Ex Parte 6624843 et al

Patent Trial and Appeal Board

Sep 21, 2017

90012669 (P.T.A.B. Sep. 21, 2017)

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.
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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, 3650, and 5278 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.
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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 7478 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.
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over the combination of Blancato,5 and Spackova.6 Final
Act. 1121.
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.
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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.
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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. 2123 (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. 4749 (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
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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.
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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
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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.
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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.
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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. 5053. 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. 711), 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
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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. 5052; col. 3, ll. 1922. Thus, ambiguity in this claim arises
because it is unclear how a customer image is “captured” from a data file.
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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.

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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
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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.
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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).
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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
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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.

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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
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(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.
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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
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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
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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. 2223. 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.”
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Ans. 22. Second, because there is no analog-to-digital conversion between
the video camera and the digital image processor. Final Act. 15;
Ans. 2223.
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. 810) 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. 1530. 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).
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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 1220. 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
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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
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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.
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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
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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.
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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.
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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
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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. 2223. 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
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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. 3233.
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
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“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
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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. 4952. 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
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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
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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. 2728.
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.

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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. 3840. 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. 3840.
We agree with the Examiner (Final Act. 23; Ans. 3840): 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. 3840) 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
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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
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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.

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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.
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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
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“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.
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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.
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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).
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DECISION
We affirm the Examiner’s rejection of claims 1, 4, 6, 14, 15, 17, 21,
2527, 30–34, 36, 37, 41, 43, 46–50, 52 78.
We reverse the Examiner’s rejection of claims 3, 5, 2224, 28, 29,
3840, 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
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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)

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48

For Appellant/Patent Owner:

Kasha Law LLC
14532 Dufief Mill Road
North Potomac, MD 20878