Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 17, 2012

11506760 (P.T.A.B. Dec. 17, 2012)

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.
11/506,760 08/18/2006 Edward K.Y. Jung SE1-0483-US 7223
80118 7590 12/17/2012
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
BERHAN, AHMED A
ART UNIT PAPER NUMBER
2663
MAIL DATE DELIVERY MODE
12/17/2012 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W.
LORD, MARK A. MALAMUD, and JOHN D. RINALDO JR.
____________

Appeal 2011-003673
Application 11/506,760
Technology Center 2600
____________

Before CARL W. WHITEHEAD, JR., JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-49 and 51-53 (App. Br. 6). Claim 50 was cancelled (id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
Claim 1 follows:
1. A method of capturing an image comprising:

creating a visual display that represents a field of view of
an image capture device;

providing a user-interface that enables an identification
of one or more targeted objects that may be incorporated in the
field of view;

enabling a user to make a selection from among the at
least one or more targeted objects, which selection is identified
as a point of interest via the user-interface;

initiating operation of the image capture device for taking
multiple exposures of the selection, including providing a
different quality characteristic for each exposure; and

creating a stored version of each of the multiple
exposures.

Claim 33 follows:
33. An image selection system comprising:

an image capture module with specified quality
parameters for capturing one or more targeted objects that may
be incorporated in a field of view;
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a user-interface for facilitating selection of a designated
targeted object, wherein the user-interface includes a data
record that identifies the designated targeted object as a point of
interest;

a controller operatively coupled to the data record and
configured to activate the image capture module to take
multiple exposures of the designated targeted object, wherein
the multiple exposures each have different quality
characteristics; and

storage media for retaining a stored version of the
multiple exposures for future reference, wherein the stored
version includes a cross-reference association between the
multiple exposures of the designated targeted object.

Claims 1-8 and 15-32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Delaney (U.S. Pat. Pub. 2004/0130634 A1) in view
of Amerson (U.S. Pat. Pub. 2003/0151679 A1) (Ans. 3-11).
Claims 9-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Delaney in view of Amerson and Parulski (U.S.
5,633,678) (Ans. 11-13).
Claims 33-49 and 51-52 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Amerson in view of Parulski (Ans. 13-19).
Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Delaney, Amerson in view of Parulski and Greer (U.S.
5,959,622) (Ans. 19).

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ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Does the combination of Delaney and Amerson teach or
suggest “providing a user-interface that enables an identification of one or
more targeted objects that may be incorporated in the field of view; enabling
a user to make a selection from among the at least one or more targeted
objects, which selection is identified as a point of interest via the user-
interface . . . and creating a stored version of each of the multiple exposures”
(emphasis added), as recited in independent claim 1?
2. Does the combination of Amerson and Parulski teach or suggest
“a user-interface [that] includes a data record that identifies the designated
targeted object as a point of interest” (emphasis added) as recited in
independent claim 33?
3. Does the combination of Amerson and Parulski teach or suggest
“providing a user-interface that enables an identification of possible targeted
objects that may be incorporated in the field of view; [and] enabling a user
to make a selection of one or more particular targeted objects; which
selection is identified as a point of interest via the user-interface” (emphasis
added), as recited in independent claim 48?

ANALYSIS
35 U.S.C. § 103 Rejection of Claims 1-25 and 27-32
Appellants contend that the Examiner erred in rejecting claim 1 as
obvious because the combination of Delaney and Amerson does not teach or
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suggest the claim limitation emphasized above (App. Br. 26-37). In support
of their contention, Appellants argue that “the Patent Office has not
explained how it reaches such mappings under the broadest reasonable
interpretation framework” (id. at 28 (emphasis omitted)).
The Examiner explained, however, how Delaney teaches a user
interface enabling a user to identify and select one or more targeted objects:
Delaney monitors the subject(s) before imaging through the
view finders 34 and 36 or graphical display 42. For example as
a user of Delaney’s camera is monitoring the subject to be
imaged on the view finder of the digital camera 10, the user is
in the process of aiming the subject to be captured. Thus the
user captures the aimed subject which is in the field of view of
the user’s camera (see Delaney paragraphs 35 and 36), and thus
Delaney teaches, as broadly claimed, a user interface that
enables a user to target objects within the field of view of the
camera

