Ex Parte Poo et al

Patent Trial and Appeal Board

Sep 27, 2012

10092178 (P.T.A.B. Sep. 27, 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.
10/092,178 03/05/2002 Teng Pin Poo 1601457-0013 7556
7470 7590 09/27/2012
WHITE & CASE LLP
PATENT DEPARTMENT
1155 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
EXAMINER
PARK, ILWOO
ART UNIT PAPER NUMBER
2184
MAIL DATE DELIVERY MODE
09/27/2012 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 TENG PIN POO and MUN KWONG KUAN
____________________

Appeal 2010-002231
Application 10/092,1781
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, JAMES R. HUGHES, and
ANDREW J. DILLON, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 5, 2002, claiming benefit of PCT/SG02/00021
(Singapore) (February 07, 2002). The real party in interest is Trek
Technology (Singapore) Pte. Ltd. (App. Br. 2.)
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-9 and 12-
22. Claims 10 and 11 have been canceled. (App. Br. 3.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns a portable storage device
having image and/or audio capture capabilities, and in particular, a portable
camera device including an integral USB plug and method for capturing and
storing image and/or audio information. (Spec. 2: 3-5; 3:21-4:19; Abstract.)2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A portable camera device capable of operation with a
host platform, the portable camera device comprising:
a housing;
a USB plug integrally adapted to the housing of the
portable camera device to facilitate direct coupling of the
portable camera device via the USB plug to a USB socket of the
host platform;
a non-volatile memory in communication with said USB
plug;
a digital camera, integrally formed with said non-volatile
memory, for capturing image and/or audio information, said

2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed May 15, 2009; and Reply Brief (“Reply Br.”) filed November 2, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed September 1, 2009.
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non-volatile memory capable of storing said image and/or audio
information; and
a microprocessor for at least in part formatting said
image and/or audio information in a standard image and/or
audio file format compatible with the host platform.

Rejections on Appeal
1. The Examiner rejects claims 15-22 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. The Examiner rejects claims 1-4, 9, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Japanese Patent App. No. JP 2002-
232769A, published August 16, 2002 (filed January 31, 2001) (“Gotanda”)
and Japanese Patent App. No. JP 11-053060, published February 26, 1999
(“Tosaka”).
3. The Examiner rejects claims 15 and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Gotanda, Tosaka, and U.S. Patent No.
6,992,721 B1, issued Jan. 31, 2006 (filed Jun. 16, 2000) (“Kambayashi”).
4. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Gotanda, Tosaka, and U.S. Patent No. 6,753,921 B1,
issued Jun. 22, 2004 (filed Dec. 9, 1999) (“Shimizu”).
5. The Examiner rejects claims 5-7 under 35 U.S.C. § 103(a) as
being unpatentable over Gotanda, Tosaka, and “well-known in the art”
(knowledge of one of ordinary skill in the art or “Examiner Notice”).
6. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent App. Pub. No. 2003/0122839 A1,
published Jul. 3, 2003 (filed Dec. 26, 2001) (“Matraszek”) and Tosaka.

