 (not separately argued) fall therewith.
Claims 12–14 and 17–19
Appellants contend, “these dependent claims are patentable over
Pande and Sanz-Pastor because Pande does not disclose forming and
sending a positioning instruction from the image collection server to the
mobile communication device, operations that appear in all of these claims.”
(App. Br. 17.)
The Examiner finds “Pande discloses (Figs. 1-7) the image capture
request (an acquire image command) comprises a positioning instruction
(image capture input).” (Ans. 10.) In the “Response to Arguments” section
of the Answer, the Examiner further explains the basis for the rejection:
Pande discloses forming and sending reference orientation
remotely via a server. Sanz-Pastor compensates Pande’s
teaching by disclosing on Fig. 9 a real time position guide, e.g.
position instruction, to assist the user of the screen; thus, the
user can alter the screen image by following the real time
position guide. Therefore, it would have been obvious for one
of ordinary skill in the art at the time of invention to combine
the image and coordination initiation by others remotely in the
mobile communication system of Pande with the alerting the
user when important event occurs of Sanz-Pastor to improve the
user’s awareness of the situation and the action being taken or
requested by the other party, thus; empowering the user with
the latest information provided.

(Ans. 15.)
Appellants do not further rebut the specific findings by the Examiner
which are based on the combined teachings and suggestions of Pande and
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Sanz-Pastor. Therefore, on this record, we are not persuaded of error
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness regarding representative dependent claim 12.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 12. Claims
13, 14, and 17–19 (not separately argued) fall therewith.

New Grounds of Rejection for Claim 1 under § 103(a)
Using our authority under 37 C.F.R. § 41.50(b), we set forth a new
ground of rejection under 35 U.S.C. § 103(a) for independent claim 1 over
Pande. Appellants’ arguments (App. Br. 10) regarding the Examiner’s
improper reliance on separate, distinct, embodiments of Pande to support an
anticipation rejection are inapplicable to the Examiner’s reliance upon
separate embodiments of Pande (and the secondary Sanz-Pastor reference) in
the context of obviousness. See Boston Scientific Scimed, Inc. v. Cordis
Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“[c]ombining two embodiments
disclosed adjacent to each other in a prior art patent does not require a leap
of inventiveness”).
We further note Appellants have only contested the "sending" step of
claim 1. Therefore, we modify the contested portion of the Examiner’s
rejection under § 102, and essentially reapply the Examiner’s findings under
§ 103. Because the Board is a reviewing body, we leave it to the Examiner
to consider further rejection(s) of dependent claims 2–10 over the references
of record and/or additional references.
We find Pande alone (without modification) would have taught or
suggested all claim 1 limitations (shown in italics), as follows:
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As per claim 1, Pande teaches (Figs. 1–7) A method [¶¶ 17–19]
of collecting digital image data (image information) associated
with a subject of interest (nearby reference) [¶ 42], comprising:

receiving location data (403, ¶ 50, Fig. 3) by an image
collection server (Fig. 1, server 123, ¶ 31) for a camera-
equipped mobile communication device (Fig. 3, wireless device
102' containing imager 202, ¶36) in visual proximity to the
subject of interest; (“digital image 402 may contain location
data 403 . . . [u]pon receiving the digital image 402 from the
wireless device 102 in cell site 104 at the service center 120”).
See Pande ¶ 50;

determining whether the location data corresponds to a desired
view (the view of 402) of the subject of interest (Fig. 4; the
objects) ¶ 50; see also Pande ¶ 51:

The service center 120 receives the digital image
and cell site characteristics in step 514. The
reference digital images are accessed from
database 122 using the cell site characteristics and
the associated location data from the SPS if
available. The digital image is compared to the
references images in step 518. If a match is found
in step 518, then processing of the location
information occurs per the selected function in step
520 and processing is completed in step 522.

(Pande ¶ 51.)

We find Pande’s paragraph 51 (p. 5, right column) would have
taught or suggested the step or act of: “sending an image
capture request from the image collection server to the mobile
communication device, responsive to said determining,” as
claimed:

If the location cannot be ascertained in step 218,
then a request is sent for further information from
the wireless device 102 in step 524. The process is
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then repeated with another image being transferred
to the service center 120.

(Pande ¶ 51.)

receiving digital image data from the mobile communication
device in response to the image capture request (See Pande ¶
51: “The process is then repeated with another image being
transferred to the service center 120.”).

DECISION
We reverse the Examiner’s decision rejecting claims 1–10 under
§ 102.
We affirm the Examiner’s decision rejecting claims 11–20 under
§ 103.
We enter a new ground of rejection against claim 1 under 35 U.S.C.
§ 103(a).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
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overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 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 ground of
rejection and also state all other grounds upon which rehearing
is sought.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(B)

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