Ex Parte 6624843 et alDownload PDFPatent Trial and Appeal BoardSep 21, 201790012669 (P.T.A.B. Sep. 21, 2017) Copy Citation 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. 90/012,669 09/15/2012 6624843 LEN0001-RE 3700 67050 7590 09/22/2017 KASHA LAW LLC 14532 Dufief Mill Road North Potomac, MD 20878 EXAMINER GE, YUZHEN ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/22/2017 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 LENNON IMAGE TECHNOLOGIES, LLC Appellant ____________ Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B21 Technology Center 3900 ____________ Before BRADLEY W. BAUMEISTER, DAVID M. KOHUT, and SHELDON M. McGEE, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL 1 Issued September 23, 2003, based on Application 09/733,197, filed December 8, 2000. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 2 This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s rejection of original claims 1, 3–6, 14, and 15, proposed amended claim 17, and proposed new claims 21–34, 3650, and 5278 of Patent 6,624,843 B2 (hereinafter “’843 patent”).2 Final Office Action mailed September 19, 2014 (hereinafter “Final Act.”). We have jurisdiction under 35 U.S.C. §§ 6(b) and 306. We affirm-in-part and enter new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE This ex parte reexamination proceeding was initiated by a “REQUEST FOR REEXAMINATION” filed on September 15, 2012, by a Third-Party Requester, (hereinafter “Requester”). The ’843 patent describes an apparatus and a method for capturing images and using the captured image in a retail setting. Independent Claim 1, illustrative of the invention on appeal, reads as follows: 1. An apparatus for manipulating a customer image corresponding to a customer, comprising: a controller; an image capture system, coupled to the controller, that captures the customer image of the customer and provides the customer image to the controller; 2 Claims 8–13, 18, and 20 are not subject to reexamination. Final Act. 4. Claims 2, 7, 16, and 19 are cancelled. App. Br. Claims App’x. i. – iv. Claims 35 and 51 are confirmed. Final Act. 31. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 3 a database, coupled to the controller, for storing the customer image and at least one apparel style image corresponding to a potential purchase item; and an image display system, coupled to the controller, for displaying a composite image comprising the customer image and any one of the at least one apparel style image thereby allowing the customer to assess the potential purchase item without having to try it on. Requester proposed a rejection of claims 1–7, 14–17, and 19 over the following prior art references: Saigo US 6,142,648 Nov. 7, 2000 Rom US 6,307,568 Oct. 23, 2001 The Examiner does not adopt the Requester’s proposed rejections. Rather, the Examiner rejects claims 1, 3–6, 14, 15, 17, 21–34, 36–50, and 52–72, and 7478 as follows: I. Claims 53–58, 61, 63, 65, 66, 68–75, 77, and 78 under 35 U.S.C. § 112, ¶1, as lacking written description. Final Act. 5–10. II. Claims 1, 3–6, 14, 15, 17,3 21, 25–29, 33, 37, 41, 43–45, 50, 58, 59, 61, 64, 74,4 75, and 78 under 35 U.S.C. § 103(a) as obvious 3 Although the rejection heading lists claims 18 and 19, claim 18 is not subject to the reexamination and claim 19 has been canceled by Patent Owner. Reply Br. 2. We therefore treat the Examiner’s listing of claims 18 and 19 in the rejection heading as a harmless error. 4 The rejection of claim 73 under 35 U.S.C. §103(a) was withdrawn. Ans. 35. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 4 over the combination of Blancato,5 and Spackova.6 Final Act. 1121. III. Claims 30, 34, 36, and 52 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Yoda.7 Final Act. 21–23. IV. Claims 32, 49, 60, and 67 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Adolphi.8 Final Act. 23–24. V. Claims 30, 31, 42, 46, 62, 65, 66, and 76 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Blank.9 Final Act. 24–27. VI. Claims 22, 23, 38, and 39 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Kojima.10 Final Act. 27–29. VII. Claims 24 and 40 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Maekawa.11 Final Act. 29. 5 Vito Blancato, US 4,731,743, issued March 15, 1988. 6 Daniela S. Spackova, et al., US 4,539,585, issued September 3, 1985. 7 Kiyoshi Yoda, US 5,515,268, issued May 7, 1996. 8 Earl John Adolphi, et al., US 5,717,454, issued February 10, 1998. 9 Arthur M. Blank, US 5,469,536, issued November 21, 1995. 10 Kazuaki Kojima, et al., US 5,488,429, issued January 30, 1996. 11 Hiroko Maekawa, US 5,255,064, issued October 19, 1993. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 5 VIII. Claims 47 and 48 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Applicant Admitted Prior Art (AAPA).12 Final Act. 30–31. PRINCIPLE OF LAW The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language . . . The content of the drawings may also be considered in determining compliance with the written description requirement. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted). I. The Rejection of Claims 53–58, 61, 63, 65, 66, 68–75, 77 and 78 under 35 U.S.C. § 112, first paragraph. a. Claims 53 and 69 The Examiner finds that Patent Owner’s Specification13 does not provide sufficient written-description support for the limitation “the trigger device detects a full face for at least a predetermined amount of time and activates the image capture system in response to detecting the full face for at least the predetermined amount of time,” as recited in apparatus claim 53, or “detecting a full face for at least a predetermined amount of time; and capturing the customer image in response to detecting the full face for at 12 Jerry W. Lennon, US 6,624,843 B2, issued September 23, 2003. 13 The term “Specification” refers to the ‘843 patent. As such, these terms are used interchangeably. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 6 least the predetermined amount of time,” as recited in method claim 69. Final Act. 5–6. Patent Owner contends that adequate support exists for the disputed limitation because “the ‘843 patent discloses, ‘[u]sing known techniques (e.g. motion detection or pattern recognition), the activation of image capture is preferably performed automatically,” and further “describes the use of pattern recognition to capture a valid image.” App. Br. 43. Additionally, Patent Owner argues that a valid event occurs when a full face is detected for a “minimum of seven to ten seconds.” App. Br. 43 (citing the ‘843 patent). The Examiner responds that the portions of the Specification relied upon by Patent Owner do not “appear to disclose the causal relationship between detecting a full face for a predetermined amount of time and in response, activating the image capturing system.” Ans. 6. Specifically, the Examiner finds that “[t]he ‘minimum of seven to ten seconds’ disclosed is for captur[ing] a valid event, not for ‘detecting a full face.’” Id. We agree with the Examiner. First, the ‘843 patent indicates that the image capture system is activated when the customer enters the controlled environment. ’843 patent col. 6, ll. 2123 (discussing FIG. 4, step 404 “CUSTOMER ENTERS IMAGE CAPTURE AREA”). The system activation occurs before a face is even detected. Id. Second, the ‘843 patent indicates that it usually takes a minimum of seven to ten seconds to detect a full face. See ‘843 patent, col. 6, ll. 4749 (discussing FIG. 4, steps 406 (“OBTAIN CUSTOMER IMAGE(S),” and 408 (“VALID?”)). That is, the ’843 patent explains that image capture system is activated prior to detecting Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 7 the full face for a predetermined amount of time. There is insufficient evidence the ‘843 patent teaches activating the image capture system in response to detecting the full face for a predetermined amount of time, as claimed in both claims 53 and 69. For the reasons indicated above, we sustain the Examiner’s written- description rejection of claims 53 and 69. b. Claims 55, 56, 71, and 72 Neither Patent Owner nor the Examiner address claims 55, 56, 71, or 72, which depend from claims 53 and 69. As such, we sustain the Examiner’s written-description rejection of these claims for the same reasons as indicated above with respect to claims 53 and 69. c. Claims 54 and 70 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation “wherein a full face comprises at least two of the following: eyes, nose, ears and mouths,” as required by claims 54 and 70. Final Act. 6. Specifically, the Examiner finds that the Specification only discloses eyes, a nose, and a mouth, but not ears. Final Act. 6. Patent Owner argues Although the ’843 Patent does not expressly state that the full face comprises ears, one of ordinary skill in the art at the time of the invention would clearly understand the use of “etc.” in [the disclosure] “a valid event occurs when a full face comprising eyes, a nose, mouth, etc.” to include ears and any other part (e.g., cheeks, forehead, chin, etc.) of a person’s face. