Ex Parte Gelfand et al

Patent Trials and Appeals Board

Apr 26, 2016

12108281 - (D) (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/108,281 04/23/2008
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
04/28/2016
FIRST NAMED INVENTOR
Natasha Gelfand
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P3054USOO 1305
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATASHA GELFAND, RAMAKRISHNA VEDANTHAM,
C. PHILIPP SCHLOTER, RADEK GRZESZCZUK, WEI-CHAO CHEN,
SURESH CHITTURI, JIANG GAO, MARKUS KAHARI,
DAVID MURPHY, KARI PULLI, RAMINVATANPARAST, and
YINGEN XIONG
Appeal2014-002733
Application 12/108,281
Technology Center 3600
Before JENNIFERD. BAHR, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Natasha Gelfand et al. ("Appellants") 1 appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 9-19 and 28-32 under
35 U.S.C. § 102(e) as anticipated by Lee (US 2008/0147730 Al, pub.
June 19, 2008). The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Nokia Corporation as the real party in interest.
Appeal Br. 1.
Appeal2014-002733
Application 12/108,281
CLAIMED SUBJECT MATTER
Claims 9, 17, 28, and 31 are independent. Claim 28 illustrates the
claimed subject matter:
28. An apparatus comprising:
at least one processor; and
at least one memory including computer program code for
one or more programs,
the at least one memory and the computer program code
configured to, with the at least one processor, cause the apparatus
to perform at least the following,
define and associate meta-information with one or more
objects,
receive one or more captured images of objects from a
device,
determine whether the one or more captured images
comprise data that corresponds to at least one of the one
or more objects, and
determine to transmit media data associated with at least one
object to the device.
Appeal Br. 19--20 (Claims App.).
ANALYSIS
Appellants initially argue the rejection fails to address each claim
limitation, and further fails to designate the part( s) of the Lee disclosure
relied on as nearly as practicable. Appeal Br. 7, 9. Appellants assert "the
Examiner merely cites multiple sections/elements of [Lee], without
providing an explanation as to how the relied upon sections/elements are
alleged to correspond to the claimed features." Id. at 9.
The only claims specifically discussed by Appellants are independent
claim 28 and dependent claims 11, 12, 13, and 15 (each depending directly
or indirectly from independent claim 9). Appeal Br. 6-13. We have
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Application 12/108,281
reviewed the Examiner's reasons for rejecting these claims as anticipated by
Lee. Final Act. 3--4, 6-8; Ans. 5-9. We determine the Examiner adequately
addresses each claim limitation, and adequately identifies where Lee is
found to disclose those limitations, as is apparent from the discussions
below. We, therefore, are not persuaded of Examiner error in these regards.
Independent Claims 9, 17, 28, and 31
Appellants argue the Examiner errs in finding Lee discloses, as recited
in claim 28, an "apparatus" including computer code configured to "define
and associate meta-information with one or more objects." Appeal Br. 7, 11;
Reply Br. 2-3. Appellants assert the Examiner fails to identify the element
of Lee that is alleged to correspond to the claimed apparatus. Appeal Br. 7,
11; Reply Br. 2-3. Appellants further assert the Examiner errs in relying on
Lee's Figures 3 and 4, and Lee's discussion of a hotel price, as disclosing
the claimed defining and associating meta-information with one or more
objects. Id. at 11.
The Examiner pertinently states: "Lee discloses defining and
associating meta-information with one or more objects (figure 4[2J #121,
hotel image, figure 5 #137, example given as the price of a hotel, $35, meta-
information about the hotel shown in figure 3 # 121 ). " Final Act. 3. The
Examiner further states Lee discloses "'meta-information', as shown in
figure 5 #137, by example given as the price of a hotel, $35, meta-
information about the hotel shown in figure 3 #121)." Id. at 6-7. The
Answer adds: "The data image #121, has meta-information #117 and 127.
2 In context, it is clear the Examiner's reference to Figure 4 here is a
typographical error, and the Examiner meant Figure 3.
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Application 12/108,281
The address and location are data that refer to the picture of the building in
the image #121." Ans. 5.
