Ex Parte Sawano

Patent Trial and Appeal Board

Apr 21, 2016

12210546 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/210,546 09/15/2008
27562 7590 04/25/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Takao Sawano
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LB-723-2423 6777
EXAMINER
IMPERIAL, JED-JUSTIN
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
04/25/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAO SAW ANO
Appeal2014-003885
Application 12/210,546
Technology Center 2600
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 12-14, 28-31, 36-38, 45, and 47-50, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
The claims are directed to generating a composite image by
combining an image taken by an imaging apparatus with a decoration image
1 According to Appellant, the real party in interest is Nintendo Co., Ltd.
App. Br. 3.
Appeal2014-003885
Application 12/210,546
selected by a server based on the location of the image apparatus. Spec.
,-r 220, Abstract.
Exemplary Claim
Exemplary claim 12 is reproduced below with disputed limitations
emphasized:
12. An imaging system compnsmg a server for storing a
decoration image in storage locations, and an imaging apparatus
for compositing a taken image taken by an imaging unit and a
predetermined decoration image to generate a composite image,
the server being connected to the imaging apparatus via a
network,
the imaging apparatus comprising:
a position information obtaining unit for obtaining
position information indicative of a position where the
imaging apparatus is present;
a position information transmission unit for
transmitting the position information to the server;
a decoration image reception unit for receiving
predetermined decoration images from the server; and
a composite image generation unit for compositing
a predetermined decoration image received by the
decoration image reception unit and the taken image to
generate a composite image,
the server comprising:
a position information reception unit for receiving
the position information from the imaging apparatus;
a decoration image selection unit for selecting
predetermined decoration images from the storage
locations of the server using the position information
received by the position information reception unit; and
a decoration image transmission unit for
transmitting the plurality of the predetermined
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Application 12/210,546
decoration images selected by the decoration image
selection unit to the imaging apparatus each time the
position information reception unit receives the position
information from the imaging apparatus, wherein the
decoration image selection unit selects a plurality of
decoration images, and
the imaging apparatus further comprises a user selection
unit for causing a user to select an image among the plurality of
decoration images selected by the decoration image selection
unit.
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Halliday
Valdes
Narayanaswami
Campbell
Defaix
Rao
Kramer
Rohlf
Lousing
Piersol
us 5,880,740
US 2002/0167536 Al
US 6,504,571 Bl
US 2004/0078106 Al
US 2004/0133444 Al
US 2005/0093888 Al
US 2005/0195157 Al
US 2008/0016472 Al
US 2009/0051682 Al
US 2009/0088182 Al
REJECTIONS
The Examiner made the following rejections:
Mar. 9, 1999
Nov. 14, 2002
Jan. 7,2003
Apr. 22, 2004
July 8, 2004
May 5, 2005
Sept. 8, 2005
Jan. 17,2008
Feb.26,2009
(filed May 27, 2008)
Apr. 2, 2009
(filed June 3, 2008)
Claims 12, 28, 45, 47, and 49 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Valdes, Rohlf, and Narayanaswami. Final Act.
2-9.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Valdes, Rohlf, Narayanaswami, and Piersol. Id. at 9-11.
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Application 12/210,546
Claims 29-31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Valdes, Rohlf, Narayanaswami, and Halliday. Id. at 11-
14.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Valdes, Rohlf, Narayanaswami, Kramer, and Campbell.
Id. at 14--15.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Valdes, Rohlf, Narayanaswami, Kramer, Campbell, and
Defaix. Id. at 15-16.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Valdes, Rohlf, Narayanaswami, Kramer, Campbell,
Lousing, and Rao. Id. at 16-18.
Claims 48 and 50 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Valdes and Narayanaswami. Id. at 18-20.
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellant's argument that the Examiner has erred. We
disagree with Appellant's arguments and conclusions. We adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2-20 (mailed May 22, 2013)); (2)
the Advisory Action (Adv. Act. 2 (mailed Aug. 14, 2013)); and (3) the
findings and the reasons set forth in the Examiner's Answer (Ans. 21-29
(mailed Dec. 5, 2013)). We concur with the conclusions reached by the
Examiner and further highlight specific findings and argument for emphasis
as follows.
