Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardAug 30, 201311901240 (P.T.A.B. Aug. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/901,240 09/13/2007 Edward K.Y. Jung 0904-003-010A-C00001 4563 44765 7590 09/03/2013 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER VILLECCO, JOHN M ART UNIT PAPER NUMBER 2661 MAIL DATE DELIVERY MODE 09/03/2013 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 2012-004260 Application 11/901,2401 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and JEFFREY S. SMITH, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed September 13, 2007, claiming benefit of U.S. Patent Application No. 11/048,644, filed January 31, 2005. The real party in interest is Searete, LLC. (Br. 6.) Appeal 2012-004260 Application 11/901,240 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 72-107. Claims 1-71 were canceled. (App. Br. 8, 105.)2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellants’ Invention The invention at issue on appeal concerns methods for sharing images between imaging devices. (Spec., 1-10; Abstract.) Representative Claim Independent claim 72, reproduced below with disputed limitations italicized, further illustrates the invention: 72. A method, comprising: sending a request from a second image capture device to a first image capture device for the first image capture device to send a first image to the second image capture device; capturing a second image with the second image capture device; providing the second image to an image recognition program for granting an authentication for the second image capture device based at least in part upon whether at least a portion of the second image includes a specified content; and receiving the first image from the first image capture device at the second image capture device if the authentication for the second image capture device has been granted. 2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“Br.”) filed July 27, 2011; and Supplemental Appeal Brief (“Supp. App. Br.”) filed October 10, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed October 25, 2011. Appeal 2012-004260 Application 11/901,240 3 Rejections on Appeal 1. The Examiner rejects claims 74, 87, 99, 100, 102, 104, 105, and 107 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. The Examiner rejects claims 72, 75-79, 81-99, 101, 103, 104, and 106 under 35 U.S.C. § 103(a) as being unpatentable over US Pat. App. Pub. No. 2005/0193421 A1, published Sep. 1, 2005 (filed Feb. 26, 2004) (“Cragun”) and US Patent No. 6,930,707 B2, issued Aug. 16, 2005 (filed Dec. 22, 2000) (“Bates”). 3. The Examiner rejects claims 73 and 80 under 35 U.S.C. § 103(a) as being unpatentable over Cragun, Bates, and Japanese Patent Application Publication No. JP 2001045452 A, published February 16, 2001 (“Watanabe”). ISSUES Based on our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issues before us follow: 1. Does the Examiner err in determining that claims 74, 87, 99, 100, 102, 104, 105, and 107 fail to comply with the written description requirement? 2. Does the Examiner err in concluding that the combination of Cragun and Bates would have taught or suggested “sending a request from a second image capture device to a first image capture device for the first image capture device to send a first image to the second image capture device” and “receiving the first image from the first image capture device at Appeal 2012-004260 Application 11/901,240 4 the second image capture device if the authentication for the second image capture device has been granted” within the meaning of independent claim 72 and the commensurate limitations of claims 79, 86, and 92? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action mailed October 29, 2010 as our own except as to those findings that we expressly overturn or set aside in the Analysis that follows. ANALYSIS Based on Appellants’ arguments (Br. 22-101), we select independent claims 72, 79, and 86, and dependent claim 74 as representative of Appellants’ arguments and groupings with respect to claims 72-107. 37 C.F.R. § 41.37(c)(1)(iv). We address Appellants’ contentions as argued in the Appeal Brief seriatim. The § 103 Rejection of Claims 72 and 79 Appellants contend that the Examiner has not produced a prima facie obviousness case and that the combination of Cragun and Bates does not teach or suggest the recitations of claim 72. (Br. 23-37.) Appellant makes nearly identical arguments with respect to claim 79. (Br. 38-51.) We note that the argument spanning pages 27 and 28 appears to be identical to the argument on pages 26-27 of the Appeal Brief (addressing “Clause [a];”compare with the argument on pages 42-44 of the Appeal Brief addressing “Clause [e]”) – because the arguments for claims 72 and 79 are nearly identical, we will view Appellants argument as addressing “Clause Appeal 2012-004260 Application 11/901,240 5 [d]” of claim 72 (and “Clause [e]” of claim 79). (See Br. 27-28, 42-44.) Specifically, Appellants contend that: there is no broadest reasonable claim interpretation -- in light of the specification -- of record that would account for several express claim recitations not addressed by the pinpoint-cited evidence, and thus that the claims are patentable in light of such express claim recitations. Second, and in the alternative, . . . [there are] one or more significant differences between the pinpoint-cited portions of the