Ex Parte CuiDownload PDFPatent Trial and Appeal BoardMar 12, 201813726595 (P.T.A.B. Mar. 12, 2018) Copy Citation 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. 13/726,595 12/25/2012 Yan Qing Cui 042933/462219 2961 10949 7590 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER LHYMN, SARAH ART UNIT PAPER NUMBER 2613 NOTIFICATION DATE DELIVERY MODE 03/14/2018 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YAN QING CUI Appeal 2017-008976 Application 13/726,5951 Technology Center 2600 Before ROBERT E. NAPPI, DAVID M. KOHUT, and LYNNE E. PETTIGREW, Administrative Patent Judges. KOHUT, Administrative Patent Judge. 1 According to Appellant, the Real Party in Interest is Nokia Technologies Oy. App. Br. 2. Appeal 2017-008976 Application 13/726,595 DECISION ON APPEAL STATEMENT OF THE CASE2 This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3—7, 9—16, and 18—24.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a new ground of rejection pursuant to 37 C.F.R. § 42.50(b). INVENTION The invention is directed to a method of processing digital composite images during photography. Spec, 5—8. CLAIMED SUBJECT MATTER Claims 1,16, and 22 are the independent claims on appeal. Claim 1 is representative and is reproduced below. 1. A method comprising: causing a first image of a first real-time scene to be displayed to a user on a view-finder, the first image comprising one or more selectable objects from the first real-time scene; receiving a first user input selecting at least one selectable object from the first real-time scene, wherein 2 Our Decision makes reference to Appellant’s Reply Brief (“Reply Br.,” filed June 5, 2017) and Appeal Brief (“App. Br.,” filed March 3, 2017), and the Examiner’s Answer (“Ans.,” mailed April 5, 2017) and Final Office Action (“Final Act.,” mailed August 10, 2016). 3 Claims 2, 8, and 17 were previously cancelled. App. Br. 16—22, Claims App’x. 2 Appeal 2017-008976 Application 13/726,595 the at least one selected object is a portion of the first real-time scene, such that at least another portion of the first real-time scene is unselected; subsequent to receiving the first user input, causing display of a second real-time scene on the view-finder; causing display of the at least one selected object on the view-finder displaying the second real-time scene; and in response to a user capture input, a) causing a second image to be captured, wherein the second image reflects the second real-time scene, b) combining the at least one selected object and the second image to create a composite image, and c) causing the composite image to be stored. App. Br. 16, Claims App’x. Independent claims 16 and 22 recite similar limitations as claim 1, and Appellant argues they are allowable for the same reasons as argued for claim 1. App. Br. 8—9; Reply Br. 1—5. 3 Appeal 2017-008976 Application 13/726,595 GROUNDS OF REJECTIONS The Examiner rejected claims 1, 4, 5, 7, 15, 16, and 19—24 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek (U.S. 2010/0172586 Al; July 8, 2010) and Kinjo (U.S. 2002/0001036 Al; Jan. 3, 2002). The Examiner rejected claims 3 and 18 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek, Kinjo, and Salgian (U.S. 2008/0089556 Al; Apr. 17, 2008). The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek, Kinjo, and Fukumoto (U.S. 2011/0242024 Al; Oct. 6, 2011). The Examiner rejected claims 9, 10, and 12 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek, Kinjo, and Boo (U.S. 2006/0251328 Al; Nov. 9, 2006). The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek, Kinjo, Boo, and Salgian. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek, Kinjo, and Zhou (U.S. 2008/0037852 Al; Feb. 14, 2008). The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious over the combination of Sorek, Kinjo, and Krtolica (U.S. 2003/0012438 Al; Jan. 16, 2003). ISSUE Appellant’s arguments present us with the following issue: 4 Appeal 2017-008976 Application 13/726,595 Did the Examiner err in finding the combination of Sorek and Kinjo teaches or suggests “in response to a user capture input, a) causing a second image to be captured, wherein the second image reflects the second real-time scene, b) combining the at least one selected object and the second image to create a composite image, and c) causing the composite image to be stored,” as recited in claim 1 and similarly recited in independent claims 16 and 22? App. Br. 8—13; Reply Br. 1—5. ANALYSIS Regarding independent claims 1,16, and 22, the Examiner finds that Sorek’s method for generating a collage of images in real-time in combination with Kinjo’s image processing method teaches or suggests the claimed invention. Final Act. 6—7 (citing Sorek || 30, 32, 49, 50, Figs, la— d; Kinjo 64, 78). Specifically, the Examiner finds Sorek’s guideline preview is the same as the claimed view-finder and displays an object from a captured first image while displaying a second real-time scene, and upon capturing the second image, the first and second images are automatically superimposed and combined into a composite image and then stored in accordance with Kinjo’s teaching. Final Act. 7; Ans. 3 (citing Sorek || 47, 50), 6 (citing Sorek | 50, Fig. 2). Appellant argues