Ex Parte Shintani

Patent Trial and Appeal BoardMar 31, 2016

13330428 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/330,428 12/19/2011 PETER SHINTANI 36738 7590 04/04/2016 ROGITZ & AS SOCIA TES 750B STREET SUITE 3120 SAN DIEGO, CA 92101 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. 201003685.01 9385 EXAMINER KHAN, USMAN A ART UNIT PAPER NUMBER 2662 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER SHINTANI Appeal2013-009352 Application 13/330,428 Technology Center 2600 Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-5, 7-15, and 17-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appeal2013-009352 Application 13/330,428 STATEMENT OF THE CASE Appellant's invention orients illustrations in electronic display devices, such as electronic books, according to captured images of objects being illustrated. To this end, a camera generates an object image that is used to alter a reference image's visual presentation on a display. See generally Abstract; Spec. 1-3. Claim 1 is illustrative: 1. A system comprising: housing; display supported by the housing; camera supported by the housing; processor configured for controlling the display and receiving input from the camera; and computer readable storage medium accessible to the processor and storing at least one reference image of an object presentable on the display under control of the processor, the camera configured for generating an object image of the object, the processor configured for accessing the object image and altering a presentation on the display of the reference image according to the object image, wherein the processor is configured to compare the object image to reference images in a library of reference images using image recognition to determine how to alter the presentation on the display of the reference image according to the object image. 2 Appeal2013-009352 Application 13/330,428 THE REJECTIONS The Examiner rejected claims 1, 2, 4, 5, 7, 11, 12, 14, 15, 17, 19, and 20 under 35 U.S.C. Â§ 102(e) as anticipated by Xiong (US 2010/0111441 Al; May 6, 2010). Final Act. 5-10. 1 The Examiner rejected claims 3 and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Proteau (US 2004/0258300 Al; Dec. 23, 2004). Final Act. 10-12. The Examiner rejected claims 4, 5, 14, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Song (US 2011/0007191 Al; Jan. 13, 2011). Final Act. 12-14. The Examiner rejected claims 8 and 18 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Kitsugi (US 2002/0057353 Al; May 16, 2002). Final Act. 14--16. The Examiner rejected claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Onuki (US 2001/0038748 Al; Nov. 8, 2001). Final Act. 16-17. The Examiner rejected claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Silverstein (US 2004/0179121 Al; Sept. 16, 2004). Final Act. 17-18. The Examiner rejected claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Iida (US 2002/0110262 Al; Aug. 15, 2002). Final Act. 18-19. 1 Throughout this opinion, we refer to (1) the Final Rejection mailed May 10, 2013 ("Final Act."); (2) the Appeal Brief filed June 12, 2013 ("App. Br."); (3) the Examiner's Answer mailed July 2, 2013 ("Ans."); and (4) the Reply Brief filed July 1 7, 2013 ("Reply Br."). 3 Appeal2013-009352 Application 13/330,428 The Examiner rejected claim 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Xiong and Snavely (US 2007/0110338 Al; May 17, 2007). Final Act. 19. THE ANTICIPATION REJECTION The Examiner finds that Xiong discloses every recited element of claim 1. Final Act. 5. According to the Examiner, Xiong in Figure 5 compares an "object image" acquired in step 502 to panoramic "reference images" in step 503 using image recognition to determine how to alter the reference image's displayed presentation according to the object image. Final Act. 5; Ans. 2. This alteration is said to be achieved by combining these object and reference images to create and display a new panoramic reference image in steps 503 and 501. Id. Appellant argues that Xiong does not use image recognition, let alone use image recognition to compare an object image to reference images as claimed. App. Br. 4--5. According to Appellant, Xiong need not use image recognition because the panoramic image into which a newly-acquired image is stitched is already present in the display. App. Br. 5. Appellant adds that the Examiner's anticipation is flawed because it relies on artifacts for a reference image in one part of the rejection, yet relies on stitching images together for teaching the recited reference image alteration in another part of the rejection. Reply Br. 2-3. 