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Application 12/210,546
Issue 1: ''position information"
Appellant contends Narayanaswami does not teach or suggest
"selecting predetermined decoration images ... using the position
information received" and "transmitting the plurality of the predetermined
decoration images ... each time the position information reception unit
receives the position information from the imaging apparatus," as recited in
claim 12 and similarly recited in claims 45 and 47-50. App. Br. 14--17;
Reply Br. 2--4. Specifically, Appellant argues Narayanaswami transmits
images "based on the content of the images, not location information of the"
imaging apparatus. App. Br. 15-17, 21; Reply Br. 2--4.
Appellant's arguments are not responsive to the Examiner's findings.
Here, the Examiner finds, and we agree, Valdes teaches an imaging device,
which receives an overlay scene (image) from a server based on the location
of the imaging device. Final Act. 3--4 (citing Valdes i-fi-162, 66-67); Ans. 25.
Appellant's arguments directed towards Narayanaswami (App. Br. 15-17;
Reply Br. 2--4), do not address the Examiner's finding that Valdes teaches a
system that transmits images based on the location of an imaging device
(Final Act. 3--4 (citing Valdes i-fi-1 62, 66-67); Ans. 25). Accordingly, we are
not persuaded of error in the Examiner's finding that the combination of
Valdes and Narayanaswami teaches or suggests "selecting predetermined
decoration images ... using the position information received" and
"transmitting the plurality of the predetermined decoration images ... each
time the position information reception unit receives the position
information from the imaging apparatus," as recited in claim 12 and
similarly recited in claims 45 and 47-50.
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Application 12/210,546
Issue 2: "the server . .. selecting predetermined decoration images"
Appellant contends Rohlf does not teach or suggest "the server
comprising ... a decoration image selection unit for selecting predetermined
decoration images" and transmitting "the plurality of the predetermined
decoration images selected by the decoration image selection unit," as
recited in claim 12 and similarly recited in claims 45, 47, and 49. App. Br.
16; Reply Br. 6-7. Specifically, Appellant argues "[i]n Rohlf, it is the user
who chooses from a plurality of images" rather than "the server select[ing] a
plurality of decoration images." App. Br. 16; Reply Br. 6-7.
Appellant's arguments are not responsive to the Examiner's findings.
Here, the Examiner finds, and we agree, Valdes' "server 56 selects ... the
[overlay] scene most closely matching the user's [device] location." Ans.
22, 26 (citing Valdes i-fi-1 65---68); Final Act. 3--4; see also Valdes Abstract,
i162. Appellant's arguments directed towards Rohlf (App. Br. 15-17; Reply
Br. 2--4) do not address the Examiner's finding that Valdes teaches a server
selecting an overlay image (Ans. 22, 26 (citing Valdes i1i1 65---68); Final Act.
3--4). Accordingly, we are not persuaded of error in the Examiner's finding
that the combination of Valdes and Rohlf teaches or suggests "the server
comprising ... a decoration image selection unit for selecting predetermined
decoration images" and transmitting "the plurality of the predetermined
decoration images selected by the decoration image selection unit," as
recited in claim 12 and similarly recited in claims 45, 47, and 49.
Issue 3: ''plurality of the predetermined decoration images"
Appellant contends Valdes does not teach or suggest "a decoration
image transmission unit for transmitting the plurality of the predetermined
decoration images selected by the decoration image selection unit to the
imaging apparatus," as recited in claim 12 and similarly recited in claims 45,
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Application 12/210,546
47, and 49. Reply Br. 4--5. Specifically, Appellant argues "[i]n Valdes, the
server selects only one scene" rather than "a plurality of images." Id.
(emphasis omitted).