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 8 App. Br. 43 (citing ’843 Patent col. 6, ll. 43–44). Patent Owner contends, in summary, that there is sufficient written-description support in the Specification. Id. MPEP § 2163 requires that “newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure.” We find that Patent Owner’s description of a “full face” in the Specification does not expressly recite the ears. See ’843 Patent, col. 6, ll. 43–44. Nor does Patent Owner provide persuasive evidence that the recitation of a full face, coupled with the use of the catchall “etc.,” inherently or implicitly denotes ears. For example, a general purpose dictionary defines “face” as “the front part of the head, from the forehead to the chin” (emphasis added). WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE ENGLISH LANGUAGE 508 (1989). Under this definition, ears reasonably could be interpreted as being excluded from the face because the ears are located on the side of the head—not the front part. Regardless of what other facial features beyond the eyes, nose, and mouth, arguable may be deemed to be part of the full face, the catchall “etc.” does not sufficiently demonstrate that the inventor was in possession of the idea of basing facial recognition upon the subjects’ ears. As such, we sustain the Examiner’s rejection of claims 54 and 70. d. Claim 57 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation “activates the image capture system in response to detecting alignment of the customer with the one or more reference points.” Final Act. 6. Specifically, the Examiner finds that Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 9 there is insufficient “support for the causal relationship of detecting the alignment and then in response activating the image captur[e] system.” Ans. 8. Patent Owner first contends that “the Examiner shifted the rejection” in the Advisory Action from what was stated in the Final Action. App. Br. 44. Specifically, Patent Owner argues that the Examiner alleged in the Final Action that the Specification does not disclose the “activation” limitation, but in the Advisory Action, the Examiner alleged the Specification does not disclose the “detecting” limitation. Id. We are not persuaded by this argument. Although the Examiner does not italicize the identical words in both the Final Action and the Advisory Action,14 the Examiner finds, in both actions, that the Specification does not teach the entire limitation indicated above. Final Act. 6; Adv. Act. 6–7. Patent Owner further contends that the Specification discloses “[u]sing known techniques ([such as] motion detection or pattern recognition” to activate the image capture system preferably automatically, and also using an initial reference point to properly align the customer at the same starting point used by the models during capture of the reference images. App. Br. 44 (citing ’843 patent col. 6, ll. 21–24 and 31–35). Patent Owner argues that “[t]he description of the use of automatic image capture in response to detecting a customer aligned with a reference point is clearly disclosed.” Id. We agree with the Examiner. While the Specification does describe reference points, it fails to indicate that the image capture system is activated 14 Advisory Action dated December 2, 2014. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 10 as a result of the customer becoming aligned with the reference points. Instead, the portions of the Specification cited by Patent Owner indicate that the image capture system is activated when the customer enters the controlled environment, regardless of how the customer is aligned. As such, we sustain the Examiner’s rejection of claim 57. e. Claim 58 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation “a personal communication device including the database,” wherein the database contains at least one apparel style image and the customer image. Final Act. 7. Patent Owner contends that this limitation is supported by the Specification’s disclosure “which expressly describes a personal communication device storing the image in the database.” App. Br. 45 (citing ’843 patent col. 10, ll. 13–16). As indicated above, though, the claim limitation requires the personal communication device include a database that stores both the customer image and at least one apparel style image. The passage of the Specification cited by Patent Owner fails to provide evidence of the communication device possessing both images. As such, we sustain the Examiner’s rejection of claim 58. f. Claims 61 and 75 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation in claims 61 and 75, directed to the display of “one or more controls for modifying the apparel style image in the composite image.” Final Act. 7. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 11 Patent Owner contends that the Specification supports this limitation because it describes editing and fine tuning of images, and modification of apparel style images by directly entering requests. App. Br. 45 (citing col. 5, ll. 4–6 and col. 9, ll. 8–11). The Examiner finds, though, that column 5, lines 4–6 “only describe[] lighting effects [that] can be added or modified and . . . does not mention displaying one or more control[s] for modifying the apparel style image” in the composite image. Ans. 10. The Examiner further finds that column 9, lines 8–11 of the ‘843 patent “only describe[ that] the customer can enter [a] request for other apparel styles or colors, not ‘display one or more control[s] for modifying the apparel style image in the composite image,’” as claimed. Id. We agree with Patent Owner. The Specification discloses a touchscreen that can be integral to the image display system. See col. 3, ll. 5053. Based on this disclosure, along with the disclosure cited by Patent Owner that indicates a customer can enter a request for other apparel styles (col. 9, ll. 711), there is sufficient written description to indicate that Patent Owner was in possession of that which is claimed. Therefore, we do not sustain the Examiner’s rejection of claims 61 and 75. g. Claims 63 and 77 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation in claims 63 and 77 directed to the retailer computer providing a commercial entity other than the retailer access to the composite image. Final Act. 8. Patent Owner asserts that Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 12 support can be found for this limitation at column 7, lines 21–24 and column 9, lines 23–25 of the ‘843 patent. App. Br. 45–46. We disagree with Patent Owner. As correctly explained by the Examiner, col. 7, lines 21–24 only discloses that the customer’s image – not the composite image – may be made available to other retailers, and column 9, lines 23–25 only describes the storage of the composite image on removable media and given to the customer – not to another retailer. Ans. 10. We therefore sustain the Examiner’s rejection of claims 63 and 77 under 35 U.S.C. §112, ¶1. h. Claims 42, 65, and 66 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation in claim 65 requiring “capturing the customer image from a data file generated by a retailer computer of a retailer providing the potential purchase item.” Final Act. 8. Patent Owner contends support for this limitation can be found in the ‘843 patent at column 7, lines 29–39, column 6, lines 8–12, and column 9, lines 37–40. App. Br. 46. The Examiner finds that all the portions of the ‘843 patent disclosure identified by Patent Owner are silent as to a data file, much less the full scope of the limitation at issue. Ans. 11–12. After reviewing claim 65 and claim 42, from which claim 65 depends, we cannot reasonably determine the scope of the claims. The Specification uses the term “capture” to mean that the customer’s picture is taken (through the use of a camera or some other similar device) and stored in memory. See col. 1, ll. 5052; col. 3, ll. 1922. Thus, ambiguity in this claim arises because it is unclear how a customer image is “captured” from a data file. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 13 As a result, we find that the limitations “capturing the customer image comprises capturing the customer image from a data file,” as recited in claim 42, and “capturing the customer image from a data file comprises capturing the customer image from a data file generated by a retailer computer of a retailer providing the potential purchase item,” as recited in claim 65, are ambiguous and inconsistent with the Specification. See In re Cohn, 438 F.2d 989, 993 (CCPA 1971); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed Cir. 1986). Claim 66 depends from claim 65 and, thus, contains the same indefinite language. As indicated above, we find no description in the Specification to describe how a customer image is “captured” from a data file. Because we find no such description in the Specification, we find that the ‘843 patent does not convey with reasonable clarity to those skilled in the art that, as of the filing date sought, Patent Owner was in possession of the invention now as claimed. Thus, we sustain the rejection of claim 65 and 66 under 35 U.S.C. §112, ¶1. Additionally, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 42, 65, and 66 under 35 U.S.C. § 112, second paragraph, as indefinite and we newly reject claim 42 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written-description requirement. As explained above, claim 42 is ambiguous and inexplicably inconsistent with the Specification. Further, claim 42 contains limitations not supported by the written description, as originally filed. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 14 i. Claim 68 The Examiner finds that claim 68 recites features similar to those recited in claim 57, but that the Specification does not provide sufficient written-description support for the limitation in claim 68 requiring “detecting alignment of the customer . . . for a predetermined amount of time.” Final Act. 9. Patent Owner contends that the rejection of claim 68, along with claim 57, should be reversed in view of the ‘843 patent’s disclosure. App. Br. 43–44 (citing at cols. 6 and 7). We disagree with Patent Owner. As the Examiner points out (Ans. 13), and as indicated above with respect to claim 57, Patent Owner does not provide sufficient evidence to support a finding that Patent Owner was in possession of that which is claimed. Therefore, we sustain the rejection of claim 68. j. Claim 73 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation requiring “capturing the customer image with a personal communication device.” Final Act. 10. Patent Owner contends that support for this limitation can be found in the ‘843 Patent at column 10, lines 13–16 “which expressly refers to storage of the customer’s captured image.” App. Br. 47. The Examiner responds that the disclosure referenced by Patent Owner “only mentions storing the customer’s image in a personal communication device, not capturing [them].” Ans. 13. We agree with the Examiner. Patent Owner has not identified any disclosure that demonstrates that, at the time of invention, the inventors of Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 15 the ‘843 patent were in possession of image capture with a personal communication device, as claimed in claim 73. As evidenced by claim 14 from which claim 73 depends, the “storing” step is a separate and distinct step from the “capturing” step. We therefore sustain the Examiner’s rejection of claim 73. k. Claim 74 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation requiring “capturing the customer image with a touch screen display.” Final Act. 10. Patent Owner contends that support for this limitation can be found at columns 3, lines 53– 56, col. 6, lines 25–27, and column 7, lines 8–10. App. Br. 47. Specifically, Patent Owner states that the disclosure “expressly describes manually activating image capture, such as through use of a touch screen” (emphasis added). Id. (citing cols. 3 and 6). We are not persuaded by Patent Owner. First, Patent Owner’s argument is directed to a limitation not recited in the claim. Claim 74 requires “capturing the customer image with a touch screen display,” not activating image capture through the use of a touch screen. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”) “Capturing,” therefore, is not the same as “activating.” Furthermore, while the disclosure at column 3, lines 53–56 identifies a touch screen as a possible trigger device, there is no disclosure regarding capture of a customer image with such touch screen, as claimed. Therefore, Patent Owner’s reliance on this disclosure is misplaced. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 16 While the Specification at column 6, lines 25–27 does disclose manual image capture, it does not reference capturing the image with a touch screen display. Further, column 7, lines 8–10 merely indicate that a touch screen display “can be provided as part of the image capture system such that the user is able to approve of the captured image and enter . . . identification information.” (emphasis added). Sufficient disclosure of “capturing the customer image with a touch screen display” has not been identified by Patent Owner. Thus, we sustain the Examiner’s rejection of claim 74. l. Claim 78 The Examiner finds that the Specification does not provide sufficient written-description support for the limitation requiring “the step of detecting comprises detecting one or more customer movements by a retailer providing the potential purchase item.” Final Act. 10. Patent Owner contends that support exists in the ‘843 patent at column 7, lines 29–39 and column 8, lines 48–54. App. Br. 47–48. The Examiner disagrees and states that each of the sections to which Patent Owner refers is “silent on detecting one or more customer movements by a retailer providing the potential purchase item.” Ans. 15. A review of claims 14 and 50, from which claim 78 depends, indicates that the claim chain includes no initial recitation of a detecting step. The failure to provide sufficient antecedent basis for then reciting “the step of detecting,” in claim, 78 renders the claim’s meaning insufficiently clear. It is not reasonably ascertainable what the detecting step, as further defined by claim 78, is supposed to require. See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 17 Thus, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 78 under 35 U.S.C. § 112, second paragraph, for lacking proper antecedent basis in the claim. We decline to address the written description rejection under 35 U.S.C. § 112, first paragraph, because to do so would require engaging in undue speculation. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner and the Board were wrong in relying on what, at best, were speculative assumptions as to the meaning of the claims and in basing a prior-art rejection thereon). II. The Rejection of Claims 1, 3–6, 14, 15, 17, 21, 25–29, 33, 37, 41, 43– 45, 50, 58, 59, 61, 64, 74–75, and 78 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato and Spackova. a. Substantial New Question of Patentability [SNQ] Contentions Patent Owner first argues that “the combination of Blancato and Spackova [does] not [raise] a substantial new question of patentability” [SNQ] because (1) these references were cited in an inter partes review (IPR) proceeding prior to being cited in the present reexamination proceeding, and (2) the Examiner’s rationale was substantially identical to that outlined in the Board’s Decision to Institute trial. App. Br. 6–10. In support of its position that a prior rejection in an IPR precludes such a rejection from constituting a substantial question of patentability in a subsequent reexamination, Patent Owner cites an Order Denying Request for Ex Parte Reexamination in Control No. 90/013,148. Id. at 7–8. In that reexamination the Central Reexamination Unit “determined that references Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 18 cited in an [IPR] are ‘old art’ and cannot raise [an SNQ] in reexamination if relied on in the same way as in the [IPR].” Id. at 7–8. Principles of Law Patent statute 35 U.S.C. § 302 reads, in relevant part, as follows: Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Patent