Ex Parte Vaha-Sipila

Patent Trial and Appeal Board

Dec 31, 2012

11007779 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANTTI VAHA-SIPILA
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Appeal 2011-000098
Application 11/007,7791
Technology Center 2400
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 7, 2004, claiming benefit of Finland patent
application No. FI035236 filed December 12, 2003. The real party in
interest is Nokia Corp. (App. Br. 1.)
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Application 11/007,779

2

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-6 and 14-27, which are all the claims
remaining in the application. Claims 7-13 have been canceled. (App. Br. 2.)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal concerns an image display apparatus,
method, and computer readable medium utilizing an image sensor to form
real time image information including an object and a display to display the
object and information relating to the object. (Spec. 1:10-16; 3:14 to 4:9;
Abstract.)2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
11. An apparatus comprising:
an image sensor configured to form real time image
information of the environment of the apparatus, with at least
one object, wherein the image information comprises an image
of the object,
a display configured to display said real time image
information of the environment of the apparatus,
a positioning receiver configured to determine the
position of the apparatus,

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“Br.”) filed
April 29, 2010; and Reply Brief (“Reply Br.”) filed September 28, 2010.
We also refer to the Examiner’s Answer (“Ans.”) mailed July 21, 2010.
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a receiver configured to receive information relating to
said at least one object from said at least one object, which
information comprises at least information about the position of
the object, and
a control block configured to determine the position of
the image of the object from image information intended to be
displayed by the display by using said information relating to
said at least one object and information of the position of the
apparatus; and
provide for displaying at least a part of the information
relating to said at least one object in the image information to
be displayed by the display in association with the image of the
object.
Rejections on Appeal
1. The Examiner rejects claims 22-25 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejects claims 1, 4-6, 14, 17, 18, 21, 22, and 25-
27 under 35 U.S.C. § 102(b) as being anticipated U.S. Pat. Pub.
2001/0006372 A1, published Jul. 5, 2001 (“Lemelson”).
3. The Examiner rejects claims 2, 3, 15, 16, 19, 20, 23, and 24
under 35 U.S.C. § 103(a) as being unpatentable over Lemelson and US
6,282,362 B1, issued Aug. 28, 2001 (“Murphy”).

ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follows:
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1. Does the Examiner err in rejecting Appellant’s claims 22-25 for
including non-statutory subject matter and failing to comply with the
requirements of 35 U.S.C. § 101?
2. Does the Examiner err in finding that Lemelson discloses “a
display configured to display said real time image information of the
environment of the apparatus” within the meaning of Appellant’s claim 1
and commensurate limitations of claims 14, 18, and 22?
3. Does the Examiner err in finding that Lemelson discloses
“wherein said receiver requires permission from said at least one object to be
able to receive said information relating to said at least one object” within
the meaning of Appellant’s claim 26 and 27?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed December 2, 2009, as our own, except as to those findings
that we expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellant’s arguments (App. Br. 8-16), we select
independent claims 1 and 22 and dependent claim 26 as representative of
Appellant’s arguments and groupings with respect to claims 1-6 and 14-27.
37 C.F.R. § 41.37(c)(1)(iv).
The § 101 Rejection - Claim 22
Appellant contends that, in accordance with In re Bilski, the recited
method of claim 22 includes “a clear tie in to an apparatus” and “a clear
transformation of the received image information” (App. Br. 9; see App. Br.
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8-10.) In contrast, the Examiner submits that “[t]he ‘apparatus’ in the claim
is only recited as a passive element for capturing its image and does not
perform any function. The ‘display’ is an apparatus used for displaying an
object, however, it is a machine utilized in post-processing” (Ans. 9) and the
remaining steps can be performed in a person’s mind (Ans. 9-10).
We agree with Appellant that the process (method) of claim 22 meets
Bilski’s “machine or transformation test” and could not solely be performed
within the human mind. The claim recites a number of steps that are tied to
a particular machine – the claim recites a display which displays
information about the object – i.e., a machine that performs the functions of
the steps. Further, the process steps describe transforming data into a
different state – image information is received, processed (e.g., utilizing a
processor) and then displayed. As is well known in the art, image
information must be processed and formatted in order to be displayed on a
display. Thus, we conclude that the method of claim 22 meets Bilski’s
“machine or transformation test” and is not directed to non-statutory subject
matter. See In re Bilski, 545 F.3d 943, 962-63 (Fed. Cir. 2008) (en banc),
aff’d sub nom. Bilski v. Kappos, 130 S.Ct. 3218 (2010).
The § 102 Rejection - Claim 1
Appellant contends that Lemelson does not disclose the features
recited in claim 1. (App. Br. 10-14; Reply Br. 4-6.) Specifically, Appellant
contends that: “In Lemelson et al., the image sensor, or camera, 56 forms an
image, but that image, or ‘image information of the environment of the
apparatus’ is not the same as the information displayed on display 36 in Fig.
3” (App. Br. 11).
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The Examiner sets forth a detailed explanation of the anticipation
rejection in the Examiner’s Answer with respect to each of the claims so
rejected (Ans. 5-7, 10-12) and, in particular, the rejection of claim 1 (Ans. 5-
6, 10-11.) Specifically, the Examiner provides a detailed explanation with
respect to Lemelson and, in particular, that the image displayed by
Lemelson’s display is a “real time” image. (Ans. 10-11.) We adopt these
findings and this reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings that Lemelson discloses 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. 5-7, 10-12.) Our additional analysis
will be limited to the following points of emphasis.
We initially note the argued limitation fails to distinguish the claimed
invention from the prior art either structurally or functionally. Specifically,
the recited feature argued by Appellant – “configured to display said real
time image information of the environment of the apparatus (and also other
“information,” i.e., “image information intended to be displayed by the
display;” and “provide for displaying at least a part of the information
relating to said at least one object in the image information to be displayed
by the display”) (claim 1) – essentially consists of a statement of intended
use or purpose of the recited information, which is merely data –i.e., non-
functional descriptive material. The intended use does not change the
structure of the recited display, nor does it alter the structure of the recited
image sensor and control block and, in this instance, does not further limit
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the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (a statement
of intended use “usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates”). Further, the recited “real time image information of the
environment of the apparatus” and other “information” are all essentially
non-functional descriptive material in that the limitation simply recites “real
time image information,” which is simply data. The information (data)
intended to be displayed constitutes non-functional descriptive material,
which merely recites what the information or data represents (the name or
label for the data). The recited structure and functionality of the claim
elements – a display “display[ing]” the information, as well as an image
sensor “form[ing]” the information (receiving the information) and the
control block “determin[ing]” and “provid[ing]” the information (not
argued)) remain the same regardless of what the data constitutes, how the
data may be named, or the relationship among the data and do not further
limit the claimed invention either functionally or structurally. The
informational content of the data thus represents non-functional descriptive
material, which “does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003),
aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
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method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887-90 (discussing non-functional descriptive material).
Even if we arguendo ascribe some patentable weight to the limitation,
as explained by the Examiner, Lemelson discloses displaying “real time
image information.” (See Ans. 10-11.) Lemelson discloses “[a] camera or
radar/lidar is/are coupled to the signal routing and control circuitry for
providing visual information relating to the combat area.” (Lemelson ¶
[0046].) Lemelson also discloses that “[t]he camera input 56 is used to
provide visual information about the observed combat zone. The radar/lidar
input 54 is also used to provide visual information about the observed
combat zone.” (Lemelson ¶ [0073]; see Figs. 1 and 3.) Additionally,
Lemelson describes “detect[ing] and recognize[ing] objects by video image
means” as shown in “U.S. Pat. No. 5,341,435” (Lemelson ¶ [0012]) to
Corbett, which discusses “a sensor 38 which may be a TV or imaging IR
[(infrared)] or UV [(ultraviolet)] sensor . . . . used to ‘aquire’ the target”
(Corbett, col. 6, ll. 27-29). Corbett further discloses that “[t]he signals from
control computer 50 which are received in video symbology generator 56 are
combined with the received sensor video signals to provide video input
signals to a video combiner 58 which combines these signals . . . and directs
this video to an operator display 60.” (Corbett, col. 6, ll. 51-63; see Figs. 4
and 8.)
Thus, Appellant does not persuade us of error in the Examiner’s
anticipation rejection of representative independent claim 1, independent
claims 14, 18, and 22, which include limitations of commensurate scope, or
dependent claims 4-6, 17, 21, and 25 (dependent thereon) not separately
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argued with particularity. (App. Br. 14-15.) Accordingly, we affirm the
Examiner’s anticipation rejection of claims 1, 4-6, 14, 17, 18, 21, 22, and 25.
The § 102 Rejection of Claims 26 and 27
Appellant contends that Lemelson does not disclose the features
recited in claim 26 – i.e., “wherein said receiver requires permission from
said at least one object to be able to receive said information relating to said
at least one object” (claim 26). (App. Br. 14-15; Reply Br. 6-7.)
Specifically, Appellant contends that “the system of Lemelson et al. allows
for the receiving of information relating to the unfriendly force, even when
the unfriendly force does not wish to share such information with the
warning unit.” (App. Br. 14.)
The Examiner sets forth a detailed explanation of the anticipation
rejection of claims 26 and 27. (Ans. 7, 11-12.) Specifically, the Examiner
explains that Lemelson discloses encrypted communication, which “is
notoriously well known in the art for denying or allowing an end user to
receive intelligible information relating to any subjects” (Ans. 11), and
which the Examiner equates to Appellant’s recited permission. (Ans. 11-
12.) We adopt these findings and this reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings that Lemelson discloses the
disputed features of claim 26. Accordingly, we sustain the Examiner’s
rejection of claims 26 and 27 for the reasons set forth in the Answer, which
we incorporate herein by reference. (Ans. 7, 11-12.) Our additional analysis
will be limited to the following points of emphasis.
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As with claim 1 (supra), the argued limitation – that the “receiver” is
configured such that it “requires permission from said at least one object” in
order to “receive said information relating to said at least one object” (claim
26) – fails to distinguish the claimed invention from the prior art either
structurally or functionally because it consists of a statement of intended use
or purpose of the recited “permission,” which is merely data, i.e., non-
functional descriptive material.
Thus, Appellant does not persuade us of error in the Examiner’s
anticipation rejection of representative claim 26 and claim 27 not separately
argued with particularity. (App. Br. 14-15.) Accordingly, we affirm the
Examiner’s anticipation rejection of claims 26 and 27.
The § 103 Rejection of Claims 2, 3, 15, 16, 19, 20, 23, and 24
Appellant mere contends that Murphy “fails to cure the deficiencies of
Lemelson et al., argued supra.” (App. Br. 15.) We find no “deficiencies” in
Lemelson’s disclosure with respect to representative claim 1 (supra); and do
not deem Appellant’s argument to address the Examiner’s § 103 rejection
with particularity. Accordingly, we affirm the Examiner’s obviousness
rejection of claims 2, 3, 15, 16, 19, 20, 23, and 24 for the reasons discussed
with respect to claim 1 (supra).

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 22-25
under 35 U.S.C. § 101.
Appellant has not shown that the Examiner erred in rejecting claims 1,
4-6, 14, 17, 18, 21, 22, and 25-27 under 35 U.S.C. § 102(b).
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Appellant has not shown that the Examiner erred in rejecting claims 2,
3, 15, 16, 19, 20, 23, and 24 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-6 and 14-27.

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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