technical material and the express claim language, and thus [ ] the claims are patentable in light of such significant differences; furthermore, and yet again in the alternative, . . . there is no pinpoint-cited objective evidence of how to modify/combine the cited technical material to cure the noted significant differences between the claims and the pinpoint cited art. (App. Br. 23.) In particular, Appellants argue that the Examiner does not provide a proper claim interpretation, nor show how the disputed limitations (“clauses”) of claim 72 (and claim 79) read on the disclosure of Cragun – i.e., how the disputed limitations “map” to the disclosure, nor explain how Cragun teaches the disputed limitations. (Br. 26-33; see Br. 39-49.) Additionally, Appellants contend that the Examiner improperly combined Cragun and Bates, and that the Examiner’s rationale is unsupported. (Br. 36-37; see Br. 50-51.) The Examiner sets forth a detailed explanation of the obviousness rejection in the Examiner’s Answer with respect to each of the claims so rejected (Ans. 8-24) and, in particular, the rejection of claims 72 and 79 (Ans. 8-11, 15-19). Specifically, the Examiner provides a detailed explanation with respect to Cragun’s disclosure of recording devices (image capture devices) (element 102) which send registration information to join (or form) a network in order to share video information and Bates’ Appeal 2012-004260 Application 11/901,240 6 disclosure of authentication utilizing a captured image. (Ans. 8-11, 15-19 (citing Cragun, ¶ [0024]; Figs. 1-2; and Bates, col. 2, ll. 30-40, 45-50; col. 6, ll. 45-65; col. 8, l. 55 to col. 9, l. 6; col. 10, ll. 30-44).) The Examiner, therefore, finds that the combination of Cragun and Bates would have taught or suggested the disputed features – “sending a request from a second image capture device to a first image capture device for the first image capture device to send a first image to the second image capture device” and “receiving the first image from the first image capture device at the second image capture device if the authentication for the second image capture device has been granted” (claim 72). (Id.) Further the Examiner provides a rationale for the combination. (Ans. 9-11, 17, 19.) We adopt these findings and this reasoning as our own. Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s findings and ultimate conclusion that the combination of Cragun and Bates would have taught or suggested the disputed features of the claims. Accordingly, we sustain the Examiner’s rejection of claims 72 and 79 for the reasons set forth in the Answer, which we incorporate herein by reference. (Ans. 8-11, 15-19.) We limit our additional analysis to the following points of emphasis. We initially note that the argued portions of the disputed limitations – “sending a request from a second image capture device to a first image capture device for the first image capture device to send a first image to the second image capture device” and “receiving the first image from the first image capture device at the second image capture device if the authentication for the second image capture device has been granted” (claim Appeal 2012-004260 Application 11/901,240 7 72) – consist of statements of intended use and non-functional descriptive material that do not limit the recited “sending” of a “request” (between a first and second device) and “receiving” of the image (at the second device) structurally or functionally. Specifically, the statement of intend use – “for the first image capture device to send a first image to the second image capture device” – in this instance does not further limit the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement of intended use “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates”). Further, the recited the request content (the information, i.e., data, contained in the request) – i.e., “for the first image capture device to send a first image to the second image capture device,” and the received data – i.e., “the first image” are essentially non-functional descriptive material in that these limitations simply require some data be sent between devices and some other data be sent back between the devices. Therefore, the functionality of “sending” (the “request”) and “receiving” (the “image”) steps remain the same regardless of what the data constitutes or how the data may be named. 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 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 Appeal 2012-004260 Application 11/901,240 8 the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)(discussing non- functional descriptive material). Moreover, the sending of data from a second device to a first device need not even occur (if authentication fails). Thus, this step fails to narrow claim 1. See In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“optional elements do not narrow the claim because they can always be omitted”). Accordingly, we broadly but reasonably construe Appellants’ disputed limitations to simply require: (1) sending data (a request) from a second device to a first device, and (2) receiving data (an image) at the second device if authentication of the second device is successful. Even if we arguendo ascribe some patentable weight to the statement of intended use and non-functional descriptive material, as explained by the Examiner (Ans. 8-11, 15-19), Cragun discloses