Ex Parte Takiguchi

Patent Trial and Appeal Board

Sep 27, 2012

09848372 (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.
09/848,372 05/04/2001 Hideo Takiguchi 03500.015356. 6793
5514 7590 09/27/2012
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
EXAMINER
PHAM, LINH K
ART UNIT PAPER NUMBER
2174
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 HIDEO TAKIGUCHI
________________

Appeal 2012-002294
Application 09/848,372
Technology Center 2100
________________

Before JOSEPH F. RUGGIERO, ERIC B. CHEN, and
ANDREW CALDWELL, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. §§ 6(b) and 134 from the
Examiner’s final rejection of claims 34-47, 49-55, 57, 58, and 60-66.
Claims 1-33, 48, 56, and 59 are canceled.
We affirm-in-part.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief (Br.) filed May 19, 2011 and the
Answer (Ans.) mailed August 16, 2011.
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STATEMENT OF THE CASE
Appellant describes the present invention as relating to a technique of
transferring an image from an image storing apparatus, such as a digital
camera, to a computer where the image is printed or e-mailed. Spec. 1:6-9.
Independent claims 34, 49, 54, and 64 are representative
1
and are
shown below with key disputed limitations emphasized:
34. An image processing apparatus comprising:
an obtaining unit adapted to obtain a plurality of reduction images
from a storage medium storing storage images, each of the reduction
images corresponding to a respective one of the storage images;
a first display control unit adapted to cause a display device to display
the plurality of reduction images obtained by said obtaining unit;
a reduction image selection unit adapted to select reduction images
from among the plurality of reduction images displayed by said first
display control unit;
a second display control unit adapted to effect, in a size larger than
that of the reduction images, automatic sequential display of images
corresponding to the stored images which correspond respectively to
the reduction images selected by said reduction image selection unit;
a designating unit adapted to designate a plurality of images among
the images displayed by said second display control unit in the size
larger than that of the reduction images, as an image to be subjected
later to a specific image process;
a storing unit adapted to continue, at least up to completion of the
automatic and sequential display with the larger size by said second
display control unit, to store information indicating the plurality of
images designated by said designating unit as the images to be
subjected later to the specific image process; and

1
Appellant argues the following groups of independent claims: (1) 34, 46,
and 47; (2) 49, 55, and 57; (3) 54, 58, and 60; and (4) 64, 65, and 66. See
Br. 15-26. Appellants do not argue any of the dependent claims separately
from the independent claims. Id. Accordingly, we select independent
claims 34, 49, 54, and 64 as representative of their respective groups.
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a specifying unit adapted to specify the storage images corresponding
to the plurality of images indicated by the information stored by said
storing unit as an image group to be subjected to the specific image
process, when the automatic sequential display by said second display
control unit is completed.
49. An image processing apparatus comprising:
an obtaining unit adapted to obtain reduction images stored in a
storage medium;
a first display control unit adapted to cause a display device to display
the reduction images obtained by said obtaining unit;
a second display control unit adapted to cause a display device to
automatically change, sequentially, display of images each larger
than, and each corresponding to, a respective one of the reduction
images displayed by said first display control unit;
an indicating unit adapted to indicate a plurality of images among the
images automatically changed and sequentially displayed by said
display control unit, as images to be subjected later to a specific image
process;
a storing unit adapted to continue, at least up to completion of the
automatic and sequential display with the larger size by said second
display control unit, to store information indicating the plurality of
images indicated by said indicating unit as the image to be subjected
later to the specific image process; and
a registering unit adapted to register the plurality of images indicated
by the information stored by said storing unit as a target of a single
process.
54. An image processing apparatus comprising:
an obtaining unit adapted to obtain images stored in a storage
medium;
a display control unit adapted to control so that the images obtained
by said obtaining unit are automatically and sequentially displayed in
full-screen as a slideshow;
an indicating unit adapted to indicate a plurality of images among the
images displayed in full-screen as the slideshow by said display
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control unit, as images to be subjected later to a specific image
process;
a storing unit adapted to continue, at least up to completion of the
automatic and sequential display with the larger size by said display
control unit, to store information indicating the plurality of images
indicated by said indicating unit as the images to be subjected later to
the specific image process during the automatic and sequential display
with the larger size by said display control unit; and
a registering unit adapted to register the plurality of images indicated
by the information stored by said storing unit as a target of a specific
process.
64. An image processing apparatus comprising:
a first display control unit adapted to control to display a plurality of
thumbnail images simultaneously;
a second display control unit adapted to control to display a slide
show so that images are automatically and sequentially displayed one
by one in a larger size than the thumbnail image;
an indicating unit adapted to indicate, during the slide show displayed
by said second display control unit, a plurality of images among the
plurality of images displayed automatically and sequentially with the
larger size, as images to be subjected later to a specific image
process;
a storing unit adapted to continue, at least up to completion of the
slide-show displayed by said second display control unit, to store
information indicating the plurality of images indicated by said
indicating unit as the images to be subjected later to the specific image
process during the slide show displayed with the larger size by said
second display control unit; and
a specifying unit adapted to specify, after the completion of the slide
show displayed by said second display control unit, the plurality of
images indicated by the information stored by said storing unit as the
image to be subjected later to the specific image process, as images
which are to be subjected to the specific process.