4 Appeal2013-009352 Application 13/330,428 ISSUES UnderÂ§ 102, has the Examiner erred by finding that Xiong: (1) uses image recognition to compare an object image to reference images in a library of reference images to determine how to alter the reference image's displayed presentation as recited in claim 1? (2) alters the display by presenting an (a) instruction on the display to tum the display as recited in claim 4, or (b) arrow on the display indicating a direction in which to tum the display as recited in claim 5? (3) reorients the reference image on the display to match an orientation indicated on the object image as recited in claim 7? ANALYSIS Claims 1, 2, 11, 12, and 19 We begin by construing the key disputed limitation of claim 1 which recites, in pertinent part, "image recognition." Appellant's disclosure does not define the term, but rather refers to image recognition generally in connection with identifying objects or parts from captured images as shown, for example, in step 36 of Appellant's Figure 5 and the associated discussion on page 5. In light of this disclosure, we construe "image recognition" with its ordinary and customary meaning in the art, namely "[ t ]he processing of the data of an image input device, such as a scanner, for the purpose of comparison to images or components of images stored in computer memory." Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 361 (2004). Based on this construction, we see no error in the Examiner's finding that Xiong uses image recognition to compare a newly-acquired "object 5 Appeal2013-009352 Application 13/330,428 image" in step 502 of Figure 5 to "reference images" in a library of such images, namely images associated with the panoramic image, to determine how to alter the reference image's displayed presentation according to the object image. Final Act. 5; Ans. 2. As the Examiner indicates, this alteration is achieved by combining these object and reference images to create and display a new panoramic reference image in steps 503 and 501. Id. To this end, image recognition is used to (1) align the newly-acquired object image to the reference image (which comprises multiple images), and (2) combine the object and reference images to produce the new panoramic reference image as shown, for example, in Xiong's Figure 2. See Xiong i-f 54 (noting that Figure 2 shows a panoramic image produced by aligning and combining component images). That is, Xiong's image alignment and combination functionality uses image recognition by processing the newly- acquired image in step 502 (i.e., data of an image input device under the above-noted definition), to compare to images or components of images stored in computer memory, namely the stored images associated with the panoramic reference image or their associated components. Appellant's arguments to the contrary are unavailing and not commensurate with the scope of the claim. To the extent that Appellant contends that the Examiner's anticipation rejection improperly combines two different embodiments of Xiong, namely functionality pertaining to artifacts and image stitching, respectively (see Reply Br. 2), we disagree. Notably, the passages cited by Appellant as allegedly forming different parts of the rejection actually refer to the Examiner's response on page 2 of the Answer-not the rejection. Compare Ans. 2 with Final Act. 5. Although the Examiner's response notes that 6 Appeal2013-009352 Application 13/330,428 Xiong uses two different forms of image recognition associated with stitching images and finding image artifacts, respectively (Ans. 2), only the first form is consistent with the Examiner's rejection, namely image recognition used to align and combine images to generate and display a panoramic reference image in Figure 5 as noted previously. See Final Act. 5. Therefore, any error associated with the Examiner's alternative artifact- based image recognition position in the response is deemed to be harmless, for it is not germane to the Examiner's articulated findings in the rejection of claim 1. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 11, 12, and 19 not argued separately with particularity. Claims 4, 5, 14, 15, and 20 Claim 4 recites that the processor alters the presentation on the display of the reference image according to the object image by presenting an instruction on the display to tum the display. Claim 5 recites similar limitations, but rather presents an arrow on the display indicating a direction in which to tum the display. Our emphasis underscores that, in both claims, the recited processor performs an active method step, namely that it alters the presentation, unlike independent claim 1 where the processor is configured for altering the presentation. Apparatus claims reciting active method steps have been held indefinite under 35 U.S.C. Â§ 112(b ), for such claims raise the question of whether they are infringed by