recording devices (Fig. 1, element 102) which send registration information to join (or form) a network (¶ [0024]; Fig. 2) in order to share video information (¶ [0007]; Abstract; Figs. 3A, 3B, 3D; see ¶¶ [0025]-[0040]). Contrary to Appellants’ arguments (Br. 23-51), we find (as did the Examiner) that Cragun broadly describes sending data (a request to share images) and sharing images if a device joins the network (is authenticated). These findings constitute objective evidence upon which we (and the Examiner) properly rely to demonstrate that Cragun (in combination with Bates) describe each of the disputed features of Appellants’ claims. Thus we conclude (as did the Examiner) that the disclosure of Cragun (in combination with Bates) would have at least suggested the disputed features of claim 73 (and 79). Appeal 2012-004260 Application 11/901,240 9 We further conclude that the Examiner has provided a proper rationale for combining the references (supra) – “to allow the cameras of Cragun to join the session based on a biometric capability . . . . [because this] feature allows for a greater amount of protection of the use of the camera” (Ans. Ans. 9; see Ans. 10-11, 17, 19), i.e., improved functionality. Therefore, the Examiner has stated “some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellants do not persuade us of error therein. We also conclude that it would have been well within the skill of one skilled in the art to combine such known techniques to authenticate a device (to allow the device to access a network) utilizing a captured image, as taught by Bates, in order to share images with other devices attached to the network as taught by Cragun. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill” (citations omitted)). Additionally, we note that Appellants failed to file a Reply Brief rebutting the findings and responsive arguments made by the Examiner in the Answer. We also observe that Appellants’ arguments consist of simply reiterating the Examiner’s rejection, the portions of the prior art references cited by the Examiner (Cragun and Bates), various statements that the Examiner did not properly construe the claims (without offering an alternative construction or explaining exactly how the Examiner’s construction was in error), various statements that Cragun (and Bates) do not Appeal 2012-004260 Application 11/901,240 10 describe the limitations at issue, and various conclusory statements that the Examiner did not point to any element of Cragun (and Bates) that correspond to the limitations at issue. (Br. 22-51.) We find this form of argument unavailing. This form of argument does not amount to a separate patentability argument and is unpersuasive of error in the Examiner’s rejection. See Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 at *3- 4 (BPAI Aug. 10, 2009) (informative); see also 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Appellants’ argument “do[es] not . . . explain why the Examiner’s explicit fact finding is in error.” Belinne, 2009 WL 2477843 at *4. Mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). This reasoning is applicable in the present case. Thus for all the reasons set forth supra, we find Appellants’ arguments unpersuasive of error in the Examiner’s rejection of claims 72 and 79. We note that Appellants expand their arguments concerning the Examiner’s lack of a prima facie case in the Supplemental Appeal Brief. (Supp. App. Br. 3-6.) We conclude that the Examiner has made out a proper prima facie case of obviousness. As explained by our reviewing court: The Patent and Trademark Office (“PTO”) 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.” Hyatt [v. Dudas], 492 F.3d [1365,] 1370 [(Fed. Cir. 2007)]. 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 Appeal 2012-004260 Application 11/901,240 11 ... [by] stating the reasons for [its] 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.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990). In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, the Examiner adequately explained the basis for the rejection so as to provide notice to Appellants, the rejection was not “‘so uninformative [as to prevent Appellants] from recognizing and seeking to counter the grounds for rejection.’” Id. Appellants provide separate arguments for independent claim 79 (Br. 38-51), but as we explain supra, these arguments are essentially identical to the arguments made with respect to claim 72. Thus, for all the reasons set forth above, we find Appellants’ arguments unpersuasive of error in the Examiner’s rejection of independent claims 72 and 79. Therefore, we affirm the Examiner’s obviousness rejection of representative independent claim 72 as well as independent claim 79, which includes limitations of commensurate scope and dependent claims 75-78, 81-85, 98, 99, and 101, which depend on their respective base claims and were not separately argued with particularity (Br. 37-38 and 52). Appellants also do not separately argue the rejection of claims 73 and 80 under 35 U.S.C. § 103. (Br. 37-38 and 52; see Ans. 14-15.) Accordingly, we affirm the Examiner’s rejection of claims 72, 73, 75-85, 98, 99, and 101. Appeal 2012-004260 Application 11/901,240 12 The § 103 Rejection of Claims 86 and 92 Appellants provide nominal separate arguments with respect to independent claim 86 (App. Br. 52-66). Claim 86, differs slightly in scope from claims 