statute 35 U.S.C. § 303(a) reads, in relevant part, as follows: (a) Within three months following the filing of a request for reexamination under the provisions of section 302, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office. Patent statute 35 U.S.C. § 304 reads, in relevant part, as follows: If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 19 MPEP § 2242 further explains what constitutes an SNQ: [An SNQ exists as to a claim] unless the same question of patentability has already been (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent.” An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested Office proceeding which has been concluded and which involved the patent. MPEP 2242(I). Section 2242 further indicates that “a prior art patent . . . raises a [SNQ] where there is a substantial likelihood that a reasonable examiner would consider the prior art patent . . . important in deciding whether or not the claim is patentable” and, if so, “the examiner should find ‘a [SNQ] unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court or by the Office in an earlier concluded examination or review of the patent.” MPEP 2242(I)(b) (emphasis added). Analysis Patent Owner does not persuade us that a substantial new question of patentability fails to exist in this case. Although each inter partes review Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 20 (IPR) of US Patent No. 6,624,843 (IPR2013-00432 and IPR2014-00593) contained the same Blancato and Spackova references cited against Patent Owner, there was no “final holding of invalidity” based on these references by the Board in either IPR. Rather, the Board determined that each Petitioner demonstrated a “reasonable likelihood [it] would prevail in showing the unpatentability” of certain claims of the ‘843 patent.15,16 However, before a final holding of invalidity could be reached by the Board in either proceeding, the Board granted the respective Joint Motions to Terminate under 35 U.S.C. §317.17,18 The Decision to Institute Inter Partes Review in IPR2013-00432 did not constitute a final holding of invalidity. Likewise, terminating the proceedings did not include any final holding of invalidity.19 As such, a substantial new question of patentability still exists. See MPEP 2242. Restated, it is irrelevant whether the basis of the present reexamination rejection is identical to the basis of the rejection outlined in the Decision to Institute Inter Partes Review in IPR2013-00432, and, as such, Patent Owner’s reliance on In re Recreative Technologies Corp., 83 F.3d 1394 (Fed. Cir. 1996) (App. Br. 9) is misplaced. Patent Owner 15 Lumondi Inc. v. Lennon Image Technologies, LLC, IPR2013-00432 Decision to Institute, Paper 9, Jan. 14, 2014. 16 Luxottica Retail North America Inc. v. Lennon Image Technologies, LLC, IPR2014-00593 Decision to Institute, Paper 11, Oct. 10, 2014. 17 Lumondi Inc. v. Lennon Image Technologies, LLC, IPR2013-00432 Judgment Termination of Proceeding, Paper 19, March 21, 2014. 18 Luxottica Retail North America Inc. v. Lennon Image Technologies, LLC, IPR2014-00593 Judgment Termination of Proceeding, Paper 21, Jan. 12, 2015. 19 See footnote 16. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 21 suggests Recreative Technologies supports their proposition that reexamination either should have been denied or dismissed because “no new grounds of rejection were raised.” Id. But in Recreative Technologies, the Federal Circuit held that “[a] second examination, on the identical ground that had been previously raised and overcome, is barred.” (emphasis added) Recreative Technologies, 83 F.3d at 1396. In the instant case, and as indicated above, no final holding of invalidity issued for the allegedly identical ground that was previously raised in two terminated IPRs, but was not overcome. We also are unpersuaded by Patent Owner’s argument that “[t]he Central Reexamination Unit has previously considered this precise issue and determined that references cited in an inter partes review are ‘old art’ and cannot raise a substantial new question of patentability in reexamination if relied on in the same way as in the inter partes review.” App. Br. 7–8 (citing Order Denying Request for Ex Parte Reexamination, Control No. 90/013,148, pp. 4–7 (mailed Mar. 21, 2014)). The Central Reexamination Unit reached that decision prior to the Office revising the MPEP in July 2015. More specifically, the revision to MPEP 2242, reproduced above, expressly sets forth that questions of patentability arising in an inter partes review are still treated as new questions in a reexamination proceeding unless “the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court or by the Office in an earlier concluded examination or review of the patent.” MPEP 2242(I)(b) (emphasis added). Additionally, the SNQ requirement was set forth by Congress to prevent “patentees from having to respond to, or participate in unjustified Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 22 reexaminations . . . to bar reconsideration of any argument already decided by the Office.” In re Recreative Techs. Corp., 83 F.3d 1394, 1397 (Fed. Cir. 1996). As indicated above, though, that concern currently does not exist because the Office has not already decided the present arguments. Thus, for the reasons indicated above, we agree with the Examiner that a substantial new question of patentability exists in the present case. b. Claims 1, 4, and 33 Claim 1 recites “a database, coupled to the controller, for storing the customer image and at least one apparel style image corresponding to a potential purchase item.” The Examiner finds, inter alia, that Blancato’s internal disk drive 34 or the external disk drive 36 equates to the claimed database. Final Act. 13; Ans. 20. Specifically, the Examiner finds that Blancato’s disk drives store the “captured customer images or hairstyle images and information correlating customer images to particular customers” in them. Ans. 19. Patent Owner argues that the disk drives referred to by the Examiner are merely memory and not databases, which requires the stored data to be organized. App. Br. 12; see also Reply Br. 6. We are not persuaded by Patent Owner’s argument. During reexamination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)); see also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“During reexamination, as with Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 23 original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the Specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”). Here, the Specification lacks a specific lexicographical definition for the term “database.” Instead, the Specification indicates that databases store “images captured by the image capture system.” See Lennon, col. 3, ll. 25– 27. Additionally, a technical dictionary defines the term “database” as “[o]ne or more collections of data, generally stored on magnetic tapes or disks in a form suitable for computer processing.” Database, McGraw-Hill Electronics Dictionary (6th ed. 1997). Because the disk drives in Blancato meet this definition and are consistent with the Specification, we sustain the Examiner’s rejection of claim 1. We likewise sustain the rejection of claims 4 and 33, which depend upon claim 1 and are not argued separately with particularity. c. Claim 3 Claim 3 recites “the image capture system comprises a digital camera.” The Examiner finds that Spackova’s video camera 13 or 76 is a digital camera for two reasons. Final Act. 15; Ans. 2223. First, because Spackova’s camera 13 contains a binary digit frame identification generator that records on each frame, binary digital frame members in the form of a row of dots. Final Act. 15. The Examiner finds that Patent Owner’s Specification supports this finding because the Examiner interprets the Specification’s description of the term “digital camera” as a system that provides a digital signal output “in the forms of rows of dots or pixels.” Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 24 Ans. 22. Second, because there is no analog-to-digital conversion between the video camera and the digital image processor. Final Act. 15; Ans. 2223. We disagree with the Examiner. First, Patent Owner’s Specification cannot be reasonably interpreted as including any camera that has some form of digital output, but rather should be interpreted as a camera that can be used to record “digital images to the memory of a computer.” See Spec., col. 4, ll. 47–49. Therefore, we agree with Patent Owner (App. Br. 14; Reply Br. 810) that the Examiner’s finding of a binary digit frame identification generator does not make Spackova’s camera digital. Additionally, we disagree with the Examiner that just because an analog-to- digital conversion is not shown in Spackova, it would follow that one necessarily does not exist. However, while we agree with Patent Owner that the Examiner has failed to show that Spackova, in particular, teaches a digital camera, digital cameras were well-known in the art at the time of the invention. For instance, Friedman (US 5,499,294, filed May 24, 1995) discusses the use of digital cameras and the difficulty in authenticating an image taken using a digital camera as early as 1995. See Friedman, col. 1, ll. 1530. The addition of Friedman’s digital camera with the teachings of Blancato and Spackova is merely a simple substitution of known elements according to known methods that yields predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 25 As our analysis deviates from the Examiner’s, we designate our analysis to be a new ground of rejection of claim 3 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Friedman. d. Claim 5 Claim 5 recites “the controller provides the customer image and . . . one apparel style image to the image display system, and . . . the image display system generates the composite image.” The Examiner finds that both Blancato and Spackova, individually, teach this limitation. Final Act. 16; Ans. 24. Specifically, the Examiner finds that Blancato’s CPU 30 and display 32, as well as Spackova’s processor 79/computer 20 and display 19 or 91, are functionally equivalent to the claimed controller and image display system. Final Act. 16; Ans. 24. However, the claim specifically requires that the composite image is generated by the image display system. In addition, Patent Owner’s Specification makes clear that there are two alternatives: (1) where the controller generates the composite image; and (2) where the image display system generates the composite image. ’843 Spec. col 9, ll 1220. Thus, we agree with the Patent Owner’s argument (App. Br. 15–16) that neither of the references cited by the Examiner teaches the controller generating the composite image. As such, we do not sustain the obviousness rejection of claim 5. e. Claim 6 Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 26 Claim 6 recites “a trigger device . . . that detects the presence of the customer, and, in response, causes the composite image to be displayed by the image display system.” The Examiner finds that the movement or depression of a key on Blancato’s input device 40, which includes a mouse or a keyboard, detects the presence of the user and, as a result of the input device’s movement, the system generates and displays the corresponding composite image. Ans. 25. Patent Owner argues that nowhere in Blancato does it disclose or suggest that the presence of a customer is detected when the input device is moved. App. Br. 17; Reply Br. 11. Patent Owner additionally contends that, even if it did, Blancato does not teach that the composite image is displayed as a result of the movement. App. Br. 17; Reply Br. 11. We disagree with Patent Owner. The relevant question is whether the person being photographed would be able and/or capable of operating an input device (mouse or keyboard) to generate a composite image. As indicated by the Examiner (Ans. 25), Blancato teaches a system that uses a mouse and/or keyboard as input devices, i.e., trigger devices. Input from one of these devices indicates a customer is present. Additionally, the Examiner finds that through the use of one of these devices, the system generates a composite image. Ans. 25. We agree with the Examiner’s finding because opening the MacPaint program, which creates the composite image, would require input from one of the devices. Furthermore, a customer being photographed would be capable of operating the mouse or keyboard. As such, Blancato’s mouse and keyboard constitute trigger devices that would detect the presence of a Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 27 customer being photographed to generate a composite image, at least in those situations where the customer operates the mouse or keyboard. For the reasons indicated above, we sustain the Examiner’s rejection of claim 6. f. Claims 14, 15, and 50 Claim 14 recites “retrieving the customer image in response to a request for the composite image.” The Examiner finds that Blancato teaches using MacPaint to retrieve the stored image (customer image). Final Act. 16. Patent Owner argues that MacVision is used to obtain the image and, then, when MacPaint is opened the image is displayed. App. Br. 18; Reply Br. 12. Patent Owner contends that Blancato never mentions, though, how the image is retrieved, only that it is displayed. App. Br. 18; Reply Br. 12. Patent Owner additionally argues that “the Examiner fails to provide any indication or suggestion that Blancato discusses retrieving the customer image ‘in response to a request for the composite image.’” App. Br. 18. We do not find Patent Owner’s arguments persuasive. Claim 14 does not recite who or what retrieves the image. Patent Owner also does not allege whether there is a difference between the terms “retrieving” and “obtaining.” As such, we agree with the Examiner (Final Act. 16; Ans. 26) that when MacPaint is opened, Blancato teaches that the program obtains the image. Additionally, the reason MacPaint is opened in this scenario is to obtain a composite image. As a result, the opening of MacPaint is a request for the composite image and, as indicated above, the image is obtained in response to that request. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 28 Therefore, for the reasons stated above, we sustain the Examiner’s rejection of claim 14 and claims 15 and 50 that were not argued separately. g. Claim 17 Claim 17 recites “detecting [the] presence of a person near a display; and displaying the composite image in response to the step of detecting.” Claim 17 is similar to apparatus claim 6 except that claim 17 requires the person be detected “near a display.” Patent Owner argues that the subject 10 in Figure 1 of Blancato has no control over the computer system. App. Br. 19. Therefore, Patent Owner contends that Blancato does not teach the person is detected near the display. Id. Patent Owner further argues that Blancato does not mention anything about the composite image being displayed in response to the detecting step. App. Br. 19. Figure 1 of Blancato shows an input device, a display, a camera, and a user. While Blancato does not explicitly state that these devices are located near each other, it would have been obvious to one of ordinary skill in the art to have located both the camera and the display within a store (i.e., such that person’s presence will be detected “near” the display) so that the shopper can look at the composite picture while still at the store and shopping for clothes to improve the likelihood of the composite photograph inducing a sale. It further would have been obvious to one of ordinary skill in the art to have positioned the camera relative to the display such that the customer would be enabled to operate the image capture and manipulation system him/herself. Enabling self-service operation would have provided the Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 29 known benefit of enhancing customer control of the browsing process. Self- service operation also would have provided the known benefit of freeing up sales personnel from operating the system, thereby allowing the sales personnel to assist other customers or perform other employment duties. Based upon these findings and the findings with regard to claim 6 discussed above, we sustain the Examiner’s rejection of claim 17. h. Claims 21 and 37 Claim 21 recites “a trigger device . . . that detects a presence of the customer and activates the image capture system in response to detecting [the] presence of the customer.” Claim 37 recites a similar limitation, and Patent Owner argues claim 37 should be allowable for the same reasons as claim 21. App. Br. 21. The Examiner finds that Blancato teaches this limitation. Final Act. 17; Ans. 28. Specifically, the Examiner finds that Blancato teaches using one of the input devices to select the MacVision program, which ultimately causes the picture acquisition to occur. Final Act. 17; Ans. 28. Patent Owner argues that the Examiner’s finding is incorrect because Figure 1 and the portion of Blancato cited by the Examiner shows the subject in a chair remote from the computer system, indicating the user does not operate the system his/herself. App. Br. 20. In addition, Patent Owner contends that Blancato never mentions that the user can operate the system his/herself. App. Br. 20. We do not find Patent Owner’s arguments persuasive for the same reasons as discussed above with respect to claim 6. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 30 Thus, for the reasons stated above, we sustain the Examiner’s rejection of claims 21 and 37. i. Claims 25, 26, and 41 Claim 25 recites “the image capture system captures the customer image in response to receipt of a customer instruction via an input device.” Patent Owner groups claims 25, 26, and 41 together. App. Br. 22. Patent Owner’s arguments with respect to claim 25 are the same as those with respect to claim 21. App. Br. 21–22. Therefore, for the same reasons indicated above with respect to claim 21, we sustain the Examiner’s rejection of claims 25, 26, and 41. j. Claims 59 and 74 Claim 59 recites “wherein the input device comprises a touch screen display.” The Examiner finds that touch screens were well-known within the art at the time of the invention. Final Act. 19. Thus, the Examiner finds that it would have been obvious to add a touch screen to Blancato and Spackova in order to provide an easier and more intuitive way of providing an input. Final Act. 19. Patent Owner argues that the Examiner has failed to provide any evidence that touch screens were well-known at the time of the invention. App. Br. 25. However, the Examiner cites to the Day, Jr. patent20 that indicates that touch screen panels were well-known. Ans. 33. Patent Owner does not dispute this finding. Nor does Patent Owner provide sufficient 20 U.S. Patent Number 4,763,356, filed in 1986 and granted in 1988. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 31 evidence that one of ordinary skill in the art would not have made this combination. As such, we sustain the Examiner’s rejection of claim 59, as well as claim 74, which contains a similar limitation and is not separately argued. k. Claims 27 and 43 Claim 27 recites “wherein the database stores meta information for an apparel style image including at least one of description, size, style, and color.” The Examiner finds that Spackova’s graphic specifications, which are used to generate an apparel image, include description, size, style, and/or color information. Final Act. 17–18; Ans. 30. Patent Owner argues that Spackova’s graphic specifications merely indicate the location where the graphic item is placed on the subject, but does not teach the meta information, as required by the claim. App. Br. 22. We do not find Patent Owner’s arguments to be persuasive. As the Examiner has correctly stated in the Answer (Ans. 30), Spackova teaches a system that provides instructions on how to rotate a graphic image to be displayed properly. We agree with the Examiner that this constitutes a description of the apparel style image. For the reasons indicated above, we sustain the Examiner’s rejection of claim 27, as well as claim 43, which contains similar limitations and is not argued separately. l. Claims 28 and 44 Claim 28 recites “wherein the image capture system repeatedly captures images until the controller determines that a valid image has been Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 32 obtained for use with a composite image.” Claim 44 recites similar limitations. Patent Owner argues that the Examiner’s finding that Spackova teaches a validity check is in error because the image is only re-imaged. App. Br. 2223. We agree with Patent Owner. The Examiner has not shown where in Spackova, the system indicates that a valid image has been captured. While the Examiner finds that Spackova teaches re-imaging (Final Act. 18; Ans. 31), we do not agree with the Examiner (Final Act. 18; Ans. 31) that Spackova teaches or even suggests that if the image is not re-imaged, that a validity check is occurring. Instead, we find this is only an indication that the customer has stopped moving. For all the reasons indicated above, we do not sustain the Examiner’s rejection of claims 28 or 44. m. Claims 29 and 45 Claim 29 recites “wherein the image capture system receives an instruction indicating the customer’s approval of the customer image.” Claim 45 recites a similar limitation. Patent Owner argues the Examiner’s finding that Blancato teaches that a customer approves the image is incorrect. App. Br. 23–24. Patent Owner contends that the image is merely frozen in Blancato, not approved. App. Br. 24. We agree with Patent Owner that clicking the mouse button in the MacVision program does not indicate that the customer approves the image. However, when the user opens the MacPaint program, thereby requesting the composite image, we find that the user effectively is approving the customer image. See Ans. 26. The request would not have been made if the Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 33 user did not approve the image. Therefore, Patent Owner’s arguments with regard to Blancato are not persuasive. Because our discussion above adds new reasoning to the Examiner’s original rejection, we designate as new grounds of rejection, the rejection of claims 29 and 45 under 35 U.S.C. § 103 as obvious over the combination of Blancato and Spackova. n. Claim 58 Claim 58 recites “a personal communication device including the database.” The Examiner finds that at the time of the invention personal communication devices were well-known in the art. Final Act. 19; Ans. 32– 33. As a result, the Examiner concludes that it would have been obvious to store images to a memory located on a personal communication device because doing so would have “provide[d] the convenience of making the images portable and easily accessible.” Final Act. 19; Ans. 3233. Patent Owner argues in the principle Brief that the Examiner’s finding lacks sufficient evidence and that the Examiner’s conclusion is based on impermissible hindsight. App. Br. 24–25. In response, the Examiner cites Himmel (US 6,622,015 B1, filed January 29, 1999), reasoning that “it was well known at the time of the invention . . . to use [a] personal communication device to store data.” Ans. 32–33. Patent Owner responds that the Examiner has improperly added the Himmel reference to the rejection without making a new ground of rejection. Reply Br. 13. However, we understand the Examiner to be citing Himmel solely to provide evidence in support of the Official Notice taken in the Final Action. See MPEP 2144.03 Reliance on Common Knowledge in the Art or Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 34 “Well Known” Prior Art. Whether Himmel’s citation complied with Office procedure for supporting the taking of Official Notice and whether additional reliance on Himmel constitutes a new ground of rejection are both petitionable matters, as opposed to appealable matters. We decline, then, to address those questions. Patent Owner also contends that Himmel is not valid prior art because Patent Owner has provided evidence that the inventor conceived the invention before October 28, 1998—prior to Himmel’s filing date of January 29, 1999. Reply Br. 13 (citing the Declaration of Jerry W. Lennon, dated February 11, 2013). This argument also is unpersuasive. Even though the Lennon Declaration claims conception of the invention occurred prior to Himmel’s effective date (Lennon Decl. ¶ 12), the Declaration only references the invention generally. The Declaration does not mention, much less corroborate, invention of the specific subject matter recited in claim 58. In fact, the Lennon Declaration was signed approximately 19 months before the subject matter of claim 58 was added. See Patent Owner’s Response, filed Sept. 3, 2014 (adding new claim 58 by amendment). Based on the evidence before us, then, Himmel constitutes valid prior art. Himmel was filed prior to the present patent’s filing date, and Patent Owner has provided insufficient corroborated evidence to demonstrate conception of at least that specific subject matter disclosed in claim 58—as opposed to various aspects of the invention generally— occurred