devices that are merely capable of performing the recited function, or that they must actually perform that function. See 7 Appeal2013-009352 Application 13/330,428 IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); see also Rembrandt Data Technologies, LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (data transmitting device held indefinite for reciting transmitting method step). Nevertheless, the Examiner did not reject claim 4 on this basis, nor will we speculate in that regard here in the first instance on appeal. Rather, we leave this question to the Examiner to consider after our decision, as well as the related question of whether method steps recited in other dependent system claims and independent apparatus claims 19 and 20 likewise render those claims indefinite under Â§ 112(b). Turning to the rejection, we see no error in the Examiner's reliance on Xiong' s move arrow 715 in Figure 7b2 as anticipating the recited alteration (Final Act. 6), for this arrow instructs the user to tum the pointing direction of the electronic image capturing device 101 and its associated display for taking a new component image to stitch into the panoramic image. See Xiong i-fi-153-54, 112. Notably, the panoramic image in Figures 7a and 7b is strikingly similar to that shown in Xiong's Figure 2, where the component images are stitched by the system proceeding three times through the loop comprising states 502 and 503 in Figure 5. See Xiong i-f l 06. As noted previously, this stitching process that generates the image shown in Figure 7b alters the reference image's presentation on the display 2 Although the Examiner also refers to Xiong' s Figure 5 in connection with numeral 715 in the Answer's response to arguments (Ans. 3--4), numeral 715 does not appear in Figure 5, but rather Figure 7b--a finding consistent with the Examiner's rejection. Final Act. 6. Accordingly, the Examiner's inconsistency in the response to arguments is an apparent typographical error and is, therefore, deemed harmless. 8 Appeal2013-009352 Application 13/330,428 according to the object image. That presentation is additionally altered by displaying an instruction to tum the display to capture a new image with that orientation, despite the new image having not yet been acquired as Appellant indicates (App. Br. 6). Notwithstanding this additional alteration, the reference image's presentation is still altered according to the object image-namely the previously-acquired object image resulting in the panoramic reference image in Figure 7b. That the Examiner maps Xiong' s arrow to both the instruction recited in claim 4 and the arrow in claim 5 does not mean that the Examiner ignored their differences in the claims as Appellant contends (App. Br. 6), but rather merely recognized that Xiong' s arrow meets either limitation. See Final Act. 6. The Examiner's findings in this regard are not erroneous even assuming, without deciding, that ( 1) both arrows and instructions are separate species of "visible indications" as Appellant contends (Reply Br. 4 ), or (2) the displayed arrow in claim 5 is a species of the displayed instruction in claim 4, despite both claims depending from claim 1. In any event, Xiong's displayed arrow in Figure 7b anticipates both limitations. Therefore, we are not persuaded that the Examiner erred in rejecting claims 4 and 5, and claims 14, 15, and 20 not argued separately with particularity. 3 3 Although the Examiner refers to the Song reference in connection with the anticipation rejection of claims 4 and 5 in the Answer's response to arguments (Ans. 3--4), Song is not germane to the Examiner's anticipation rejection that is based solely on Xiong. See Final Act. 5-10. Accordingly, we do not consider Song in this context. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) ("Where a reference is relied on to support a rejection, whether or not in a 'minor capacity,' there would appear to be no 9 Appeal2013-009352 Application 13/330,428 Claims 7 and 17 We also sustain the Examiner's rejection of claim 7 reciting that the processor alters the reference image's display by reorienting the reference image on the display to match an orientation indicated on the object image. The Examiner construes the term "orientation" as "rotating, aligning, position, inclination, etc.," and, in light of this construction, finds that the recited reference image reorientation is anticipated by Xiong' s image aligning and combining functionality in steps 501 to 503 of Figure 5. Final Act. 7; Ans. 4--5. We see no error in this position. First, Appellant's arguments regarding Xiong's alleged failure to recognize images (Reply Br. 5) are unavailing for the reasons noted previously. Second, the term "orientation" is not defined in the Specification