Appellant's arguments address Valdes individually, but the rejection
is based on the combination of Valdes and Rohlf. In re Keller, 642 F.2d
413, 426 (CCPA 1981) (citation omitted) ("one cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references."). As discussed supra, the Examiner
finds that Valdes teaches a server which transmits an overlay scene (i.e., an
image) corresponding to a user's device location. Final Act. 3 (citing Valdes
i-fi-1 62, 66-67); Ans. 22. The Examiner further finds, and we agree, Rohlf
teaches a plurality of overlay layers corresponding to a location. Final Act.
5 (citing Rohlfi-f 78); Ans. 26-27. Appellant's argument, which attacks
Valdes individually for failing to teach or suggest selecting a plurality of
overlay images corresponding to a location (Reply Br. 4--5) is not persuasive
because the Examiner relies on Rohlf to teach a plurality of overlay layers
corresponding to a location (Final Act. 5-6) (citing Rohlfi-f 78); Ans. 26-27.
Accordingly, we are not persuaded of error in the Examiner's finding that
the combination of Valdes and Rohlf teaches or suggests "a decoration
image transmission unit for transmitting the plurality of the predetermined
decoration images selected by the decoration image selection unit to the
imaging apparatus," as recited in claim 12 and similarly recited in claims 45,
47, and 49.
Issue 4: Intended Purpose
Appellant contends the combination of Valdes, Rohlf, and
Narayanaswami is improper, because the combination "is inconsistent with
the purpose of Valdes." App. Br. 19-21; Reply Br. 5-7. Specifically,
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Application 12/210,546
Appellant argues "the stated goal of Valdes" is to "select[ ] only one
[overlay] image that corresponds to the user's position the most," but the
combination providing multiple overlay images would cause Valdes' system
to "not be able to know which overlay image is the appropriate one." App.
Br. 19-21; Reply Br. 5-7 (emphasis omitted).
When combining references to establish obviousness, the appropriate
consideration is whether the proposed combination would work for its
intended purpose, not whether the combination is inconsistent with the stated
goal of one of the references, as Appellants argue. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).
As discussed supra, we agree with the Examiner's finding that Valdes
teaches a system, which creates a composite image by overlaying a scene
corresponding to a location onto a real image at the location. Final Act. 2--4
(citing Valdes i-fi-162, 66-67); Ans. 22. The Examiner further finds, and we
agree, Rohlf teaches multiple layers corresponding to different types of
information about a location (e.g., points of interest and building data) and
further teaches a user selects which layer is overlaid onto an image of the
location. Final Act. 5---6 (citing Rohlfi-f 78); Ans. 26-27; see Rohlf Fig. 3.
The Examiner concludes, and we agree, it would have been obvious to
modify Valdes to provide a plurality of user-selectable overlays
corresponding to a location, as taught or suggested by Rohlf. Final Act. 5;
Ans. 28.
Appellant's argument that the Examiner's proposed combination is
inconsistent to Valdes' purpose is unpersuasive. App. Br. 20. The
Examiner's combination gives the user the ability to select which type of
information about the location is overlaid (Ans. 28; Final Act. 5). Nothing
identified by Appellants in Valdes persuasively shows that the proposed
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Application 12/210,546
combination would not have worked for its intended purpose. Accordingly,
we are not persuaded that the Examiner's proposed combination was error.
For the reasons stated above, we sustain the Examiner's decision to
reject claims 12, 45, and 47-50.
Dependent Claims 13, 14, 28-31, and 36-38
Appellant has not presented persuasive arguments with respect to
dependent claims 13, 14, 28-31, and 36-38. See App. Br. 22-23. For the
reasons set forth above, therefore, we are not persuaded the Examiner erred
in rejecting these claims. See In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir.
2011) ("We conclude that the Board has reasonably interpreted Rule 41.37
to require applicants to articulate more substantive arguments if they wish
for individual claims to be treated separately."). Accordingly, we sustain the
Examiner's rejections of dependent claims 13, 14, 28-31, and 36-38. See
37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner's decision to reject claims 12-14, 28-31, 36-38, 45,
and 47-50 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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