Sorek’s preview is not a view-finder that displays an object from a captured first image while displaying a second real-time scene prior to capturing the second image. App. Br. 10; Reply Br. 1—3, 5. Rather, Appellant argues, Sorek captures the first and second images separately, and then a preview of a composite image is generated, as seen in the guideline 5 Appeal 2017-008976 Application 13/726,595 preview mode, for user modification or acceptance. App. Br. 8, 10; Reply Br. 4. We agree with Appellant. Sorek teaches a digital camera with a digital display, and Sorek Figures lb and Id depict the first and second images as being captured separately. Sorek 149, Figs, lb, Id. Figure 2 of Sorek depicts the Guideline Preview, which allows a user to create and modify a composite image from the images of Figures lb and Id. Sorek Tflf15—24, 31,51, Fig. 2. However, the Examiner does not show, nor do we find, that Sorek teaches that the view-finder displays the composite image to the user in real-time prior to capture, or that the selected object from the first image is displayed on the view-finder while displaying the second real-time scene. Thus, we agree with Appellant that Sorek’s Guideline Preview is not the same as a view-finder displaying a selected object from the first image on the view-finder while displaying a second real-time scene prior to capture of the second image, as required by the claims. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1,16, and 22 or claims 3-7, 9-15, 18—21, 23, and 24 which are dependent upon one of independent claims 1, 16, or 22. NEW GROUND OF REJECTION Claims 1,16, and 22 are newly rejected under 35 U.S.C. § 103 as unpatentable over the combination of Sorek and Kinjo. As discussed above, we agree with Appellant that Sorek does not teach a view-finder displaying a selected object from a first image on the view-finder while displaying a second real-time scene, as claimed. However, we find that Kinjo teaches these limitations. Kinjo teaches a 6 Appeal 2017-008976 Application 13/726,595 digital camera with a monitor that displays real-time scenes of images being taken. Kinjo 154. In a first real-time scene, Kinjo teaches that subject A is photographed and a reference area is selected (i.e., the reference area is the selectable object from first real-time scene) by the user. Kinjo 155. The user then prepares to photograph subject B (in a second real-time scene), and the monitor on the camera shows the selectable object superimposed with the second real-time scene. Kinjo 1 59, Fig. 3B. Kinjo teaches that the user can use the monitor for size comparisons and measurements and to alter the light of the selectable object and the second-real-time scene prior to capturing the second image. Kinjo H 57, 115. Additionally, Kinjo teaches that the photograph of subject B is stored in image memory after it is taken. Kinjo 1122, 59. It would have been obvious to one of ordinary skill in the art to modify Sorek’s method for generating a collage (composite image), where a user captures a second image (Sorek Figs, lc, Id) and generates a composite image with a selected object from the first image (Sorek Fig. 2), with Kinjo’s real-time view-finder display to view the selected object from the first image superimposed over the real-time scene prior to capturing the second image. Kinjo H 54—56, 59; see Sorek 1 50, Fig. 2. One of ordinary skill in the art would have been motivated to do so in order to provide the user with flexibility in determining the right composition for the composite image before the second image or subsequent images are taken in response to a user capture input and the composite is generated and stored so a user can reference the image later. Kinjo H 57, 115. We designate our analysis to be a new ground of rejection of independent claims 1,16, and 22 under 35 U.S.C. § 103 as obvious over the combination of Sorek and Kinjo. 7 Appeal 2017-008976 Application 13/726,595 OTHER ISSUES We have made a new ground of rejection regarding independent claims 1,16, and 22 under 37 C.F.R. § 41.50(b). However, we have not reviewed dependent claims 3—7, 9-15, 18—21, 23 or 24 to the extent necessary to determine whether these claims would have been obvious over the combination of Sorek and Kinjo or other prior art. We leave it to the Examiner to determine the appropriateness of any further rejections based on these other references. Our decision not to enter a new ground of rejection for all claims should not be considered as an indication regarding the appropriateness of further rejection or allowance of the non-rejected claims. DECISION The Examiner’s rejections of claims 1, 3—7, 9—16, and 18—24 are reversed. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION for claims 1, 16, and 22 under 35 U.S.C. § 103(a) as unpatentable over the combination of Sorek and Kinjo. Section 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS 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: 8 Appeal 2017-008976 Application 13/726,595 (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. . . . (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. REVERSED; 37 C.F.R, § 41.50(b) 9 Copy with citationCopy as parenthetical citation