MOBILE IMAGING IN SWEDEN AB

Patent Trials and Appeals BoardMar 23, 2021

2021001855 (P.T.A.B. Mar. 23, 2021)

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. 13/856,843 04/04/2013 Sami Niemi 042933/431754 7910 10949 7590 03/23/2021 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP One South at The Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 EXAMINER REICHLE, KARIN M ART UNIT PAPER NUMBER 3992 NOTIFICATION DATE DELIVERY MODE 03/23/2021 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SAMI NIEMI, JOHAN WINDMARK, and ZHENGRONG YAO ___________ Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 Technology Center 3900 ____________ Before ALLEN R. MACDONALD, JOHN A. JEFFERY, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject reissue claims 1–3. We have jurisdiction under 35 U.S.C. § 6(b). A telephonic oral hearing was held on February 22, 2021. The record includes a written transcript of the oral hearing. We AFFIRM. The instant application is a reissue application of US 7,920,161 B2, issued April 5, 2011, based on Application No. 11/634,264, filed on December 6, 2006. CLAIMED SUBJECT MATTER The claims are directed to acquiring at least two digital images via a digital camera, such that the digital images are to be stitched into a panoramic image. (Abstract.) Reissue claim 1, reproduced below, is illustrative of the claimed subject matter, with disputed limitations in italics: 1. A method for forming a combined image from at least two digital images, comprising: capturing a first digital image by a digital camera, wherein a first scenery is imaged; allowing a user to move the digital camera towards a second scenery; detecting non-movement of the digital camera; 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Nokia Technologies Oy. (Appeal Br. 2.) Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 3 automatically capturing the second scenery, where the second scenery is partially overlapping the first scenery, as a second digital image in response to the detection of non- movement; allowing the user to move the digital camera towards a third scenery; detecting non-movement of the digital camera; automatically capturing the third scenery, where the third scenery is partially overlapping the second scenery, as a third digital image in response to the detection of non- movement; and forming a combined image from the at least three digital images. REFERENCES Name Reference Date Ejiri et al. US 2004/0218833 A1 Nov. 4, 2004 Rai et al. US 2006/0050152 A1 Mar. 9, 2006 Walker et al. WO 2005/065283 A2 July 21, 2005 REJECTIONS Claims 1–3 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Claims 1–3 stand rejected under 35 U.S.C. § 103 as being unpatentable over Rai, Ejiri, and Walker. Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 4 OPINION 112(a) Rejection We are persuaded by Appellant’s arguments (Appeal Br. 6) that independent claims 1–3 comply with the enablement requirement under 35 U.S.C. § 112(a). The Examiner concluded that the ’161 patent does not enable a person skilled in the art to make and use the invention commensurate in scope with the claims. (Final Act. 22–24.) In particular, the Examiner determined the following: 1) While each of the claims recites “[a] method for forming a combined image from at least two digital images, comprising:”, this element does not recite performance of the “method” nor “forming” by the digital camera. . . . . 3) Claims 1–3 also each recite “allowing a user to move the digital camera towards a second scenery;”. . . . It is also noted that the movement possible or permitted is specifically “towards a second scenery”. Furthermore, while this element recites that movement is permitted or possible using the camera, movement is not actually claimed. 4) Claims 1 and 3 recite “detecting” “non-movement of the digital camera;” and claims 2 and 3 recite “detecting a stopped movement” “of the digital camera;”. Therefore while detection of when motion originating from the camera has stopped or so insignificant so as avoid motion blur at the time of image capture (claims 1 and 3) or when motion originating from the camera has stopped (claims 2 and 3) is recited, the camera (processor/viewfinder) is not recited as performing such detection. 5) Claims 1 and 3 recite automatically capturing the second scenery, where the second scenery is partially Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 5 overlapping the first scenery, as a second digital image in response to the detection of “non-movement so as to temporally avoid motion blur;” and claims 2 and 3 recite “automatically capturing the second scenery, where the second scenery is partially overlapping the first scenery, as a second digital image in response to the detection of stopped movement so as to temporally avoid motion blur, a “digital camera” (processor) is not even recited. 