Ex Parte Hamada et al

Patent Trial and Appeal Board

Jul 30, 2014

10543565 (P.T.A.B. Jul. 30, 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.
10/543,565 04/03/2006 Masaaki Hamada 09812.0404 2863
22852 7590 07/30/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
JACOB, AJITH
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
07/30/2014 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 MASAAKI HAMADA, MORIFUMI KIKKAWA,
YOSHIKI TANAKA, and TAKEHIKO MORITA
____________________

Appeal 2012-000579
Application 10/543,565
1

Technology Center 2100
____________________

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

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 27, 28, 32, 33 and 37. Appellants have previously
canceled claims 1–26, 29–31, 34–36 and 38–40. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1
According to Appellants, the real party in interest is Sony Corporation.
App. Br. 4.
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STATEMENT OF THE CASE
2

The Invention
Appellants’ invention relates to
an information processing apparatus, an information processing
method, and a computer program. More particularly, the
invention relates to an information processing apparatus, an
information processing method, and a computer program in
which, in a system for sending and receiving image content
between network-connected devices, a server, which provides
image content to a client, has correct angle information
(original angle) for images and sends the information to the
client so as to allow a client to perform optimal image display
processing.
Spec. 1, ll. 8–18 ("Technical Field").
Exemplary Claim
Claim 27, reproduced below, is representative of the subject matter on
appeal (emphases added to disputed limitations):
27. A client in communication with a server over a
communication network, the client configured to display image
content received from the server, the image content including a
still image or a moving picture, the client comprising:
a receiving unit configured to receive, from the server
over the network, the image content and metadata associated
with the image content, the metadata including an original

2
Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
May 18, 2011); Reply Brief (“Reply Br.,” filed Oct. 4, 2011); Examiner’s
Answer (“Ans.,” mailed Aug. 11, 2011); Final Office Action (“Final Act.,”
mailed Aug. 6, 2010); and the original Specification (“Spec.,” filed
July 27, 2005).
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screen display rotation of the image content relative to a
rotation of the image content as received from the server;
a metadata processing unit configured to acquire the
original screen display rotation from the metadata, and to
generate rotation control data for rotating the image data based
on the original screen display rotation;
an image processing unit configured to:
determine whether the client is configured with an image
rotation processing function;
when it is determined that the client is not configured
with an image rotation processing function, send from the client
to the server over the network a request to rotate the image
content at a server side based on the original screen display
rotation and to send the rotated image content to the client, the
request including the rotation control data, wherein the
requested rotation is performed by the server in response to the
request and using the rotation control data, and the rotated
image content is sent by the server to the client over the
network for display; and
when it is determined that the client is configured with an
image rotation processing function, rotate the image content at a
client side based on the original screen display rotation using
the rotation control data; and
a display unit configured to display the rotated image
content.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Saito US 5,757,379 May 26, 1998
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Rejection on Appeal
3

Claims 27, 28, 32, 33 and 37 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Saito. Ans. 3.
GROUPING OF CLAIMS
Based on Appellants' arguments (App. Br. 14–22), we decide the
appeal of the rejection on the basis of representative claim 27. Although
Appellants appear to set forth what appear to be separate arguments for each
of independent claims 27, 32 and 37, we find the issue raised in connection
with claim 27, infra, to be dispositive of all claims on appeal.

3
In the event further prosecution should ensue with respect to computer-
readable medium claim 37, we invite the Examiner's attention to current
USPTO guidance in the determination of whether the recited "computer-
readable medium" is directed to statutory subject matter under § 101. The
broadest reasonable interpretation of such claims typically covers forms of
transitory propagating signals per se, which are non-statutory subject matter.
See 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Subject Matter
Eligibility of Computer Readable Media. See also In re Nuijten, 500 F.3d
1346, 1356–57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter). Under our jurisprudence, the scope of the recited
“computer readable storage medium” appears to encompass transitory media
such as signals or carrier waves, where, as here, the Specification (Spec. 56,
ll. 14–21) does not limit the computer readable storage to non-transitory
forms. Accord Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (holding recited machine-readable storage medium ineligible
under § 101 since it encompasses transitory media). Here, the recited
“computer readable medium” is not claimed as non-transitory, and the
disclosure does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting language.
Therefore, the medium encompasses transitory forms and appears ineligible
under § 101.
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5
DISPOSITIVE ISSUE
Appellants argue (App. Br. 14–16; Reply Br. 1–5) the Examiner’s
rejection of claim 27 under 35 U.S.C. § 102(b) as being anticipated by Saito
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
limitations of:
when it is determined that the client is not configured with an
image rotation processing function, send from the client to the
server over the network a request to rotate the image content at
a server side based on the original screen display rotation and to
send the rotated image content to the client[,]
as recited in claim 27? (Emphasis added).
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We agree with Appellants’ arguments with respect to claim 27, and
we disagree with (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ arguments. We highlight and address specific findings and
arguments regarding claim 27 for emphasis as follows.

