Ex Parte Jung et al

Patent Trial and Appeal BoardJul 25, 2014

11190516 (P.T.A.B. Jul. 25, 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. 11/190,516 07/26/2005 Edward K.Y. Jung 0904-003-010O-000000 2072 44765 7590 07/25/2014 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER CAMARGO, MARLY S.B. ART UNIT PAPER NUMBER 2664 MAIL DATE DELIVERY MODE 07/25/2014 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 EDWARD K. Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, and JOHN D. RINALDO JR. ________________ Appeal 2012-002192 Application 11/190,5161 Technology Center 2600 ________________ Before ROBERT E. NAPPI, JOHN A. EVANS, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, 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 1–5, 10, 14, 15, 17, 20–23, 27–30, 32, 34, 37, 39–41, 86–104.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 According to Appellants, the real party in interest is Searete, LLC, which is wholly owned by Intellectual Ventures Management LLC. App. Br. 4. 2 Claims 6–9, 11-13, 16, 18, 19, 24–26, 31, 33, 35, 36, 38, 42–85, and 105−107 were previously cancelled. Appeal 2012-002192 Application 11/190,516 2 INVENTION The invention is directed to sharing mechanisms that allow sharing of images between multiple devices. Spec. 4. Claim 1 is illustrative of the invention and reproduced below: 1. A method comprising: receiving at least one motivating event at least partially at a processing shared image device; transmitting at least one designated attribute at least partially from the processing shared image device, wherein the at least one designated attribute can be effected at least partially in response to the receiving the at least one motivating event at least partially at the processing shared image device; obtaining an obtained shared image at the processing shared image device that is obtained in accordance with the at least one motivating event, and is obtained at least partially in response to the transmitting the at least one designated attribute; and processing the obtained shared image to derive an at least one processed shared image at least partially at the processing shared image device. REFERENCES Suga et al. US 6,380,972 B1 Apr. 30, 2002 Liu et al. US 2005/0028221 A1 Feb. 3, 2005 (filed July 28, 2003) REJECTIONS AT ISSUE Claims 1–5, 10, 14, 27–30, 32, 34, 37, 39–41, 86–90, and 97–104 are rejected under 35 U.S.C. § 102(b) as anticipated by Suga. Ans. 3–19. Claims 15, 17, 20–23, and 91–96 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Suga and Liu. Ans. 19–24. Appeal 2012-002192 Application 11/190,516 3 ISSUE3 Did the Examiner err in finding that Suga discloses the features recited in claims 1, 4, and 86–88? CONTENTIONS AND ANALYSIS Rejection of Claim 1-3, 5, 10, 14, 15, 17, 20-23, 27-30, 32, 34, 37, 39-41, and 89-104 under 35 U.S.C. §§ 102(b) and 103(a). Claim 1 is recited supra. The Examiner made explicit findings regarding the elements taught by the prior art, and explained how the elements are mapped to the respective claim elements of the appealed claims. Ans. 4–6 and 25–32. Appellants contend Suga does not disclose “processing the obtained shared image to derive an at least one processed shared image at least partially at the processing shared image device.” App. Br. 49. Further, Appellants styled their arguments as a challenge to the existence of a prima facie case of unpatentability of the claims at issue (App. Br. 20–52). However, it is well settled that: [The USPTO] satisfies its initial burden of production by adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond. In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in notify[ing] the applicant . . . [by] stating the reasons for [its] 3 We considered: the Appeal Brief filed October 6, 2010; the Examiner’s Answer mailed December 22, 2010; and the Reply Brief filed February 22, 2011. However, the Examiner did not enter the Supplemental Reply Brief filed October 6, 2011. Thus, we do not consider the Supplemental Reply Brief, but we note that if we did consider the Supplemental Reply Brief, it would probably not change the outcome of our decision. Appeal 2012-002192 Application 11/190,516 4 rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original) (internal citations and quotation marks omitted). The Examiner found Suga discloses an image on a screen that is the result of tilting, panning, zooming, color separation, white balance, color conversion, color conversion, gradation correction, etc., which reads on