Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 30, 2013

11901240 (P.T.A.B. Aug. 30, 2013)

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.)

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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.
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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
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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
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[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’
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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
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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
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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).
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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
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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
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... [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.

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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.
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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).
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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).
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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