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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 rejecting claims 15-22 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement?
2. Does the Examiner err in concluding that the combination of
Gotanda and Tosaka collectively would have taught or suggested “a USB
plug integrally adapted to the housing of the portable camera device to
facilitate direct coupling . . . to a USB socket of the host platform” and “a
microprocessor for at least in part formatting said image and/or audio
information in a standard image and/or audio file format compatible with the
host platform” within the meaning of Appellants’ claim 1 and commensurate
limitations of claims 12, 15, and 19?
3. Does the Examiner err in concluding that the combination of
Gotanda, Tosaka, and Kambayashi collectively would have taught or
suggested “wherein . . . the portable camera device is capable of being
directly plugged into a USB port located on the side of the keyboard section
of a notebook computer sitting on a flat surface without having to elevate the
keyboard section from the flat surface” as recited in Appellants’ claim 15
(emphasis added), or “wherein . . . the portable camera device is capable of
being directly plugged into a USB port located on the side of the keyboard
section of a notebook computer sitting on a flat surface such that there is a
space between the body of the portable camera device and the flat surface”
as recited in Appellants’ claim 19 (emphasis added)?
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4. Does the Examiner err in concluding that the combination of
Matraszek and Tosaka collectively would have taught or suggested “a USB
plug integrally adapted to the housing of the portable camera device to
facilitate direct coupling . . . to a USB socket of the host platform” and
“comparing at least portions of said image and/or audio identification data
against a template stored in a memory; and . . . allowing access to the
information if the image and/or audio identification data matches the stored
template” as recited in claim 14?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.
ANALYSIS
Based on Appellants’ arguments (App. Br. 10-24), we select
independent claims 1, 14, 15, and 19 as representative of Appellants’
arguments and groupings with respect to claims 1-9 and 12-22. 37 C.F.R.
§ 41.37(c)(1)(vii).
Written Description Rejection – Claims 15-22
Appellants contend that independent claim 15 and 19 (and dependent
claims 16-18 and 20-22) meet the written description requirement under 35
U.S.C. § 112, first paragraph, because the Specification and drawings
describe and provide support for the limitations of the claims. (Appeal Br.
10-13; Reply Br. 8-11.) Specifically, Appellants contend that the “drawings
alone can be sufficient to provide the written description of the
invention.” (App. Br. 11 (citing Vas-Cath v. Mahurkar, 935 F.2d 1555,
1564 (Fed. Cir. 1991).) Further, Appellants contend that Appellants’
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originally filed Figure 2 and later filed Figure 2A (see Amendment filed
September 27, 2004) show that: “the USB plug 118 is an integral part of the
portable camera device 170, which allows the portable camera device 170 to
be directly plugged into a USB port on the side of the keyboard section of a
notebook computer” (App. Br. 11) and “FIG. 2A clearly shows that there is
a space between the body of the portable camera device 170 and a flat
surface that the notebook computer 195 is sitting on” (App. Br. 11-12).
The Examiner, on the other hand, explains that Figure 2A is not part
of the Specification as originally filed and cannot support the disputed
limitations. (Ans. 13.) The Examiner further explains that the figures
(Figure 2 and Figure 2A) relied on by Appellants are not dimensionally
accurate and do not show what Appellants purport that these figures show
(e.g., do not show any space between the camera and the supporting surface
(supporting the notebook computer)). (Ans. 13-16.)
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 legal conclusion that
Specification and drawings, and in particular Figure 2 and Figure 2A, fail to
provide written description support for the disputed features of independent
claims 15 and 19 as well as dependent claims 16-18 and 20-22.
Accordingly, we sustain the Examiner’s written description rejection of
claims 15-22 for the reasons set forth in the Answer, which we incorporate
herein by reference. (Ans. 4-5, 13-16.)
In particular, we agree with the Examiner that Figure 2A cannot
support the disputed features of claims 15-22 because it was not part of the
Specification as originally filed. (Ans. 13.) Further, in reviewing Figure 2,
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we note that the drawing does not describe any dimensions and agree with
the Examiner that the drawing is not dimensionally accurate. (Ans. 13-16.)
We further note that even if we were to include Figure 2A in our analysis,