processing. Ans. 4–5 and 30–31. Further, Suga discloses the combination of workstations A, B, and C, which reads on a processing shared image device. Ans. 4 and 30 (citing Suga, Fig. 1). Thus, Suga discloses terminals zoom bar 310, vertical panning bar 302, and panning bar 306 are used on images from terminals A, B, and C, which reads on processing the obtained shared image to derive an at least one processed shared image at least partially at the processing shared image device. Ans. 5 (citing Suga, col. 7, ll. 49–63 and Fig. 5). We agree with the Examiner. As explained in Jung, 637 F.3d at 1362, the Examiner’s findings and explanations would have put any reasonable Applicants on notice of the Examiner’s rejection, and given them ample information with which to counter the grounds of rejection, which is all that is required to establish a prima facie case of unpatentability. In short, the Examiner has satisfied the initial burden of production by combining the references to establish a case of obviousness. The burden then shifts to Appellants to rebut the Examiner’s case. In order to rebut a prima facie case of unpatentability, Appellants must distinctly and specifically point out the supposed Examiner errors, and Appeal 2012-002192 Application 11/190,516 5 the specific distinctions believed to render the claims patentable over the applied references. See 37 C.F.R. § 41.37(c)(vii) (2010) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Appellants have failed to carry their burden. Appellants generally assert that the claims define a patentable invention because the Examiner has failed to establish a prima facie case of unpatentability, but fail to articulate with any specificity what gaps exist between the cited references and the claims. Appellants’ assertion generally includes the following: recite the disputed claim, duplicate the Examiner’s statement of the rejection, further duplicate the cited portions of the prior art references, and contend—without adequate analysis of the cited portions of the prior art—that the duplicated language in the prior art does not meet the disputed claim limitations. Additionally, Appellants fail to persuade us of error because for each of the claims, although the cited text does not repeat the recited claim limitation verbatim, one skilled in the art would understand the recited claim limitation encompasses the disclosure cited by the Examiner. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference teaches a claim limitation “is not an ‘ipsissimis verbis’ test”). Appeal 2012-002192 Application 11/190,516 6 Moreover, because we conclude that the Examiner provided an adequate evidentiary basis for finding anticipation, we are not persuaded that the rejection was improperly based on a hindsight analysis, personal knowledge, or official notice, as Appellants argue. App. Br. 54–55. Accordingly, for the reasons stated supra, we sustain the Examiner’s rejection of claim 1 and claims 2, 3, 5, 10, 14, 15, 17, 20–23, 27–30, 32, 34, 37, 39–41, and 89–104, which Appellants contend (App. Br. 53) are allowable for at least the same reasons as claim 1. Rejection of Claim 4 under 35 U.S.C. § 102(b). Claim 4 recites, “receiving an indication of a camera shutter closing from an at least one shared image device.” The Examiner found Suga discloses an iris 103 and iris driving unit 104 that controls the light amount; the Examiner interpreted the iris 103 as the shutter and explained that in order to have the proper exposure, the user has to receive in indication from the camera that the shutter is opening or closing. Ans. 7–8 and 32–34. Appellants contend Suga fails to disclose, “wherein the receiving at least one motivating event at least partially at a processing shared image device comprises: receiving an indication of a camera shutter closing from an at least one shared image device.” App. Br. 61. We agree with Appellants. Suga merely discloses an iris driving unit 104 that controls an iris 103 and controls a light amount. See Suga, col. 4, l. 55; col. 6, ll. 13–15; and Fig. 2. We disagree with the Examiner’s finding that Suga’s iris 103 meets the claimed “shutter,” as such we similarly disagree that the Suga teaches receiving an indication of the camera shutter closing . Appeal 2012-002192 Application 11/190,516 7 Accordingly, for the reasons stated supra, we do not sustain the Examiner’s rejection of claim 4. Rejection of Claim 86 under 35 U.S.C. § 102(b). Claim 86 recites, “receiving an indication of retrieving