72 and 79 (supra), in that it recites “sending a request from the second image capture device to a first image capture device for the first image capture device to receive one or more instructions from the second image capture device to initiate one or more operations of the first image capture device” and “receiving a request for the one or more instructions from the first image capture device at the second image capture device if the authentication for the second image capture device has been granted” (claim 86). Appellants’ arguments essentially reiterate the arguments made with respect to claims 72 and 79, supra. We disagree for the same reasons set forth with respect to claims 72 and 79. In particular we note that the statement of intended use / non-functional descriptive material in the request – “to receive one or more instructions from the second image capture device to initiate one or more operations of the first image capture device” does not further limit the scope of the claim for the same reasons set forth with respect to claims 72 and 79, supra. Similar to claims 72 and 79 supra, even if we arguendo ascribe some patentable weight to the disputed limitations of claim 86, as explained by the Examiner (Ans. 11-12, 19-21 (citing Cragun, ¶¶ [0024], [0028], [0029], [0041])), Cragun describes sending and receiving instructions to perform operations – e.g., to store video data in memory. Thus for all the reasons set forth supra, we find Appellants’ arguments unavailing of error in the Examiner’s rejection of claim 86. Appeal 2012-004260 Application 11/901,240 13 Appellants provide nominal separate arguments for independent claim 92 (Br. 38-51), but these arguments are essentially identical to the arguments made with respect to claim 86. Thus, for all the reasons set forth above, we find Appellants’ arguments unpersuasive of error in the Examiner’s rejection of independent claims 86 and 92. Therefore, we affirm the Examiner’s obviousness rejection of representative independent claim 86, as well as independent claim 92, which includes limitations of commensurate scope, and dependent claims 87-91, 93-97, 103, 104, and 106, which depend on their respective base claims and were not separately argued with particularity (Br. 67 and 82). Accordingly, we affirm the Examiner’s rejection of claims 86-97, 103, 104, and 106 The § 112 Rejection of Claim 74 The Examiner rejects Appellants claims 74, 87, 99, 100, 102, 104, 105, and 107 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Specifically, the Examiner submits that the limitations “capturing a second image to include the specified content according to instructions received by the second image capture device from the first image capture device” (claim 74; Ans. 5) and “capturing the image to include the specified content according to instructions received by the second image capture device” (claim 87; Ans. 5) are unsupported in Appellants’ Specification. (See Ans. 5-8, 24-28.) Appellants contend that the limitations in question are fully supported. Specifically, Appellants contend that claim 74 (Br. 83-90) (and claims 87, 99, 100, 102, 104, 105, and 107 (Br. 90-101)) are properly supported and that the Examiner erred in rejecting these claims under 35 U.S.C. § 112. We agree for essentially the same reasons set forth by Appellants (Br. 83-101). Appeal 2012-004260 Application 11/901,240 14 Specifically, Appellants’ Specification describes instructions to capture shared images (see Br. 89; Spec. 46:3-12, 17-22) and utilizing passwords, etc. (see Br. 87; Spec. 35:23-26; 36:3-5; 38:28-31). But, there is no apparent disclosure of “specifying content” or “specified content” – i.e., explicitly sending a message instructing a device to capture a password or other information specified by a device. Even so, Appellants’ Specification describes instructing a user and/or device to capture a shared photo or image, as well as providing feedback to include certain information (“content”) in an image to be shared – such as zooming (focusing on a specific portion of an image), changing a field of view to be captured, typing a password, or a stored image to be utilized as a password. Thus, we conclude that Appellants’ Specification reasonably describes capturing images that include “specified content” and that Appellants’ Specification would have reasonably conveyed to those skilled in the art that Appellants had possession of the subject matter of claims 74, 87, 99, 100, 102, 104, 105, and 107 as of the filing date of the present application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). CONCLUSIONS OF LAW Appellants have not shown that the Examiner erred in rejecting claims 72, 73, 75-99, 101, 103, 104, and 106 under 35 U.S.C. § 103(a). Appellants have shown that the Examiner erred in rejecting claims 74, 87, 99, 100, 102, 104, 105, and 107 under 35 U.S.C. § 112, first paragraph. DECISION We affirm the Examiner’s rejections of claims 72, 73, 75-99, 101, 103, 104, and 106 under 35 U.S.C. § 103(a). Appeal 2012-004260 Application 11/901,240 15 We reverse the Examiner’s rejections of claims 74, 87, 99, 100, 102, 104, 105, and 107 under 35 U.S.C. § 112, first paragraph. The rejection of claims 72, 73, 75-99, 101, 103, 104, and 106 is affirmed and the rejection of claims 74, 100, 102, 105, and 107 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 pgc Copy with citationCopy as parenthetical citation