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The Examiner relies on the following as evidence of unpatentability:
Takakura
Anderson ‘523

Morgenthaler

Fellegara

Dow

Chui

Anderson ‘749

US 5,752,053
US 6,215,523 B1

US 2002/0032677 A1

US 6,441,854 B2

US 6,549,304 B1

US 6,657,702 B1

US 6,680,749 B1

May 12, 1998
Apr. 10, 2001
(filed June 10, 1997)
Mar. 14, 2002
(eff. filing Mar. 1,
2000)
Aug. 27, 2002
(filed Feb. 20, 1997)
Apr. 15, 2003
(filed Aug. 7, 1998)
Dec. 2, 2003
(filed Nov. 29, 1999)
Jan. 20, 2004
(filed Nov. 6, 1997)

THE REJECTIONS
2

Claims 34-40, 44-47, and 61 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderson ‘749, Dow, Anderson ’523, Fellegara,
and Morgenthaler.
3
Ans. 12-16.

2
The After Final Amendment filed on September 21, 2010 amended media
claims 47 and 66 to include the term “non-transitory.” The Advisory Action
mailed on October 12, 2010 indicated that this amendment would be entered
for purposes of appeal. The Answer does not explicitly state that the
rejection of claim 47 and 66 under 35 U.S.C. § 101 was withdrawn, but the
Examiner did not repeat the rejection in the Answer. We will therefore treat
the rejection under 35 U.S.C. § 101 as withdrawn.

3
The Grounds of Rejection in the Answer do not reflect the cancellation of
claim 48 in the Amendment After Final filed on September 21, 2010. The
Advisory Action mailed on October 12, 2010 indicated that this amendment
would be entered for purposes of appeal. Our statement of the rejection
excludes the canceled claim.

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Claim 41 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Anderson ‘749, Dow, Anderson ’523, Fellegara, Morgenthaler, and
Takakura. Ans. 17.
Claims 42 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson ‘749, Dow, Anderson ’523, Fellegara,
Morgenthaler, and Chui. Id. at 17-18.
Claims 49, 50, 52-55, 57, 58, 60, and 62-66 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Anderson ‘523, Fellegara,
Morgenthaler, Anderson ‘749, and Dow.
4
Id. at 4-11.
Claim 51 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Anderson ‘523, Fellegara, Morgenthaler, Anderson ‘749, Dow, and
Chui. Id. at 11-12.

THE OBVIOUSNESS REJECTION - CLAIMS 34-40, 44-47, & 61
ARGUMENTS
The Examiner concludes that claim 34 is unpatentable over Anderson
‘749, Dow, Anderson ’523, Fellegara, and Morgenthaler. Id. at 12-16, 18-19.
The Examiner relies upon Anderson ‘749 for teaching “a reduction image
selection unit adapted to select reduction images from among the plurality of
reduction images displayed by said first display control unit.” Id. at 12, 18-
19. The Examiner relies upon Anderson ‘523 and Fellegara to teach a

4
The Grounds of Rejection in the Answer do not reflect the cancellation of
claims 56 and 59 in the Amendment After Final filed on September 21,
2010. The Advisory Action mailed on October 12, 2010 indicated that this
amendment would be entered for purposes of appeal. Our statement of the
rejection excludes the canceled claims.
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second display control unit that displays larger versions of the images
selected using the reduction image selection unit. Id. at 14.
Appellant argues, among other things, that the combination does not
teach a reduction image selection unit that selects plural reduced images and
a second display control unit that subsequently displays larger versions of
the selected reduction images. Br. 17-20.

ISSUE
Do Anderson ‘749, Dow, Anderson ’523, Fellegara, and Morgenthaler
teach or suggest a reduction image selection unit that selects plural reduced
images and a second display control unit that subsequently displays larger
versions of the selected reduction images as in claim 34?

ANALYSIS
Claim 34 recites “a reduction image selection unit adapted to select
reduction images from among the plurality of reduction images.” The
language of the claim requires the selection of plural images. The Examiner
relies upon Anderson ‘749 for teaching the reduction image selection unit.
Ans. 12, 18-19. In the Response to Argument section of the Answer, the
Examiner points to the navigation button and the underlined cursor of
Anderson Figure 7 as the reduction image selection unit. Id. at 18-19.
Appellant argues that the portions of Anderson ‘749 relied upon by the
Examiner show the selection of one thumbnail from among several
displayed together as opposed to the selection of plural images as required
by the language of claim 34. Br. 18-19. We agree with Appellant.
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We find no probative evidence that the other references of the
combination supply what is missing in Anderson ‘749. The Examiner relies
upon Anderson ‘523 and Fellegara to teach the second display control unit
that displays the images selected by the reduction image selection unit. Ans.
14-15, 19. In the Response to Argument section of the Answer, the
Examiner points to a set of navigation buttons shown in Figure 10 of
Anderson ‘523 as the second display control unit. We find no persuasive
reasoning, either in the Examiner’s statement of the rejection or in the
Response to Argument section of the Answer, to explain how these
additional references would lead one of ordinary skill in the art to modify or
add to Anderson ‘749 to allow for the selection of plural reduction images
from a plurality of reduction images and their subsequent display by the
second display control unit. We are therefore convinced that Appellant has
identified reversible error in the rejection of claim 34.
Since Appellant’s arguments with respect to claim 34 are persuasive,
we do not sustain the rejection of claim 34 and claims 35-40, 44, 45, and 61,
which depend on claim 34. For the same reason, we also do not sustain the
rejection of independent method claim 46 and independent storage medium
claim 47, which both include an image reduction image selection step with
essentially the same language as claim 34.

THE OBVIOUSNESS REJECTION - CLAIM 41
The Examiner concludes that dependent claim 41 is unpatentable over
Anderson ‘749, Dow, Anderson ’523, Fellegara, Morgenthaler, and
Takakura. Ans. 17. The Examiner, however, has not relied upon a teaching
from Takakura to cure the deficiency noted above in the rejection of
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independent claim 34. Id. Since we do not sustain the Examiner’s rejection
of independent claim 34, we likewise do not sustain the obviousness
rejection of dependent claim 41.

THE OBVIOUSNESS REJECTION - CLAIMS 42 & 43
The Examiner concludes that dependent claims 42 and 43 are
unpatentable over Anderson ‘749, Dow, Anderson ’523, Fellegara,
Morgenthaler, and Chui. Ans. 17-18. The Examiner, however, has not
relied upon a teaching from Chui to cure the deficiency noted above in the
rejection of independent claim 34. Id. Since we do not sustain the
Examiner’s rejection of independent claim 34, we likewise do not sustain the
obviousness rejection of dependent claims 42 and 43.