prior to Himmel’s filing date. Additionally, Patent Owner’s contentions regarding impermissible hindsight also are not persuasive because they amount to attorney argument without supporting evidence or explanation. See In re Pearson, 494 F.2d Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 35 1399, 1405 (CCPA 1974) (stating that attorney’s arguments cannot take the place of evidence). Thus, for the reasons indicated above, we sustain the Examiner’s rejection of claim 58. o. Claims 61 and 75 Claim 61 recites “wherein the image display system displays one or more controls for modifying the apparel style image in the composite image.” The Examiner finds that the controls of the MacPaint program indicated in Blancato are used to modify the image. Final Act. 20; Ans. 34. Patent Owner argues that Blancato does not discuss modifying an apparel style image. App. Br. 25–26. We do not find Patent Owner’s arguments persuasive. The controls taught in Blancato are used to modify an image shown in the display screen, wherein the image includes both the customer image and the item that is placed onto the customer image. Ans. 34; see also Blancato, col. 5, ll. 4952. Thus, we agree with the Examiner that because the tools taught by Blancato are used to manipulate both images, the tools of the combined prior art also are capable of manipulating the apparel style image in the composite image. For the reasons indicated above, we sustain the Examiner’s rejection of claim 61 and claim 75 that contains similar limitations and is not argued separately. p. Claim 64 Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 36 Claim 64 recites “wherein the image capture system is an image capture system of a retailer providing the potential purchase item.” The Examiner finds that Blancato teaches that a barbershop or beauty shop could use Blancato’s system, wherein the purchase item would be hairstyles. Final Act. 20; Ans. 34–35. In addition, the Examiner finds that Spackova teaches other purchase items include apparel or eyeglasses. Ans. 35. Based on the combined teachings of the references, the Examiner concludes that a retailer would use the system. Id. Patent Owner argues that the “of a retailer” limitation is not met by the combination. App. Br. 26. However, Patent Owner has not provided any legal support for the proposition that the characterization of the system owner’s business—retail or otherwise— patently distinguishes over prior art that discloses the claimed apparatus, itself. Thus, we sustain the Examiner’s rejection of claim 64. III. The Rejection of Claims 30, 34, 36, and 52 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Yoda. a. Claims 30, 36, and 52 Patent Owner makes the same arguments with respect to claims 30, 36, and 52 as with claims 1 and 14. App. Br. 27. As such, we sustain the Examiner’s rejection of these claims for the same reasons indicated above with respect to claims 1 and 14. b. Claim 34 Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 37 Claim 34 recites “wherein the image capture system and the image display system are coupled to the controller via a network.” The Examiner finds that Blancato and Spackova teach everything except for a network connection. Final Act. 22; Ans. 36. However, the Examiner finds that Yoda teaches a communications network that connects an image capture system, image display system, and a controller together. Final Act. 22; Ans. 36. Patent Owner argues that Yoda only teaches connecting a local computer system to a remote computer system and fails to teach how the different elements of the claim are connected together. App. Br. 2728. We agree with the Examiner that Yoda’s teachings would have rendered it obvious to have connected different devices to one another through a network. As such, it would have been obvious to connect an image capture system, image display system, and a controller together in order “to enable remote access and data sharing or processing across different computers and to provide flexibility,” as suggested by the Examiner. Final Act. 22. Patent Owner’s argument constitutes an attack on the references individually, rather than a challenge to the Examiner’s combination of the teachings of Blancato, Spackova, and Yoda. In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references). For the reasons indicated above, then, we sustain the Examiner’s rejection of claim 34. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 38 IV. The Rejection of Claims 32, 49, 60, and 67 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Adolphi. a. Claim 32 Claim 32 recites “wherein the composite image is stored in memory with customer identification information.” The Examiner finds that Adolphi teaches this limitation. Final Act. 23; Ans. 3840. Patent Owner argues that Adolphi’s image is not a composite image and that the designations used do not identify the customer, but rather the pose. App. Br. 29. However, again, Patent Owner is presenting arguments against the Adolphi reference individually when the rejection is based on a combination of the references. In re Merck & Co., 800 F.2d 1091; In re Keller, 642 F.2d 413. Specifically, the Examiner finds that Blancato and Spackova teach the composite image and that Adolphi teaches identifying information stored with the image. Final Act. 23; Ans. 3840. We agree with the Examiner (Final Act. 23; Ans. 3840): that Patent Owner’s arguments regarding the image type in Adolphi (App. Br. 29) are unpersuasive because both Blancato and Spackova teach composite images. Additionally, we agree with the Examiner (Final Act. 23; Ans. 3840) that Adolphi’s teaching of storing an image with specific designation information easily could have been applied to an image of any type, including a composite image. As such, we sustain the Examiner’s rejection of claim 32. b. Claim 49 Claim 49 is similar in scope to claim 32. However, instead of storing the composite image with customer identification information, claim 49 Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 39 requires the customer image to be stored with customer identification information. Patent Owner makes substantially the same arguments with respect to claim 49 as with claim 32. For the reasons indicated above, we do not find Patent Owner’s arguments persuasive. Patent Owner additionally argues that there is no motivation to combine Blancato and Spackova with Adolphi. App. Br. 31. Specifically, Patent Owner contends the Examiner’s motivation is vague (App. Br. 31), Adolphi is directed to a different purpose than Blancato or Spackova (App. Br. 31), and Adolphi is nonanalogous art (App. Br. 32). We disagree with Patent Owner. First, the Examiner concludes that it would have been obvious to combine the references “so that composite images can be correctly and easily retrieved later.” Final Act. 24; Ans. 40. While Patent Owner argues that the Examiner’s indicated motivation is “general and vague” (App. Br. 31), we see no reason why the Examiner’s motivation would not have been a valid for this particular combination. Patent Owner’s argument that the motivation listed is desired in every computing system (App. Br. 31) does not indicate why the Examiner’s motivation is incorrect, and only supports the Examiner’s conclusion that it would have been obvious to combine the references. Second, we do not agree with Patent Owner (App. Br. 31) that Adolphi is directed to a different purpose than the other two references. Adolphi, as with Blancato and Spackova, all deal with photography and the storage of images. While the type of images is different, that is of no consequence as one of ordinary skill in the art looking to store images would Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 40 have looked to Adolphi’s teaching of storing those images with particular customer identifying information. Ans. 39. Third, we disagree with Patent Owner that Adolphi is nonanalogous art. Patent Owner argues that Adolphi is not from the same field of endeavor as the claimed invention because Adolphi only takes photos of a subject posing for a portrait. App. Br. 32. As indicated above, though, Adolphi deals with photography and the storage of an image. Ans. 39. This is the same field of endeavor as the claimed invention. Patent Owner’s additional argument that Adolphi’s portrait posing system is not pertinent to the problem faced by the inventor (App. Br. 32) is also unpersuasive. The problem faced by the inventor is how to store images that can be easily retrieved. Adolphi’s teaching of storing those images with particular customer identifying information (Ans. 23) is a valid solution to that problem. Thus, we find that Adolphi is analogous art. For all of the reasons indicated above, we sustain the Examiner’s rejection of claim 49. c. Claims 60 and 67 Patent Owner does not argue the Examiner’s rejection of claims 60 and 67 in the Appeal Brief or Rely Brief. Claim 60 depends from claim 1 and claim 67 depends from claim 49. Thus, we sustain the Examiner’s rejection of claims 60 and 67 for the same reasons indicated above with respect to claims 1 and 49. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 41 V. The Rejection of Claims 30, 31, 42, 46, 62, 65, 66, and 76 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Blank. a. Claims 30, 31, 46, 62, and 76 Patent Owner argues that claims 30, 31, 46, 62, and 76 are allowable for the same reasons indicated with respect to independent claims 1 and 14. App. Br. 33. Additionally, Patent Owner argues that (1) there is no motivation to combine Blancato, Spackova, and Blank and (2) Blank is nonanalogous art. App. Br. 33. We disagree with Patent Owner. First, the Examiner concludes that it would have been obvious to combine the references “to provide flexibility of an apparatus by enabling sending and/or receiving of data or images for sharing or storage.” Ans. 41. Patent Owner’s argument that the references have nothing to do with each other (App. Br. 33) does not indicate why the Examiner’s motivation is incorrect. We find that the Examiner’s motivation is reasonable. Second, we disagree with Patent Owner that Blank is nonanalogous art. Patent Owner argues that Blank is not from the same field of endeavor as the claimed invention because Blank’s system blends images together and is not directed to generating a composite image to assist in a potential purchase. App. Br. 34. The Examiner is using Blank, though, to show that it was well-known in the art at the time of the invention to use a network with an image modification system. Final Act. 24. We agree with the Examiner (Ans. 41) that blending images together, as taught by Blank and creating a composite image, as required by the claims, are both image modification systems. Therefore, Blank is from the same field of endeavor as the claimed invention. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 42 Finally, Patent Owner argues that Blank’s portrait posing system is not pertinent to the problem faced by the inventor. App. Br. 32. This argument also is unpersuasive because the problem faced by Inventor is how to easily share images. Blank’s teaching of using a network (Final Act. 24) is a very valid solution that the problem. Thus, we find that Blank is analogous art. For all of the reasons indicated above, we sustain the Examiner’s rejection of claims 30, 31, 46, 62, and 76. b. Claims 42, 65, and 66 Because we find above that claims 42, 65, 66, and 78 are indefinite (see supra.), the prior art rejections must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Accordingly, we do not sustain any of the Examiner’s rejections under 35 U.S.C. § 103 of these claims. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and our decision does not reflect on the adequacy of the prior-art evidence applied in support of the rejection. VI. The Rejection of Claims 22, 23, 38, and 39 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Kojima. Claims 22 and 23 recite “wherein the trigger device detects the presence of the customer[:]” “by identifying one or more facial features” (claim 22) and Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 43 “based on a proximity of the customer with respect to the image display system” (claim 23). Claims 38 and 39 respectively recite the first and second limitations. Patent Owner argues that while Kojima teaches detecting a flesh-tone area and a human face in a video signal, Kojima does not teach detecting facial features or a proximity of a customer to a display system. App. Br. 35–37. We agree with Patent Owner for the reasons indicated. We further find that the Examiner’s rejection cannot be sustained because of our findings above with respect to the trigger device. That is, the trigger device has only been shown to correspond to the prior art’s mouse and/or keyboard, but the Examiner has failed to show how these devices are being used to detect facial features or proximity of the customer, as required by the claims. Thus, for all these reasons, we cannot sustain the Examiner’s rejection of claims 22, 23, 38, and 39. VII. The Rejection of Claims 24 and 40 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Maekawa. Claim 24 recites “wherein the image capture system captures the customer image after a predetermined amount of time.” Claim 40 recites a similar limitation. Patent Owner argues that Maekawa teaches comparing a reference signal and an image signal after a predetermined amount of time, not capturing a customer image after a predetermined amount of time, as claimed. App. Br. 39. We agree with Patent Owner. The Examiner has failed to show where in Maekawa an image is captured after a predetermined amount of time. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 44 Comparing and capturing are distinct concepts, and the Examiner has not shown why the concepts could be considered the same. Thus, we cannot sustain the Examiner’s rejection of claims 24 and 40. VIII. The Rejection of Claims 47 and 48 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Applicant Admitted Prior Art (AAPA). Patent Owner does not argue the Examiner’s rejection of claims 47 and 48 in either the Appeal Brief or Reply Brief. These claims depend from claim 14. Thus, we sustain the Examiner’s rejection of claims 47 and 48 for the same reasons indicated above with respect to claim 14. CONCLUSIONS We affirm the Examiner’s rejection of claims 53–58, 63, 65, 66, 68– 74, and 77 under 35 U.S.C. § 112, ¶ 1, as lacking written description. We reverse the Examiner’s rejection of claims 61 and 75 under 35 U.S.C. § 112, ¶1, as lacking written description. We newly reject claim 42 under 35 U.S.C. § 112, ¶1, as lacking written description. We newly reject claims 42, 65, 66, and 78 under 35 U.S.C. § 112, ¶2. We decline to reach the written description rejection under 35 U.S.C. § 112, ¶1 of claim 78. We affirm the Examiner’s rejection of claims 1, 4, 6, 14, 15, 17, 21, 25–27, 33, 37, 41, 43, 50, 58, 59, 61, 64, 74, and 75 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato and Spackova. Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 45 We reverse the Examiner’s rejection of claims 3, 5, 28, 29, 44, and 45under 35 U.S.C. § 103(a) as obvious over the combination of Blancato and Spackova. We newly reject claims 3, 29 and 45 under 35 U.S.C. §103 (a) as obvious over the combination of Blancato, Spackova. We affirm the Examiner’s rejection of claims 30, 34, 36, and 52 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Yoda. We affirm the Examiner’s rejection of claims 32, 49, 60, and 67 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Adolphi. We affirm the Examiner’s rejection of claims 30, 31, 46, 62, and 76 and reverse the Examiner’s rejection of claims 42, 65, and 66 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Blank. We reverse the Examiner’s rejection of claims 22, 23, 38, and 39 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Kojima. We reverse the Examiner’s rejection of claims 24 and 40 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Maekawa. We affirm the Examiner’s rejection of claims 47 and 48 under 35 U.S.C. § 103(a) as obvious over the combination of Blancato, Spackova, and Applicant Admitted Prior Art (AAPA). Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 46 DECISION We affirm the Examiner’s rejection of claims 1, 4, 6, 14, 15, 17, 21, 2527, 30–34, 36, 37, 41, 43, 46–50, 52 78. We reverse the Examiner’s rejection of claims 3, 5, 2224, 28, 29, 3840, 42, 44, 45, 61, 65, 66 and 75. We newly reject claims 42, 65, 66, and 78. TIME PERIOD This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 47 both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) Appeal 2015-006360 Reexamination Control No. 90/012,669 Patent 6,624,843 B2 48 For Appellant/Patent Owner: Kasha Law LLC 14532 Dufief Mill Road North Potomac, MD 20878 Copy with citationCopy as parenthetical citation