6) Claims 1–3 also each recite “allowing a user to move the digital camera towards a third scenery;”. The discussion of 3) above applies here to similar language. 7) “detecting non-movement of the digital camera;” (claims l–2) or “detecting a stopped movement or non- movement of the digital camera” (claim 3) . . . . 8) Claims 1 and 2 recite “automatically capturing the third scenery, where the third scenery is partially overlapping the second scenery, as a third digital image in response to the detection of non-movement;” and claim 3 recites “automatically capturing the third scenery, where the third scenery is partially overlapping the second scenery, as a third digital image in response to the detection of stopped movement”. . . . 9) Claims 1–3 recite “forming a combined image from the at least three digital images”. This element does not recite the “digital camera” and/or processor. (Id. (emphases omitted).) We do not agree. The ’161 patent discloses the following: Referring now to FIG. 2, a camera will be described that may be used in capturing a combined image according to the method described above. The camera 40 is specifically suited to be incorporated in a mobile phone, since a mobile phone camera is particularly used for acquiring images in a quick and simple manner. However, the method may be implemented in any kind of digital camera. The camera 40 comprise a viewfinder 42 in which the view of the camera is imaged. The viewfinder 42 forms a part of a display 44 and shows a live Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 6 image of the view of the camera. The display 44 is further arranged to guide the user in capturing combined images. The display 44 may show an animation of how the camera should be moved and the display 44 may also present a schematic representation of the previously recorded image to the present view of the camera. (Col. 9, ll. 36–50.) The camera 40 also comprises a processor unit 50. The processor unit 50 compares the previously recorded image to the present view of the camera and decides whether the camera is directed towards an appropriate view for capturing a subsequent image. The processor unit 50 also processes all captured images in order to stitch the images to a large combined image. The captured images may temporarily be stored in a RAM memory 52 during the image-capturing process and while the images are stitched together. When the combined image has been created it may be stored in a permanent memory 54. (Col. 9, ll. 55–65.) According to another alternative embodiment, the user will further control when images are to be captured. A processor is arranged to detect when a movement of the camera has been stopped. In response to this non-movement, an image will be captured. Thus, there will be no motion blur in the captured image. By stopping movement of the camera at appropriate positions, the user may force the camera to capture images at these positions. The capturing of images is performed automatically as detection of non-movement is made. (Col. 9, ll. 6–13.) While the Examiner concluded that independent claims 1–3 are not enabled, the Examiner has provided insufficient findings of fact, supported by evidence, to support a conclusion that the scope of enablement provided to one skilled in the art is not commensurate with the scope of the claims. Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 7 To the contrary, the detailed descriptions of camera 40, display 44, and processor unit 50 disclosed in column 9, lines 6–13, 36–50, and 55–65 of the ’161 patent are “reasonably correlated” to the scope of independent claims 1–3, and accordingly, one of ordinary skill in the art would be able to practice the claimed invention. In re Fisher, 427 F.2d 833, 839 (CCPA 1970) (“[Section 112(a)] requires that the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.”). Thus, we are persuaded by Appellant’s arguments, as follows: Here, the specification is clear that “a camera will be described [in Fig. 2] that may be used in capturing a combined image according to the method described [in Fig. 1].” That is, the specification at least describes that the camera, which comprises a processor, stitches images together to form a combined image. As such, Patent Owner asserts that the specification provides explicit support for the camera and/or components thereof (e.g., the processor) forming a combined image from the at least three digital images. (Appeal Br. 6 (citations omitted).) Accordingly, we do not sustain the rejection of independent claims 1– 3 under 35 U.S.C. § 112(a) for compliance with the enablement requirement. § 103 Rejection We are unpersuaded by Appellant’s arguments (Appeal