Ex Parte HakanssonDownload PDFPatent Trial and Appeal BoardNov 29, 201210538293 (P.T.A.B. Nov. 29, 2012) 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. 10/538,293 06/10/2005 Johannes Hakansson 9563-35 1566 20792 7590 11/30/2012 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER HENN, TIMOTHY J ART UNIT PAPER NUMBER 2662 MAIL DATE DELIVERY MODE 11/30/2012 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 JOHANNES HAKANSSON ____________________ Appeal 2010-007872 Application 10/538,2931 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed June 10, 2005, claiming priority of PCT/EP03/13765 filed December 5, 2003, EPO 020274528 filed December 10, 2002, and US 60/433,796 filed December 16, 2002. The real party in interest is Sony Ericsson Mobile Communications AB. (App. Br. 1.) Appeal 2010-007872 Application 10/538,293 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-16, which are all the claims remaining in the application. Claims 17 and 18 have been canceled. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention The invention at issue on appeal concerns a cellular phone, computer program product, image editor, and method for providing storable image effects in a processing device, in particular, a cellular phone. (Spec. 1:5-11; 2:13-30; Abstract.)2 Representative Claim Independent claim 1, reproduced below, with disputed limitations italicized, further illustrates the invention: 1. A method of providing storable image effects in a cellular phone comprising: generating an effect for application on digital images based on entries of a user; storing the effect as an effects file in a defined standardised image editor independent effects format; and transferring the effects file to another device, such that it is used for later application on more than one image, the multiple images not being associated with one another. 2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”) filed November 20, 2009; and Reply Brief (“Reply Br.”) filed April 19, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed February 18, 2010. Appeal 2010-007872 Application 10/538,293 3 Rejections on Appeal 1. The Examiner rejects claims 1-5, 7-12, and 14-16 under 35 U.S.C. § 103(a) as being unpatentable over US 7,038,716 B2, issued May 2, 2006 (filed Mar. 1, 2001) (“Klein”), US 2003/0071903 A1, published Apr. 17, 2003 (filed Jun. 25, 2002) (“Nakami”), and US 2003/0063198 A1, published Apr. 3, 2003 (filed Aug. 27, 2002) (“Yokokawa”). 2. The Examiner rejects claims 6 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Klein, Nakami, Yokokawa, and US 5,913,088, issued Jun. 15, 1999 (“Moghadam”). ISSUE Based on our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in finding that the combination of Klein, Nakami, Yokokawa collectively would have taught or suggested “generating an effect for application on digital images,” “storing the effect as an effects file,” “and transferring the effects file to another device, such that it is used for later application on more than one image, the multiple images not being associated with one another” (claim 1), within the meaning of Appellant’s claim 1 and commensurate limitations of claims 8, 15, and 16? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action as our own. Appeal 2010-007872 Application 10/538,293 4 ANALYSIS Based on Appellant’s arguments (App. Br. 3-6), we select independent claim 1 as representative of Appellants’ arguments and groupings with respect to claims 1-16. 37 C.F.R. § 41.37(c)(1)(vii). The § 103 Rejection of Claim 1 Appellant contends the combination of Klein, Nakami, and Yokokawa does not teach that “the effects file is transferred to another device where it is subsequently used on more than one image, which are not associated with one another” (App. Br. 5; see id. at 4, 6; Reply Br. 1-2.) Specifically, Appellant contends that “Nakami, therefore, teaches against using the output control data on a printer for more than one image as the other images may be associated with other photographers and/or the same photographer may wish to process/print images differently based on the particular subject matter featured in the image.” (App. Br. 5.) The Examiner sets forth a detailed explanation of the obviousness rejection in the Examiner’s Answer with respect to each of the claims (Ans. 3-8) and, in particular, the rejection of claims 1 and 8 (Ans. 3-5, 7-8). Specifically, the Examiner provides a detailed explanation with respect to Klein’s disclosure of a cellular phone including a memory and Nakami’s disclosure of a system for applying image effects to captured images (Ans. 3-5, 7-8 (citing Klein, col. 8, ll. 59-60; Figs. 2, 5; and Nakami, ¶¶ [0062], [0077]-[0078]; Figs. 3, 5, 7).) The Examiner also provides a detailed discussion concerning Yokokawa’s disclosure of capturing multiple images under multiple different (unrelated) shooting conditions. (Ans. 4-5, 7-8 Appeal 2010-007872 Application 10/538,293 5 (citing Yokokawa, Figs. 3A, 3B, 7A, 7B).) We adopt these findings and this reasoning as our own. Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s findings and ultimate conclusion that the combination of Klein, Nakami, Yokokawa would have taught or at least suggested the disputed features of claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the Answer, which we incorporate herein by reference. (Ans. 3-8.) We limit our additional analysis to the following points of emphasis. We initially note that all of the argued limitation fails to distinguish the claimed invention from the prior art either structurally or functionally. The recited “effects file” and its application to unassociated or unrelated images (“application on more than one image, the multiple images not being associated with one another” (claim 1, emphasis added)) are all essentially non-functional descriptive material in that the limitations simply describe stored images and algorithms – i.e., data. The data received or manipulated by a device is non-functional descriptive material in that the underlying structure and functionality remain the same regardless of what the data constitutes, how the data may be named, or the relationship among the data and do not further limit the claimed invention either functionally or structurally. The informational content of the data thus represents non- functional descriptive material, which “does not lend patentability to an otherwise unpatentable computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal 2010-007872 Application 10/538,293 6 Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90 (discussing non- functional descriptive material). Even if we arguendo ascribe some patentable weight to the limitations, as explained by the Examiner, the combination of Klein, Nakami, and Yokokawa teaches or at least would have suggested an image effect (effects file) applied to multiple images that could be unassociated or unrelated. (Ans. 3-5, 7-8.) Thus, Appellant does not persuade us of error in the Examiner’s obviousness rejection of representative independent claim 1. Independent claims 8, 15, and 16 include limitations of commensurate scope. Appellant does not present separate arguments with respect to independent claims 8, 15, and 16, or dependent claims 2-7 and 9-14. (App. Br. 6.) Accordingly, we affirm the Examiner’s rejection of representative claim 1 and claims 2-16 for the reasons discussed with respect to claims 1 (supra). CONCLUSIONS OF LAW Appellant has not shown that the Examiner erred in rejecting claims 1-16 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 1-16. Appeal 2010-007872 Application 10/538,293 7 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 le Copy with citationCopy as parenthetical citation