this figure does not accurately depict any supporting surface for the
notebook computer, much less any “space” between the surface and the USB
device (camera). (See Figure 2A.) With respect to Appellants additional
arguments in the Reply Brief (see Reply Br. 9 discussing Figs. 3 and 4 and
Spec. 14), we deem the newly presented arguments to be waived. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”) (absent
a showing of good cause, the Board is not required to address arguments in
the Reply Brief that could have been presented in the principal Brief).
It follows that we do not find any written description support (even
with respect to Figure 2A) for any “space” between a supporting (flat)
surface for a notebook computer and a portable camera device with an
integral USB connector such that “the portable camera device is capable of
being directly plugged into a USB port located on the side of the keyboard
section of a notebook computer sitting on a flat surface” (claims 15 and 19)
“without having to elevate the keyboard section from the flat surface” (claim
15) or “such that there is a space between the body of the portable camera
device and the flat surface” (claim 19). Further, we find no written
description support for any dimensional relationships as recited in claims 16-
18 and 20-22 – i.e., Figure 2 does not describe a portable camera device
“housing is between 1 and 1.5 times the width of said USB plug” and “the
length of said housing is between 3.5 and 4 times the length of said USB
plug” (claim 16) or that the “housing comprises 2 sets of substantially
parallel faces substantially orthogonal to each other” (claim 17).
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Accordingly, we find Appellants’ contrary arguments unavailing of error in
the Examiner’s written description rejection. Thus, we affirm the
Examiner’s 35 U.S.C. § 112, first paragraph (written description) rejection
of claims 15-22.
Obviousness Rejection – Claims 1-4, 9, 12, and 13
Appellants contend that the combination of Gotanda and Tosaka does
not teach the features recited in claim 1. (App. Br. 19-21 (see also id. 16-18
discussing claim 15); Reply Br. 2-5.) Specifically, Appellants contend that:
(1) Gotanda does not teach the recited “USB plug” but instead clearly
describes “a USB socket,” which “is a different structure than a USB plug”
(App. Br. 19; see id. 20); (2) Gotanda does not teach the recited
microprocessor in that Gotanda’s CPU “is the CPU of the digital camera 2
(paragraph [0023]), not a microprocessor that is separate from the digital
camera as recited in claim 1” (App. Br. 20); and (3) Tosaka does not teach
directly connecting a USB plug of a camera device to a host computer (id.
20-21) in that “Tosaka does not show that the camera 2 is connected to the
notebook computer 1 using a USB interface” (App. Br. 20).
The Examiner sets forth a detailed explanation of the obviousness
rejections in the Examiner’s Answer with respect to each of the claims (Ans.
5-12, 16-19) and, in particular, the rejection of claim 1. (Ans. 5-7, 16-17.)
Specifically, the Examiner explains that Tosaka teaches the recited “USB
plug” and directly connecting a camera with a USB plug to a notebook
computer. (Ans. 6-7, 17 (citing Tosaka, Figs. 1 and 3).) The Examiner also
explains that Gotanda teaches the recited camera with a USB connection
integrated into (integrally adapted to) its housing and including a
microprocessor. (Ans. 5-7, 16-17 (citing Gotanda, Figs. 1, 2, and 4;
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¶ [0027]).)
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 legal conclusion that
the combination of Gotanda and Tosaka teaches the disputed features of
claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 for the
reasons set forth in the Answer, which we incorporate herein by reference.
(Ans. 5-12, 16-19.) Our additional analysis will be limited to the following
points of emphasis.
We find Appellants’ contrary arguments unpersuasive of error in the
Examiner’s obviousness rejection of representative claim 1 in that
Appellants present arguments with respect to the individual references rather
than the cited combination of references. (App. Br. 16-21; Reply Br. 2-5.)
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091(Fed. Cir. 1986); In re Keller, 642 F.2d 413
(CCPA 1981). Appellants also present arguments that are not commensurate
with the scope of the claim. (App. Br. 16-21; Reply Br. 2-5.)
Specifically, the Examiner cites Tosaka, not Gotanda, for the “USB
plug” (i.e., USB male connector) and the direct connection thereof to
notebook computer. (Ans. 5-7, 16-17.) Tosaka describes a USB male
connector (plug), a camera with an integrated male USB connection, and
directly connecting the camera to a notebook computer. (Tosaka, Figs. 1-4
and ¶¶ [0009]-[0012] (describing drawings).) Gotanda describes a camera
with an integrated USB connector and a microprocessor. (Gotanda, Figs. 1,
2, and 4 and ¶¶ [0018], [0027].) Appellants’ claim 1 does not recite “a