These various statements by the Examiner sufficiently notify
Appellants that the Examiner finds the various objects appearing in Lee's
images 121, such as the hotel object in the image 121 of Figure 3,
correspond to the "one or more objects" of claim 28. These statements
further find Lee discloses defining and associating meta-information with
the objects in an image 121, as claimed, when Lee's image server 120
retrieves information about such objects (such as the hotel's address or the
hotel's advertised $35 overnight rate) to overlay the information on the
image 121 (as shown in Figure 5). See Lee i-fi-140-42 (describing Figures 3-
5, cited by the Examiner). We determine these findings are supported by a
preponderance of the evidence.
Appellants also argue the Examiner errs in finding Lee discloses, as
recited in claim 28, an apparatus including computer code configured to
"determine whether the one or more captured images comprise data that
corresponds to at least one of the one or more objects." Appeal Br. 7, 12;
Reply Br. 3--4. Appellants assert Lee fails to disclose image server 120
determines whether an image 121 received from mobile device 110
comprises data that corresponds to one or more objects. Appeal Br. 12.
Appellants point out Lee's mobile device 110 sends to the image server 102
not only the image 121, but also information from the device's locator 114
identifying the location of the device. Id. (citing Lee i138). Based on that
disclosure, and Lee paragraph 40, Appellants assert Lee "merely teaches that
the image server 120 simply recognizes a building from" the location
information provided by the mobile device 110. Id.
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Application 12/108,281
We are not persuaded of Examiner error by these arguments.
Appellants misconstrue the scope of claim 28. The limitation at issue
requires the claimed apparatus to "determine whether the one or more
captured images comprise data that corresponds to at least one of the one or
more objects." Claim 28 does not thereby require the apparatus to determine
the location where the captured images were taken. Lee's image server 120
performs the claimed limitation when it analyzes the image 121 to recognize
objects therein (such as a hotel). See Lee i-f 40.
For the foregoing reasons, we sustain the rejection of claim 28 as
anticipated by Lee. Appellants assert the other independent claims 9, 17,
and 31 are not anticipated by Lee because they "recite similar features" to
features argued for claim 28. Appeal Br. 12; Reply Br. 4. We likewise
sustain the rejection of claims 9, 17, and 31 as anticipated by Lee.
Dependent Claims 11 and 3 0
Appellants argue the Examiner errs in finding Lee discloses the
limitation of claim 11: "wherein determining to transmit comprises
generating a list of candidate media data to be provided to the device."
Appeal Br. 7-8, 12-13; Reply Br. 5. According to Appellants, Lee
paragraph 40 (cited by the Examiner) fails to disclose the image
database 125 performing the limitation of claim 11, and Lee is silent
concerning such limitation. Appeal Br. 7-8.
The Examiner pertinently finds Lee at "figure 1 #125, page 3 para 40,
image database" discloses the limitation of claim 11. Final Act. 3. The
Answer adds: "The image database [125] holds all the candidates." Ans. 6,
8-9.
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Application 12/108,281
A preponderance of evidence does not support the Examiner's finding
that Lee discloses the limitation of claim 11. The Examiner relies on the
images stored within Lee's image database 125 as the claimed "candidate
media data to be provided to" the mobile device 110. Lee discloses
recognition engine 122 of image server 120 uses the images within image
database 125 to identify objects within an image 121 received from mobile
device 110. Lee i-f 40. Lee's image server 120 then sends information to
mobile device 110 that is associated with the recognized object. Id. i-f 41.
However, Lee does not disclose that the images stored in image
database 125 are provided to mobile device 110. Those images, therefore,
cannot be "candidates ... to be provided to" device 110, as claimed. Thus,
we do not sustain the rejection of claim 11 as anticipated by Lee.
Claim 3 0 recites, similarly to claim 11, an apparatus "generating a list
of candidate media data to be provided to the device." Appeal Br. 20
(Claims App.). Claim 30 is rejected based on the same findings as claim 11.
Final Act. 3. Therefore, we likewise do not sustain the rejection of claim 30
as anticipated by Lee.
Dependent Claim 12
Appellants argue the Examiner errs in finding Lee discloses the
limitation of claim 12: "wherein prior to determining to transmit media data,
the method further comprises determining a geographical location of the
device and choosing the media data based on the geographical location."
Appeal Br. 8, 13.
The Examiner pertinently finds Lee at "figure 2 #204" discloses the
limitation of claim 12. Final Act. 4. Element 204 is a method step, during
which "a location of the mobile device [110] can be determined." Lee i-f 39.
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For example, Lee's mobile device 110 may use its locator 114 to determine
its location, and then send that location information to image server 120. Id.