images from an at least one shared image device.” The Examiner found that images shown correspond to images retrieved and workstations A, B, and C correspond to processing shared image device. Ans. 14 and 34–36. Appellants contend the Examiner failed to establish a prima facie case of unpatentability and Suga fails to disclose, “wherein the receiving at least one motivating event at least partially at a processing shared image device comprises: receiving an indication of retrieving images from an at least one shared image device.” App. Br. 97; see also id. at 89–125. We agree with the Examiner. As to the prima facie contention, the Examiner established a prima facie case of unpatentability for at least the reasons stated supra in the discussion of claim 1. Suga discloses images shown on the screen of workstation A that are viewed by the user, which meets the limitation directed to receiving an indication of retrieving images. Ans. 14 and 34–36. Accordingly, for the reasons stated supra, we sustain the Examiner’s rejection of claim 86. Rejection of Claim 87 under 35 U.S.C. § 102(b). Claim 87 recites, “receiving an at least one image at least partially at the processing shared image device.” The Examiner found that images Appeal 2012-002192 Application 11/190,516 8 shown correspond to receiving an at least one image and workstations A, B, and C correspond to processing shared image device. Ans. 14–15 and 36. Appellants contend the Examiner failed to establish a prima facie case of unpatentability and Suga fails to disclose, “wherein the receiving at least one motivating event at least partially at a processing shared image device further comprises: receiving an at least one image at least partially at the processing shared image device.” App. Br. 132; see also id. at 125–158. We agree with the Examiner. As to the prima facie contention, the Examiner established a prima facie case of unpatentability for at least the reasons stated supra in the discussion of claim 1. Suga discloses images shown on the screen of workstation A that are viewed by the user, which meets the limitation directed to receiving an at least one image at least partially at the processing shared image device. Ans. 14–15 and 36. Accordingly, for the reasons stated supra, we sustain the Examiner’s rejection of claim 87. Rejection of Claim 88 under 35 U.S.C. § 102(b). Claim 88 recites, “receiving both an at least one image processing goal and an at least one image at least partially at the processing shared image device.” The Examiner found that images shown correspond to images retrieved and workstations A, B, and C correspond to processing shared image device. Ans. 15 and 37–39. Appellants contend the Examiner failed to establish a prima facie case of unpatentability and Suga fails to disclose, “wherein the receiving at least one motivating event at least Appeal 2012-002192 Application 11/190,516 9 partially at a processing shared image device further comprises: receiving both an at least one image processing goal and an at least one image at least partially at the processing shared image device.” App. Br. 168; see also id. at 158–197. We agree with the Examiner. As to the prima facie contention, the Examiner established a prima facie case of unpatentability for at least the reasons stated supra in the discussion of claim 1. Suga discloses images shown on workstations A, B, and C, which teaches the limitation directed to at least one image at least partially at the processing shared image device. Ans. 15 and 37–39. Moreover, Suga discloses zooming in, zooming out, auto focusing, auto white balancing, etc., which are processing goals. Thus, Suga teaches the limitation directed receiving a processing goal on receiving an at least one image at least partially at the processing shared image device. Id. Accordingly, for the reasons stated supra, we sustain the Examiner’s rejection of claim 88. CONCLUSION We are persuaded that the Examiner did not err in finding that Suga discloses the features recited in claims 1 and 86–88. We are persuaded that the Examiner erred in finding that Suga discloses the features recited in claim 4. Appeal 2012-002192 Application 11/190,516 10 DECISION The Examiner’s decision to reject claims 1–3, 5, 10, 14, 15, 17, 20– 23, 27–30, 32, 34, 37, 39–41, and 86–104 under 35 U.S.C. §§ 102(b) and 103(a) is affirmed. The Examiner’s decision to reject claim 4 under 35 U.S.C. § 103(a) is reversed. 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-IN-PART msc