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microprocessor that is separate from the digital camera” (App. Br. 20),
rather it recites “a microprocessor for at least in part formatting said image”
(claim 1). We find Gotanda’s camera describes such functionality.
(Gotanda, ¶ [0027] (JPEG).)
Appellants also do not persuade us of error in the Examiner’s
obviousness rejection of independent claim 12 which include limitations of
commensurate scope or dependent claims 2-4, 9, and 13 not separately
argued with particularity. (App. Br. 21.) Accordingly, we affirm the
Examiner’s obviousness rejection of claims 1-4, 9, 12, and 13.
Obviousness Rejection – Claims 15 and 19
Appellants reiterate, with respect to representative claim 15, the
arguments made with respect to claim 1 (supra) (App. Br. 13-17; Reply Br.
4-5), and also contend that “Kambayashi does not teach or disclose a
portable camera device capable of being directly plugged into a USB port
located on the side of the keyboard section of a notebook computer sitting on
a flat surface without having to elevate the keyboard section from the flat
surface.” (App. Br. 18; see id. 17; Reply Br. 5-6.)
We agree with the Examiner’s findings and ultimate legal conclusion
that the combination of Gotanda, Tosaka, and Kambayashi would have
taught or suggested disputed features of claim 15. Specifically, we agree
with the Examiner that Kambayashi describes stands 270 are optional and
may be retracted. (Ans. 17-18; Kambayashi, Figs. 15 and 16; col. 6, l. 38 to
col. 7, l. 16.) Thus, we conclude (as did the Examiner) that Kambayashi
would have at least suggested the disputed limitation of claim 15 – “the
portable camera device is capable of being directly plugged into a USB port
located on the side of the keyboard section of a notebook computer sitting on
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a flat surface without having to elevate the keyboard section from the flat
surface” (claim 15). Accordingly, we sustain the Examiner’s rejection of
claim 15 for the reasons set forth in the Answer, which we incorporate
herein by reference. (Ans. 5-12, 16-19.)
Appellants also do not persuade us of error in the Examiner’s
obviousness rejection of independent claim 19 which includes a limitation of
commensurate scope – “portable camera device is capable of being directly
plugged into a USB port located on the side of the keyboard section of a
notebook computer sitting on a flat surface such that there is a space
between the body of the portable camera device and the flat surface” (claim
19). Therefore, we affirm the Examiner’s obviousness rejection of claims 15
and 19.
Obviousness Rejection – Claim 14
Appellants reiterate, with respect to claim 14, the arguments made
with respect to claim 1 (supra) (App. Br. 16-17; Reply Br. 7-8) and also
contend that “Matraszek does not disclose comparing a captured image of
the user’s face to a template stored in memory to allow access to information
on a storage medium if the captured image matches the template.” (App. Br.
23; see id. 22; Reply Br. 7.)
We agree with the Examiner’s findings and ultimate legal conclusion
that the combination of Matraszek and Tosaka would have taught or
suggested disputed features of claim 14. Specifically, we agree with the
Examiner that Matraszek describes utilizing video information of a user’s
face with face recognition software to automatically identify a user. (Ans.
11-12, 18-19; Matraszek, ¶¶ [0054], [0067], [0087], [0090], [0095], [0097];
Fig. 4C.) We broadly but reasonably construe a “template” to read on an
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image stored in memory as described by Matraszek. Thus, we conclude (as
did the Examiner) that Matraszek would have at least suggested the disputed
limitations of claim 14:
(a) capturing image . . . via a digital camera, . . . ;
(b) comparing at least portions of said image and/or
audio identification data against a template stored in a memory;
and
(c) allowing access to the information if the image and/or
audio identification data matches the stored template upon
comparison in said step (b).
(Claim 14.) Accordingly, we sustain the Examiner’s rejection of claim 14
for the reasons set forth in the Answer, which we incorporate herein by
reference. (Ans. 11-12, 18-19.)
Obviousness Rejection – Claims 5-8
Appellants do not provide separate patentability arguments with
respect to claims 5-8. (App. Br. 21.) Accordingly, we sustain the
Examiner’s rejection of these claims for the reasons set forth supra.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
15-22 under 35 U.S.C. § 112, first paragraph (written description).
Appellants have not shown that the Examiner erred in rejecting claims
1-9, 12-15, and 19 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 15-22 under 35 U.S.C.
§ 112, first paragraph.
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We affirm the Examiner’s rejection of claims 1-9, 12-15, and 19
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

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