as the Examiner indicates (Ans. 5), and the Examiner's construction of this term is reasonably consistent with its plain meaning. The term "orient" is defined, in pertinent part, as "[ t Jo align or position with respect to a point or system of reference." THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1240 (4th ed. 2006). The terms "align" and "position" in this definition are notable, for they match those used by the Examiner in construing "orientation." See Ans. 5. Therefore, we see no error in the Examiner's position that Xiong's panoramic image generation functionality in steps 501 to 503 of Figure 5 effectively reorients a reference image by realigning or repositioning it with respect to point or system of reference, namely that associated with the excuse for not positively including the reference in the statement of the rejection."). 10 Appeal2013-009352 Application 13/330,428 newly-acquired images, to produce a combined panoramic image. See Xiong i-fi-154, 89 (noting that Figure 2 shows a panoramic image produced by aligning and combining component images). Therefore, we are not persuaded that the Examiner erred in rejecting claim 7, and claim 1 7 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER XIONG AND PROTEAU We also sustain the Examiner's obviousness rejection of claim 3 reciting using alpha blending to blend the object image into the reference image. Final Act. 10-11. Although the Examiner acknowledges that Xiong does not use alpha blending, the Examiner nonetheless cites Proteau's paragraph 5 for this teaching in concluding that the claim would have been obvious. Id.; Ans. 5---6. We see no error in this position. First, Appellant's arguments regarding Xiong's and Proteau's individual shortcomings in this regard (App. Br. 7) do not show nonobviousness where, as here, the rejection is based on the cited references' collective teachings as the Examiner indicates. Ans. 5; see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Second, Appellant's contention that the prior art does not use alpha blending to correct artifacts as in Xiong (App. Br. 7; Reply Br. 5) is not germane to the Examiner's position which is merely based on Xiong's combining images in steps 501 to 503 in Figure 5, and that doing so using a known alpha blending technique such as that in Proteau would have been obvious. See Final Act. 10-11; Ans. 5---6. Such an enhancement uses prior art elements predictably according to their established functions-an obvious improvement. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 11 Appeal2013-009352 Application 13/330,428 (2007). We, therefore, find the Examiner's reason to combine the teachings of Xiong and Proteau is supported by articulated reasoning with some rational underpinning to justify the Examiner's obviousness conclusion. Accordingly, we are not persuaded that the Examiner erred in rejecting claim 3, and claim 13 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER XIONG AND SONG Because our decision is dispositive regarding patentability of claims 4, 5, 14, and 15 as anticipated by Song as noted previously, we need not reach the merits of the Examiner's cumulative rejection of these claims as obvious over Xiong and Song (Final Act. 12-14). 4 See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC's determination based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). THE REMAINING OBVIOUSNESS REJECTIONS We also sustain the Examiner's obviousness rejections of (1) claims 8 and 18 over Xiong and Kitsugi; (2) claim 9 over Xiong and Onuki; (3) claim 9 over Xiong and Silverstein; (4) claim 9 over Xiong and Iida; and (5) claim 10 over Xiong and Snavely. Final Act. 14--19. Appellant does not present any arguments regarding these rejections, but rather present arguments in connection with an alleged obviousness rejection based on Xiong and 4 Although Appellant also presents arguments in connection with an alleged obviousness rejection over Xiong and "Kinoshita" (App. Br. 7), no such rejection is before us. Accord Ans. 6-7 (confirming that there was no reference to Kinoshita in the previous office action). 12 Appeal2013-009352 Application 13/330,428 "Official Notice." App. Br. 8-9. But as the Examiner indicates, no such Official Notice was taken in the office action from which the appeal was taken (Ans. 7-8); therefore, such a rejection is not before us. Nevertheless, to the extent that these arguments somehow apply to the Examiner's obviousness rejections, we are unpersuaded of error in those rejections for the reasons noted previously. CONCLUSION The Examiner did not err in rejecting claims 1-5, 7-15, and 17-20 underÂ§ 103. DECISION The Examiner's decision rejecting claims 1-5, 7-15, and 17-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13