(Ans. 20). The Examiner also found that in Amerson, “multiple images are
stored in the memory” (id. at 21). We agree with the Examiner’s conclusion
and underlying findings of fact. Delaney discloses that during operation, a
“subject may be monitored either through a viewfinder 34 and 36, or on the
graphical display panel” (¶ [0036]). The camera, therefore, provides both a
viewfinder and a graphical display panel as user interfaces that enable a user
to identify an object in the field of view. In addition, Amerson discloses
storing captured images in a memory 106 (FIG. 1, ¶¶ [0025]-[0026]).
Appellants also contend that the Examiner erred in concluding that
claim 1 is obvious because there is no motivation or suggestion to combine
Delaney and Anderson (App. Br. 37-45). The Examiner found, however,
that “the motivation of modifying Delany [sic] by the teachings of Amerson
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is to produce a quality image by combining different images with different
quality” (Ans. 23). We agree with the Examiner’s finding. Both Delaney
and Amerson are directed to digital cameras (Delaney ¶ [0021]; Amerson,
Abstract). Moreover, Amerson discloses “using multiple images to improve
a final image in a digital image capture device” (Amerson ¶ [0001]).
Accordingly, one of ordinary skill in the art would have been motivated to
apply Amerson’s multiple-image technique to improve the quality of the
images captured by Delaney’s digital camera.
Appellants further argue that combining Amerson with Delaney
would change Delaney’s principle of operation and render it unfit for its
intended purpose because if Amerson’s multiple-image feature were
combined with Delaney, Delaney “would no longer associate ‘a history
attribute . . . with an electronic image, containing a history of actions
performed with the electronic image.’” (App. Br. 42). Delaney discloses
that “[a] history attribute is associated with an electronic image, containing a
history of actions performed with the electronic image, such as where copies
of the image are transmitted, whether the image has been printed, etc.”
(Abstract). In addition, if multiple images as taught by Amerson were stored
in one of Delaney’s image files, these history attributes could nonetheless be
maintained for the file. Thus, we find that Amerson’s multiple-image
feature would neither change Delaney’s principle of operation nor render it
inoperable.
Accordingly, we find no error in the Examiner’s obviousness rejection
of claim 1 we well as claims 2-19, 21, 24, 25, 27-29, 31 and 32 because
Appellants did not set forth any separate patentability arguments for those
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claims (see App. Br. 45). In addition, we agree with the Examiner’s
responses to Appellants’ arguments with respect to dependent claims 20, 22,
23, and 30 and adopt the Examiner’s responses (Ans. 23-26) as our own.
Accordingly, we find no error in the Examiner’s obviousness rejection of
claims 20, 22, 23, and 30.

35 U.S.C. § 103 Rejection of Claim 26
Appellants argue that the Examiner erred in rejecting claim 26 as
obvious because Amerson does not teach or suggest “‘activating a still
image capture device’ and ‘activating a video capture device’” (App. Br.
61). The Examiner reasoned that Amerson meets this claim limitation
because “by capturing multiple still images Amerson is also capturing a
video image” (Ans. 25). But claim 26 requires more than capturing still
images and video images; it requires activating two different devices: a still
image capture device and a video capture device. And the Examiner did not
show that Amerson teaches the activation of two different devices (see id.).
Accordingly, we agree with Appellants and find that the Examiner erred in
rejecting claim 26 as obvious.

35 U.S.C. § 103 Rejection of Claims 33-47
Appellants argue that the Examiner erred in rejecting independent
claim 33 as obvious because Amerson does not teach or suggest that “the
user-interface includes a data record that identifies the designated targeted
object as a point of interest” (App. Br. 70, (emphasis omitted)). The
Examiner reasoned that Amerson meets this claim limitation because it
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discloses a “focus distance (interpreted as data record)” (Ans. 27). The
Examiner, however, did not explain how a focus distance could be a data
record that identifies an object (see id.). Accordingly, we agree with
Appellants and find that the Examiner erred in rejecting independent claim
33 as well as the claims dependent therefrom (i.e., claims 34-46) because the
Examiner did not assert that any secondary reference teaches the limitation
that is missing from Amerson (see Ans. 13-18).

35 U.S.C. § 103 Rejection of Claims 48-49 and 51-53
Appellants contend that the Examiner erred in rejecting claim 48 as
obvious because the combination of Amerson and Parulski does not teach or
suggest the claim limitation emphasized above (App. Br. 85-93). In support
of their contention, Appellants argue that “the Patent Office has not
explained how it reaches such mappings under the broadest reasonable
interpretation framework” (id. at 89 (emphasis omitted)). We agree with the
Examiner’s finding that Amerson teaches this claim limitation because
Amerson discloses a camera having a display 122 and a user input 118 that
would enable a user to identify and select an object in the field of view (see
Amerson, FIG. 1, ¶ [0022]).
Appellants also contend that the Examiner erred in concluding that
claim 48 is obvious because there is no motivation or suggestion to combine
Amerson and Parulski (App. Br. 96). Appellants further argue that
combining Parulski with Amerson would change Amerson’s principle of
operation and render it unfit for its intended purpose because it is unclear
how Amerson’s purpose of combining multiple images into a new image can
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be served by Parulski’s teachings of assigning categories to images (id. at
101). We agree with the Examiner’s finding, however, that one of ordinary
skill in the art would have been motivated to modify the camera of Amerson
with Parulski’s teachings of tags so that “Amerson can retrieve images
stored in the memory based on the tag associated with the image” (Ans. 14).
Moreover, if categories as taught by Parulski were assigned to the images
captured by Amerson’s camera, Amerson’s camera would not be prevented
from capturing multiple images and using them to create a new image.
Thus, we find that Parulski’s categories would neither change Delaney’s
principle of operation nor render it inoperable.
Accordingly, we find no error in the Examiner’s obviousness rejection
of claim 48 we well as claims 49 and 51-53 because Appellants did not set
forth any separate patentability arguments for those claims (see App. Br.
101-102).

DECISION
We affirm the Examiner’s decision rejecting claims 1-25, 27-32, 48,
49, and 51-53 as unpatentable under 35 U.S.C. § 103(a) and reverse the
Examiner’s decision rejecting claims 26 and 33-47 as unpatentable under 35
U.S.C. § 103(a).
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

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