A preponderance of the evidence supports the Examiner's finding that
Lee discloses the limitation of claim 12. Claim 12 is a method claim, and
does not require any particular apparatus (e.g., Lee's mobile device 110 or
Lee's image server 120) to perform the recited determination. Moreover,
even if image server 120 were required to perform the determination,
nothing in claim 12 prevents the determination from being made by
receiving location information from mobile device 110. Further, Lee
discloses the location of device 110 is determined prior to choosing media
data to be provided to device 110 based on the location. Lee i-fi-1 3 9-41.
Therefore, we sustain the rejection of claim 12 as anticipated by Lee.
Dependent Claim 13
Appellants argue the Examiner errs in finding Lee discloses the
limitation of claim 13: "wherein determining to transmit the media data
comprises using the meta-information associated with a first entity to send
the media data to another entity." Appeal Br. 8; Reply Br. 5. According to
Appellants, the Examiner appears to suggest Lee's disclosure of a phone
number and a location corresponds to the claimed meta-information. Appeal
Br. 8. Appellants assert this suggestion is unreasonable, because "a text
search of [Lee] reveals that there is simply no discussion of meta-
information" or "the use of meta-information associated with a first entity to
send media data to another entity." Id.
The Examiner pertinently finds Lee at "figure 2 #206-208, ...
para 54, phone number, and location" discloses the limitation of claim 13.
Final Act. 4; Ans. 7-8.
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Application 12/108,281
A preponderance of the evidence supports the Examiner's finding that
Lee discloses the limitation of claim 13. The cited disclosure indicates Lee's
image server 120 analyzes an image 121 to recognize a building therein, and
then retrieves information about the building, such as the building's address
and "contact information associated with businesses and people in the
building." Lee i-fi-140-41 (describing method steps 206 and 208); see also id.
i135 (list of contacts can include phone numbers). Such information is then
sent to Lee's mobile device 110. Id. i141. Lee's failure to describe this
information as "meta-information" does not negate anticipation. In re
Gleave, 560 F.3d 1331, 1335 (Fed. Cir. 2009) (anticipatory reference need
not satisfy ipsissimis verbis test) (citing In re Bond, 910 F.2d 831, 832-33
(Fed. Cir. 1990)). Therefore, we sustain the rejection of claim 13 as
anticipated by Lee.
Dependent Claim 15
Appellants argue the Examiner errs in finding Lee discloses the
limitation of claim 15: "wherein the media data comprises first and second
parts, the first part comprises a first advertisement and the second part
comprises a second advertisement that is inserted within the first
advertisement." Appeal Br. 8; Reply Br. 6. According to Appellants, the
Examiner errs in relying on Lee's Figure 5 as disclosing "images 121-127
(the alleged second advertisement) are inserted in mobile device 110 (the
alleged first advertisement)." Appeal Br. 8. Appellants assert Lee's mobile
device 110 is not a first advertisement. Id.
The Examiner pertinently finds Lee at "figure 5, 121-137, all inserted
into # 11 O)" discloses the limitation of claim 15. Final Act. 4 (emphasis
added). The Examiner further states Lee anticipates claim 15 by "inserting
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Application 12/108,281
advertisement such as 'hotel $35 night' into #110, another advertisement."
Id. at 8. The Answer adds: "Lee's first advertisement is shown in figure 5
#121. Webster's dictionary defines advertisement as a public notice, so the
hotel for $35 and a movie for $4, are part of the first advertisement." Ans. 7.
A preponderance of the evidence does not support the Examiner's
finding that Lee discloses inserting a second advertisement into a first
advertisement. Neither Lee's mobile device 110, nor an image 121 taken by
the camera of device 110 to identify objects shown therein, may reasonably
be considered an "advertisement" as recited in claim 15. Therefore, we do
not sustain the rejection of claim 15 as anticipated by Lee.
Dependent Claims 10, 14, 16, 18, 19, 29, and 32
Appellants do not present any arguments for the patentability of
dependent claims 10, 14, 16, 18, 19, 29, and 32, apart from the arguments
for their respective parent claims. Appeal Br. 12; Reply Br. 4. We,
therefore, sustain the rejection of these claims as anticipated by Lee, for the
reasons provided above in connection with the independent claims.
DECISION
The rejection of claims 9--19 and 28-32 as anticipated by Lee is
affirmed as to claims 9, 10, 12-14, 16-19, 28, 29, 31, and 32, and reversed
as to claims 11, 15, and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended, under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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