Br. 9–21; see also Reply Br. 2–6) that the combination of Rai, Ejiri, and Walker would not have rendered obvious independent claim 1, which includes the limitations “detecting non-movement of the digital camera” and “automatically capturing the third scenery, where the third scenery is partially overlapping Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 8 the second scenery, as a third digital image in response to the detection of non-movement.” The Examiner found the image “stitching” of Rai, in which more than two images are combined to form a panoramic image, corresponds to the limitation “capturing the third scenery, where the third scenery is partially overlapping the second scenery.” (Final Act. 27–28; see also id. at 35–36.) The Examiner further found that camera 300 of Walker, having a motion sensor to detect lack of motion and the ability to automatically acquire images based upon certain conditions, corresponds to the limitation “detecting non-movement of the digital camera” and “automatically capturing the third scenery . . . as a third digital image in response to the detection of non-movement.” (Id. at 31–34.) The Examiner concluded that to stop the manual movement (i.e. “stopped movement” or “non-movement”) of the [Rai] camera as taught by [Ejiri] or [Ejiri] and [Walker] when composition/alignment signaling, e.g. indicator light and/or special alignment color display, indicates best achievable manual composition/alignment of the first image and the live version of the scene to be captured as the second image, so the second image can [sic] captured when the best achievable manual alignment is achieved would have been obvious to one of ordinary skill in the art for better initial aligning of the images captured providing a more effective stitching of a first digital image and the second digital image into a “combined image” for capture as desired in [Rai]. (Ans. 5–6 (emphases omitted); see also Final Act. 34–35.) We agree with the Examiner’s findings and conclusions. Rai relates to “capture and display of digital image data” (¶ 2), in particular, a “composite digital image obtained from stitching [that] is similar to a panoramic image taken using a wide angle lens” (¶ 27). In one Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 9 embodiment, Rai explains that “the present invention can also be used to create a panoramic image by stitching a group of more than two images together.” (¶ 48.) Rai explains that when using a digital camera, “landmark features of the first image residing in the region 105A between the retained portions 103A/103B of the first image are identified” and “landmark features of the live version of the scene 102 currently displayed in the region 105A of the viewfinder 101A are identified.” (¶ 40.) Rai further explains that “identified landmark features of the first image and the live version of the scene 102 from within the region 105A are compared to each other to determine whether alignment exists between corresponding landmark features.” (Id.) Because Rai explains that a panoramic image is created from aligning landmark features from two or more images, Rai teaches the limitations “capturing the third scenery, where the third scenery is partially overlapping the second scenery” and “automatically capturing the third scenery . . . as a third digital image in response to the detection of non- movement.” Walker relates to “a camera [that] determines whether to acquire an image (e.g., automatically), [and] determines whether to store the acquired image.” (Abstract.) Figure 13 of Walker illustrates a flowchart of process 1300 (¶ 301), including “[i]n step 1305, a camera determines whether to acquire an image” (¶ 303). In particular, in step 1305 of Walker, “[v]arious ways of determining to (or whether to) acquire an image, including based on a determination that one or more conditions are satisfied or on one or more sensors.” (Id.) Moreover, Walker explains that “[a] condition may be based on one or more factors” (¶ 313), as follows: Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 10 (ii) a lack of movement of the camera – For example, a lack of movement (e.g., as indicated by a motion sensor) may indicate that the user is aiming the camera and / or composing a shot. In another example, if the lens cap of the camera is off and the camera is not moving, this may be an indication that a user is composing a shot with the camera. In another example, the camera may automatically acquire a plurality of images while a user is composing a shot. (¶ 315.) Because Walker explains that one of several factors for determining automatic image capture is lack of movement of the camera, as indicated by a motion sensor, Walker teaches the limitation “detecting non-movement of the digital camera.” A person of ordinary skill in the art would have recognized that incorporating the automatic image acquisition for the camera of Walker with the digital camera of Rai, in which corresponding landmark features are aligned for “stitching” two or more images, would improve Rai by automatically acquiring images to form a panoramic image. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). This combination of Rai and Walker would result in incorporating the feature of Walker for automatically acquiring images due to lack of movement, into the digital camera of Rai, as landmark features are being aligned, and thus, teaches the limitations “detecting non-movement of the digital camera” and “automatically capturing the third scenery, where the third scenery is partially overlapping the second scenery, as a third digital image in response to the detection of non-movement.” Thus, we agree with Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 11 the Examiner (Ans. 5–6) that modifying Rai to include the automatic image acquisition of Walker would have been obvious. First, Appellant argues that “[w]hile the Action points to ‘reduc[ing] [the] amount of computation required’ as supporting its rationale to combine, such a statement is not a motivation to combine the references, but is instead a quote from the already existing solution provided by Rai 152.” (Appeal Br. 9.) Similarly, Appellant argues that “Rai 152 discloses that the use of retained features from a first image can be used to obtain better overlap between the second image and the first image and, thus, reduce processing requirements.” (Reply Br. 2.) However, the Examiner’s articulated reasoning for combining Rai, Ejiri, and Walker was based upon the improvement of a similar device in the same way as in the prior art. (Ans. 5–6.) In other words, the Examiner’s reference to “reduc[ing] [the] amount of computation required” was not the sole reason for combining Rai, Ejiri, and Walker. Second, Appellant argues that “the Office Action uses ‘interchangeability’ or compatibility without explaining why one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim” and [i]nterchangeability is thus not sufficient to maintain an obviousness rejection.” (Appeal Br. 9.) Again, the Examiner’s articulated reasoning for combining Rai, Ejiri, and Walker was based upon the improvement of a similar device in the same way as in the prior art. (Ans. 5–6.) In other words, the Examiner’s reference to “interchangeability” was not the sole reason for combining the references. Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 12 Third, Appellant argues the following: Rai 152, Ejiri 833, and Walker Digital 283 each disclose fundamentally distinct methods of producing a combined image. Specifically, Rai 152 discloses an efficient image stitching method for a device having limited processing power that relies on the capture of images once “sufficient manual alignment of the first image and the live version of the scene is obtained”. . . . Walker Digital 283 teaches a user to continuously pan and a device that automatically captures images without any requirement of ‘stopped motion’ or ‘non- movement.’ That is, Walker Digital 283, suggests the opposite of the claims – “the camera may automatically acquire a plurality of images as a user pans the camera across a scene.” (Appeal Br. 10 (citations omitted).) Similarly, Appellant argues that “even if it was argued that Rai 152 automatically captures a picture when the alignment between the previous picture and the present picture is sufficient, such an argument would be deficient as Rai 152 would be capturing an image based on alignment and not based on movement.” (Reply Br. 2.) However, the Examiner cited to the “one or more factors” in paragraph 315 of Walker for automatic image acquisition, which is based upon “(ii) a lack of movement of the camera,” rather than “(iii) motion of the camera,” as argued by Appellant. Moreover, the rejection of claim 1 is based on the combination of Rai, Ejiri, and Walker, and Appellant cannot show non- obviousness by attacking references individually. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Fourth, Appellant argues the following: In Walker Digital 283, the camera is configured to automatically acquire a plurality of images as a user pans the camera across a scene and, thus, requires the camera to perform extensive and intensive processing to combine the continuously captured images. As such, both Ejiri 833 and Walker Digital Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 13 283 are akin to the processor intensive method disparaged in paragraph 0032 of Rai 152 that Rai 152 specifically sets out to avoid. (Appeal Br. 10.) Again, the Examiner cited to the “one or more factors” in paragraph 315 of Walker for automatic image acquisition, which is based upon “(ii) a lack of movement of the camera,” rather than “(iii) motion of the camera,” as argued by Appellant. Moreover, Appellant has not provided any additional evidence to support the argument the digital camera of Walker requires “intensive processing.” Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996). Fifth, Appellant argues that “[n]owhere in Rai 152 is it suggested that the indicator light informs or indicates to the user that the movement of the camera should be stopped or that the Rai 152 system detects non-movement” and “nowhere does Rai 152 teach that non-movement or stopped movement is required for an image to be automatically captured.” (Appeal Br. 15.) Similarly, Appellant argues that “[t]he Office Action cannot demonstrate inherency as Rai 152 is silent with regard to ‘non-movement’” and “nothing in Rai 152 suggests one way or another whether detecting ‘non-movement’ is necessary or that ‘alignment should be maintained until such capture so that computation can be reduced to stitch the images together.’” (Id. at 16; see also Reply Br. 5.) However, the Examiner also cited to Walker for teaching the limitations “detecting non-movement of the digital camera” and “automatically capturing the third scenery . . . as a third digital image in response to the detection of non-movement.” (Final Act. 31–34.) Appellant Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 14 has not provided any persuasive arguments or evidence as to why the Examiner’s findings with respect to Walker are in error. Sixth, Appellant argues that “Ejiri 833 consistently fails to disclose or suggest ‘automatically capturing the [second/third] scenery . . . in response to the detection of stopped movement or non-movement of the digital camera’” because “Ejiri 833 requires the user herself to manually detect overlap, manually stop movement, and manually activate the shutter switch.” (Appeal Br. 20 (emphasis omitted); see also Reply Br. 6.) Again, the Examiner also cited to Walker for teaching the limitations “detecting non-movement of the digital camera” and “automatically capturing the third scenery . . . as a third digital image in response to the detection of non- movement.” (Final Act. 31–34.) Last, Appellant argues the following: Walker Digital 283 contrasts “motion of the camera”, which is set off by (iii) above in paragraph 0315, from “a lack of movement of the camera,” which is set off by (ii). Unlike the moving or panning camera of (iii) to capture a panoramic image, (ii) references a stationary camera where a user is composing a single shot. In such examples, the Walker Digital 283 camera may “automatically acquire a plurality of images while a user is composing a shot.” However, such automatic capture is unrelated to motion of the camera or capturing the combined image of the claims. (Appeal Br. 21 (citation omitted); see also Reply Br. 6.) However, Walker explains that acquisition of an image is “based on a determination that one or more conditions are satisfied” (¶ 303) and “[a] condition may be based on one or more factors” (¶ 313), which includes “(ii) a lack of movement of the camera – For example, a lack of movement . . . may indicate that the user is aiming the camera” or “(iii) motion of the camera – For example, the camera Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 15 may automatically acquire a plurality of images as a user pans the camera across a scene” (¶ 315). Therefore, Walker explains that the “(ii) a lack of movement of the camera” factor as an alternative to the “(iii) motion of the camera,” rather than the two factors being mutually exclusive. Thus, we agree with the Examiner that the combination of Rai, Ejiri, and Walker would have rendered obvious independent claim 1, which includes the limitations “detecting non-movement of the digital camera” and “automatically capturing the third scenery, where the third scenery is partially overlapping the second scenery, as a third digital image in response to the detection of non-movement.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103. Independent claims 2 and 3 recite limitations similar to those discussed with respect to independent claim 1. We sustain the rejection of claims 2 and 3 for the same reasons discussed with respect to claim 1. CONCLUSION The Examiner’s decision rejecting claims 1–3 under 35 U.S.C. § 112(a) is reversed. The Examiner’s decision rejecting claims 1–3 under 35 U.S.C. § 103 is affirmed. Appeal 2021-001855 Reissue Application 13/856,843 Patent 7,920,161 16 DECISION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3 112(a) Enablement 1–3 1–3 103 Rai, Ejiri, Walker 1–3 Overall Outcome 1–3 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED