Ex Parte Tojo

Patent Trial and Appeal BoardAug 2, 2013

10829437 (P.T.A.B. Aug. 2, 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. 10/829,437 04/22/2004 Hiroshi Tojo 00862.023559. 8784 5514 7590 08/05/2013 FITZPATRICK CELLA HARPER & SCINTO 1290 Avenue of the Americas NEW YORK, NY 10104-3800 EXAMINER PRINCE, JESSICA MARIE ART UNIT PAPER NUMBER 2485 MAIL DATE DELIVERY MODE 08/05/2013 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 HIROSHI TOJO ____________ Appeal 2011-004541 Application 10/829,437 Technology Center 2400 ____________ Before CARLA M. KRIVAK, CARL W. WHITEHEAD, JR., and DENISE M. POTHIER, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 12-23. Claims 1-11 have been canceled. An oral hearing was held July 9, 2013. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Invention Appellant’s invention relates to a technique for dividing a moving image. See Spec. 1:5-8. Claim 12 is reproduced below with emphasis: Appeal 2011-004541 Application 10/829,437 2 12. A moving image processing method for dividing a moving image sensed between a beginning of recording and an ending of recording, on the basis of a plurality of items of additional data which indicate states upon sensing the moving image, wherein the additional data is added to the moving image and is able to be read out for each item from the moving image, comprising: a generation step of defining an item group formed of one or a plurality of items selected from the plurality of items, and generating division information corresponding to the item group on the basis of the additional data of the items which belong to the item group; a hierarchization step of hierarchizing a plurality of division information generated for each item group, and of adding division positions based on division information of an upper layer to division positions of division information of a lower layer, wherein the plurality of division information is hierarchized and the division positions are added in a case that the plurality of division information is generated in the generation step in correspondence with a plurality of item groups; and a holding step of holding the division information obtained in the hierarchization step in correspondence with the moving image data in a memory. The Examiner relies on the following as evidence of unpatentability: Matsushita (‘322)1 JP 07-023322 Jan. 24, 1995 Matsushita (‘488) JP 08-163488 A Jun. 21, 1996 Figures 17(a)-(b) of the disclosure as Appellant’s Admitted Prior Art (AAPA) (also published as US 2004/0129769 A1 (Tojo)) Official Notice that segmenting a moving image into many intervals and dividing the image changing points into layers is well known. 1 The Examiner refers to this reference as Matsushita ‘337, presumably based on the Japanese Application No. 05-147337. See Ans. 3, 12. Appeal 2011-004541 Application 10/829,437 3 The Rejections Claims 12-17 and 19-23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matsushita ‘488, AAPA, and Official Notice. Ans. 4-12. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Matsushita ‘488, AAPA, Matsushita ‘322, and Official Notice. Ans. 12-13. OBVIOUSNESS REJECTION OVER MATSUSHITA ‘488, AAPA, AND OFFICIAL NOTICE Regarding independent claim 12, the Examiner finds Matsushita ‘488 teaches the generation step where a plurality of division information is generated (Ans. 4), the hierarchizing of the information (Ans. 4-5), and the holding step (Ans. 5). For the adding division positions step, the Examiner turns to the AAPA. Ans. 5-6, 14-16, 18-20. For the recitation that the hierarchizing and adding steps occur in a case that the plurality of division information is generated with a plurality of groups, the Examiner further turns to Official Notice and the AAPA. See Ans. 6-7, 19. Among other things, Appellant argues Figure 17 of the Specification is not prior art. App. Br. 18-20. Appellant also contends that Figures 17(a)- (b) show divisions that are independent of each other and have no hierarchical relationship. App. Br. 22-25; Reply Br. 8-13. Appellant further asserts Figures 17(a)-(b) do not show hierarchical layers such that division positions can be added to division information of a lower layer based on division information of an upper layer as recited. App. Br. 26-28; Reply Br. 16-21. Appeal 2011-004541 Application 10/829,437 4 ISSUE Under § 103, has the Examiner erred in rejecting claim 12 by finding Matsushita ‘488, AAPA, and Official Notice collectively would have taught or suggested hierarchizing a plurality of division information for each item group and adding division positions based on division information of an upper layer to division positions of division information of a lower layer in a case that the plurality of division information is generated in the generation step in correspondence with a plurality of item groups? ANALYSIS Based on the record before us, we find error in the Examiner’s rejection of claim 12. Despite Appellant’s arguments (App. Br. 18-19), we find Figures 17(a)-(b), described in Background of the Invention, depict what are conventional in the art. That is, Appellant admits dividing an image into intervals is conventional in the art (Spec. 1:25-27), and Figures 17(a)-(b) of the disclosure are “a view for explaining the conventional moving image dividing technique” (Spec. 2:1-2). As such, we are not persuaded Figures 17(a)-(b) are only Appellant’s own work product. See Riverwood Int’l Corp. v. R.A. Jones & Co., Inc. 324 F.3d 1346, 1354-55 (Fed. Cir. 2003). Nonetheless, Figures 17(a)-(b) fail to show the recited hierarchization step. The Examiner finds Matsushita ‘488 teaches hierarchizing a plurality of division information. See Ans. 4-5. Appellant does not challenge this position. Given that a hierarchy is taught, Matsushita ‘488 teaches camera information (e.g., scene, cut, frames) on upper and lower layers of a hierarchical structure. Matsushita ‘488, ¶ [0023]. Even so, the cited art Appeal 2011-004541 Application 10/829,437 5 collectively fails to show both hierarchizing a plurality of division information generated for each item group and adding division positions based on division information of an upper layer to division positions of division information of a lower layer.2 The Examiner notes a hierarchy is “defined as graded or ranked series.”3 We accept this definition. The Examiner also contends: Since a hierarchy is defined as a graded or ranked series (see Merriam Webster's Collegiate Dictionary, Tenth Edition), and [sic] Fig. 17 clearly discloses where the changing points are ordered by Gain, White Balance, Subject distance, Zoom and Pan. Therefore, fig. 17 clearly discloses where the order (hierarchy) of the changing points (division information) is in the order of the Gain, White Balance, Pan, and Zoom. Further, the changing points are ordered by the Gain, White Balance, Subject distance, Zoom, and Pan[;] the examiner interprets this order to be a hierarchy, where the gain is higher [than] white balance, white balance higher than subject distance, subject distance higher than zoom, and zoon [sic] higher than pan. Since AAPA discloses to divide the image changing points into layers (gain, white balance, zoom and pan), and create a division result, it is clear to the examiner that AAPA teaches to add the changing point layers to create the division result which reads upon the claimed limitation. Ans. 20. 2 In passing, we note claim 12 is broad in scope and does not add division information when generating one division information or generating division information corresponding to a single item group. Rather, the recited adding division positions step occurs “in a case that the plurality of division information is generated in the generation step in correspondence with a plurality of item groups” (emphasis added). As the rejection is presented on the record, the Examiner relies on the cited references for disclosing generating a plurality of division information to a plurality of item groups, and thus these references must teach adding division information. 3 The Examiner cites to Merriam-Webster’s Collegiate Dictionary, 10th ed. Ans. 16, 17, 20. Appeal 2011-004541 Application 10/829,437 6 While visually Figure 17(a) shows various information presented one on top of each other (e.g., gain over white balance) (see Reply Br. 9), the corresponding disclosure does not state or suggest that this information is presented in a hierarchy or is ranked, such that gain category is on a different level or layer than the white balance category. See Spec. 2:1-6; Fig. 17(a). Moreover, the described changing points of the operation intervals (Spec. 2:1-6) define the division information or generate division information (e.g., sunlight, fluorescent lamp, candle) corresponding to an item group (e.g., white balance) but again fail to grade or rank this division information. See id. Figure 17(b) shows adding division positions based on division information. For example, each vertical line or division in Figure 17(b) represents a changing point, such as interval A starts at a White Balance changing point and ends at a Pan changing point. See Spec. 2:16-19; Fig. 17(b). Yet, given that Figures 17(a)-(b) do not show a hierarchy with upper and lower layers, this does not teach or suggest adding the division positions based division information of an upper layer to division information of a lower layer as recited. Rather, the moving image is segmented into division information without regard to a hierarchy. See Spec. 2:9-19; Fig. 17(b); see also Reply Br. 12-13. The Examiner also takes of Official Notice that a “hierarchization” process that includes adding division positions based on division information of an upper layer to a lower layer is notoriously well known. Ans. 6-7. Appellant challenges this taking of Official Notice. See App. Br. 25; see also page 12 of the Remarks filed with the May 6, 2009 Amendment. In response, the Examiner refers to the already-discussed AAPA, finding Appeal 2011-004541 Application 10/829,437 7 Figures 17(a)-(b) teach this well-known concept. See Ans. 16-17, 19. As stated above, we do not agree that Figures 17(a)-(b) teach or suggest these recitations. For the foregoing reasons, Appellant has persuaded us of error in the rejection of (1) independent claim 12; (2) claims 21-23, which recite commensurate limitations; and (3) dependent claims 13-17, 19, and 20 for similar reasons. OBVIOUSNESS REJECTION OVER MATSUSHITA ‘488, AAPA, MATSUSHITA ‘322, AND OFFICIAL NOTICE Claim 18 depends indirectly from claim 12 and is rejected under § 103 over Matsushita ‘488, AAPA, Matsushita ‘322, and Official Notice. Ans. 12-13. The Examiner has not relied on Matsushita ‘322 to cure the above- noted deficiencies of claim 12. See id. Thus, because we reverse the Examiner’s rejection of independent claim 12, we, likewise, will not sustain the rejection of claim 18. CONCLUSION The Examiner erred in rejecting claims 12-23 under § 103. DECISION The Examiner’s decision rejecting claims 12-23 is reversed. REVERSED gvw