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The Examiner finds:
The reference also teaches the ability of the combined
transmission and receiving apparatus (also called the
communication apparatus) to send and receive the images after
editing and rotating [column 2, lines 62-67 -- column 3, lines 1-
16]. This is also shown in Figure 6, which shows the
communication apparatus as a whole and how the receiving and
transmission apparatus are capable of communicating with each
other after instructions and edits. Thus the reference shows the
ability to have to devices networked to rotate an image and the
ability to send the image back to the original device after
rotation.
Ans. 7 (emphasis added).
However, Appellants persuasively argue:
[A]ny "transmission apparatus" disclosed in column 2, lines 29-
35, of Saito does not send to a server, over a network, a request
to send rotated image content back to the "transmission
apparatus." Moreover, there would be no reason for such a
"transmission apparatus" of Saito to send to a server, over a
network, a request to send rotated image content back to the
"transmission apparatus," because an image receiving apparatus
of Saito receives an image from the "transmission apparatus,"
edits the image, and displays the edited image, but never sends
the edited image back to the "transmission apparatus."
Column 2, lines 36-42. Therefore, column 2, lines 29-35, of
Saito fails to disclose, or even suggest, "send[ing] from the
client to the server over the network a request to rotate the
image content at a server side . . . and to send the rotated image
content to the client," as recited by independent claim 27.
App. Br. 15 (emphasis added).
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
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Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264,1269 (Fed. Cir. 1991)).
We disagree with the Examiner’s finding Saito discloses Appellants’
claimed invention, particularly the recitation of “send[ing] the rotated image
content to the client [after being rotated by the server],” as recited in claim 7.
Ans. 7. We disagree with the Examiner because, while Saito arguably may
be capable of sending an image rotated by the server to the client in response
to a client rotation request, the Examiner has not sufficiently developed the
record before us on appeal to find that such a step or characteristic is
inherent or otherwise required by Saito's disclosure.
We emphasize the portion of Saito relied upon by the Examiner as
purportedly disclosing this limitation is silent on any explicit disclosure that
a rotated image is sent back to a server by a client after the client requests
such a rotation. Of particular interest to us is the purported supporting
disclosure of Figure 6 of Saito (Saito, col. 6, ll. 31–50), relied upon by the
Examiner. Ans. 7. In this portion of Saito, as well as the entirety of Saito's
disclosure, we note Saito appears to lack any discussion of the functional
arrangement and names of the elements (i.e., elements 631–638) that
comprise element 63 in Figure 6 of Saito, particularly the nature of any
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communication between elements 61 and 63 using element 62. See Saito
Fig. 6. We decline to engage in speculation in this regard, and therefore
cannot sustain the Examiner's anticipation rejection of claim 27.
4
While
Appellants proffer further arguments (Ans. 15 and 16; Reply Br. 3–5), we
need not reach these contentions, as we find the above-identified issue to be
dispositive.
Therefore, based upon the findings above, on this record, we are
persuaded the Examiner erred in relying upon Saito to disclose the disputed
limitation of claim 27 cited, supra.
For essentially the same reasons argued by Appellants as discussed
with respect to claim 27, we reverse the Examiner's rejection of independent
claims 32 and 37, which recite the disputed limitation in commensurate
form. For the same reasons, we also reverse the rejections of all claims that
depend therefrom.
CONCLUSION
The Examiner erred with respect to the anticipation rejection of claims
27, 28, 32, 33 and 37 under 35 U.S.C. § 102(b) over Saito, and we do not
sustain the rejection.

4
While not before us on appeal, in the event of further prosecution, we
leave it to the Examiner to evaluate whether the claims on appeal would
have been obvious under 35 U.S.C. § 103(a) in view of the teachings and
suggestions of Saito and the knowledge of a person of ordinary skill in the
art.
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DECISION
We reverse the Examiner’s decision rejecting claims 27, 28, 32, 33
and 37.
REVERSED

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