THE OBVIOUSNESS REJECTION
CLAIMS 49, 50, 52-55, 57, 58, 60, & 62-66
Independent claims 49, 54, and 64, unlike claim 34 discussed above,
do not recite that the images displayed by the second display control unit are
based on a selection made from the reduction images displayed by the first
display control unit. Claim 49, for example, recites that the larger images,
which are displayed by the second display control unit, correspond to the
same reduction images displayed by the first display control unit. At the end
of the Brief, Appellant provides general arguments regarding all of the
independent claims, including representative claims 49, 54, and 64. Br. 24-
26. However, Appellant fails to discuss either Anderson ‘523, the primary
reference in the obviousness rejection, or Fellegara. Id. One cannot show
non-obviousness by attacking references individually when the rejection is
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based on the combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981). By not addressing the combination of references, Appellant’s
general argument has failed to identify reversible error in the rejection of
representative claims 49, 54, and 64.
The Examiner concludes that independent claim 49 is unpatentable
over Anderson ‘523, Fellegara, Morgenthaler, Anderson ‘749, and Dow.
Ans. 5-6. The Examiner relies upon Anderson ‘523 to teach the first display
unit. Id. at 5-6, 19. The Examiner relies upon both Anderson ‘523 and
Fellegara to teach the second display control unit. Id. Although Appellant
provides specific arguments regarding Anderson ‘523, Appellant merely
states that Fellegara does not supply what is missing from Anderson ‘523
without providing specific arguments with respect to Fellegara. Br. 20-21.
One cannot show non-obviousness by attacking references individually
when the rejection is based on the combination of references. Keller, 642
F.2d at 426. By not addressing the combination of references, Appellant has
failed to identify reversible error in the rejection of claim 49.
Since we sustain the rejection of representative claim 49, we also
sustain the rejection of method claim 55 and storage medium claim 57,
which were argued as a group. We also sustain the rejection of dependent
claims 50, 52, 53, and 62, which depend on claim 49.
The Examiner concludes that independent claim 54 is unpatentable
over Anderson ‘523, Fellegara, Morgenthaler, Anderson ‘749, and Dow.
Ans. 7-9. The Examiner relies upon the combination of Fellegara,
Morgenthaler, Anderson ‘749, and Dow to teach “an indicating unit adapted
to indicate a plurality of images … as images to be subjected later to a
specific image process.” Id. at 7-9, 19-20. Although Appellant provides
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specific arguments regarding Fellegara, Appellant merely states that
Morgenthaler, Anderson ‘749, and Dow do not supply what is missing from
Fellegara. Br. 22-23. Appellant does not provide specific arguments
regarding these references. Id. One cannot show non-obviousness by
attacking references individually when the rejection is based on the
combination of references. Keller, 642 F.2d at 426. By not addressing the
combination of references, Appellant has failed to identify reversible error in
the rejection of claim 54.
Since we sustain the rejection of representative claim 54, we also
sustain the rejection of method claim 58 and storage medium claim 60,
which were argued as a group. We also sustain the rejection of dependent
claim 63, which depends on claim 54.
The Examiner concludes that independent claim 64 is unpatentable
over Anderson ‘523, Fellegara, Morgenthaler, Anderson ‘749, and Dow.
Ans. 9-11. The Examiner relies upon the combination of Fellegara,
Morgenthaler, Anderson ‘749, and Dow to teach “an indicating unit adapted
to indicate . . . a plurality of images … as images to be subjected later to a
specific image process.” Id. at 9-11, 20-21. Although Appellant provides
specific arguments regarding Fellegara, Appellant merely states that
Morgenthaler, Anderson ‘749, and Dow do not supply what is missing from
Fellegara. Br. 23-24. Appellant does not provide specific arguments
regarding these references. Id. One cannot show non-obviousness by
attacking references individually when the rejection is based on the
combination of references. Keller, 642 F.2d at 426. By not addressing the
combination of references, Appellant has failed to identify reversible error in
the rejection of claim 64.
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Since we sustain the rejection of representative claim 64, we also
sustain the rejection of method claim 65 and storage medium claim 66,
which were argued as a group.

THE OBVIOUSNESS REJECTION OF CLAIM 51
The Examiner concludes that dependent claim 51 is unpatentable over
Anderson ‘523, Fellegara, Morgenthaler, Anderson ‘749, Dow, and Chui.
Ans. 11-12. The Examiner, however, has not relied upon a teaching from
Chui to cure the deficiency noted above in the rejection of independent
claim 49. Id. Since Appellant has not argued claim 51 separately, we
sustain the rejection of dependent claim 51 for the reasons given above with
respect to independent claim 49.

CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 34-
40, 44-47, and 61 under 35 U.S.C. § 103(a) as being unpatentable over
Anderson ‘749, Dow, Anderson ’523, Fellegara, and Morgenthaler.
Appellant has shown that the Examiner erred in rejecting claim 41
under 35 U.S.C. § 103(a) as being unpatentable over Anderson ‘749, Dow,
Anderson ’523, Fellegara, Morgenthaler, and Takakura.
Appellant has shown that the Examiner erred in rejecting claims 42
and 43 under 35 U.S.C. § 103(a) as being unpatentable over Anderson ‘749,
Dow, Anderson ’523, Fellegara, Morgenthaler, and Chui.
Appellant has not shown that the Examiner erred in rejecting claims
49, 50, 52-55, 57, 58, 60, and 62-66 are rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over Anderson ‘523, Fellegara,
Morgenthaler, Anderson ‘749, and Dow.
Appellant has not shown that the Examiner erred in rejecting claim 51
under 35 U.S.C. § 103(a) as being unpatentable over Anderson ‘523,
Fellegara, Morgenthaler, Anderson ‘749, Dow, and Chui.

DECISION
The Examiner’s decision rejecting claims 34-47, and 61 under 35
U.S.C. § 103 is reversed.
The Examiner’s decision rejecting claims 49-55, 57, 58, 60, and 62-66
under 35 U.S.C. § 103 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

kis