Ex Parte Alfvin et al

Board of Patent Appeals and Interferences

Sep 13, 2006

09607140 (B.P.A.I. Sep. 13, 2006)

The opinion in support of the decision being entered today
was not written for publication and
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte RICHARD L. ALFVIN AND WILLIAM C. ARCHIE
_____________

Appeal No. 2006-1491
Application No. 09/607,140
Technology Center 3600
______________

ON BRIEF
_______________

Before BAHR, NAPPI and FETTING, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of claims
1 through 16. For the reasons stated infra we will not sustain the examiner’s rejection of
claims 1 through 16.

THE INVENTION
The invention relates to a method of managing digital images captured by a
customer using a combined telecommunications and image capture device. The
telecommunications provider provides a database for receiving and storing images from
the customer. The telecommunications provider provides a periodic statement for

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Application No. 09/607,140

services which also contains visual representation of the images. See page 2 of
appellants’ specification. Claims 1 and 15 are representative of the invention and are
reproduced below:

1. A method of managing digital images captured by a customer using a
combined portable telecommunications and digital image capture device, said
method comprising:
a telecommunication service provider providing a telecommunication
service to a customer, said telecommunications service provider forwarding a
periodic statement for telecommunication services provided to said customer for a
predetermined time period;
providing a data base for receiving and storing said digital images from
said customer using said combined telecommunications device to transmit said
digital images to said service provider; and
said telecommunication service provider providing to said customer a
visual representation of said captured images taken during said predetermined
time period along with said periodic statement.

15. A multi-section statement form for use by a combined
telecommunications and imaging services service provider, comprising:
a first portion of said form comprising a billing invoice for
telecommunications and imaging services charges accumulated for a
predetermined time period;
a second portion of said form comprising a hard copy index print
containing images taken during a predetermined time period;
a third portion of said form comprising an order form for ordering
photographic goods and/or services based upon said images contained in said
index print.

THE REFERENCES
The references relied upon by the examiner are:

Kolling 6,385,595 May 7, 2002
Loeb 6,014,641 Jan. 11, 2000
Enomoto 5,974,401 Oct. 26, 1999
Reele 5,893,037 Apr. 6, 1999

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THE REJECTIONS AT ISSUE
Claims 1, 2 and 8 through 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Reele and Kolling. Claims 3 and 7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Reele, Kolling and Enomoto. Claims 4 through 6 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Reele, Kolling and Enomoto
and Loeb. Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Kolling and Loeb. The examiner’s rejections are set forth on pages 2 through 8 of
the Office action mailed December 18, 2002. Throughout the opinion we make reference
to the briefs and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the examiner
as support for the rejections. We have, likewise, reviewed and taken into consideration,
in reaching our decision, appellants’ arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments in rebuttal set forth in the
examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of the appellants and the examiner, for the
reasons stated infra we will not sustain the examiner’s rejections of claims 1 through 16.
On page 2 of the brief, appellants group the claims into four groups. On pages 3
through 8 of the brief, appellants present arguments directed to each of these groups.
Accordingly, we will consider the claims as grouped by appellants.
Rejection of claims 1, 2 and 8 through 14.
Appellants assert, on page 3 of the brief, that Reele teaches a combined camera
and cellular phone. However, appellants argue, on page 4 of the brief:
Reele et al. does not teach the sending of the images to a
service provider. Quite the contrary, what is set forth at
column 5, lines 25-43 is that the operator (i.e. the owner of
the camera) can have images sent to a remote location.
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There is no indication or suggestion in the reference that
the images would be sent to a image service provider for
storage. Further, neither Reele et al. or Kolling et al.
disclosed the claimed feature of providing a "visual
representation of said captured images" along with a
periodic statement for telecommunication services. The
Examiner cites Kolling et al. to provide this feature.
However, Kolling et al. merely discloses the supplying of a
logo or other graphic on a periodic statement, or the
including of enclosures with the statement. A corporate
logo or advertising enclosure however is not a visual
representation of the images captured by the customer that
is received by an image provider and stored on a database
as claimed by applicants. The images in Kolling et al. are
instead supplied by the service provider not by the owner
of the combined image captured telecommunication device.
The Examiner acknowledges that Reele et al. does not
provide a periodic statement. Accordingly, it is respectfully
submitted that Reele et al. could not teach or suggest the
providing of visual representation of captured images taken
during a predetermined time period along with a periodic
statement as taught and claimed by applicants. (underlining
original)

In response, the examiner states, on pages 3 and 4 of the answer: “the features
upon which applicant relies (i.e. sending of images to a service provider, a image service
provider and images captured by the customer) are not recited in the rejected claim(s).
Also the limitation of ‘images supplied by the owner of the combined image captured
telecommunication device’ is not recited in the claim.” In the paragraph bridging pages 4
and 5 of the answer, the examiner states that Reele teaches that a telecommunications
provider provides services and a database for storing digital images. Further, the examiner
states that Kolling discloses the step of providing statements for telecommunication
services along with custom enclosure and that in combination one skilled would provide a
statement which included the images.
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We disagree with the examiner’s rationale and findings concerning Reele.
Claim 1 recites “providing a data base for receiving and storing said digital images from
said customer using said combined telecommunications device to transmit said digital
images to said service provider; and said telecommunication service provider providing
to said customer a visual representation of said captured images taken during said
predetermined time period along with said periodic statement.” Independent claim 9
contains a similar limitation of a “database for receiving and storing said captured images
transmitted from said customer” and “a computer used by said service provider for
managing and associating said telecommunications and image storage services for said
customer and for providing a visual representation of said captured images captured
during said predetermined time period along with said periodic statement.” Thus,
contrary to the examiner’s findings, claim 1 does recite transmitting the digital images to
the service provider. We find that Reele teaches that the images captured by the camera
are transmitted to remote locations, see column 5, line 25 through 49. This transmission
of an image is discussed as being sent to another person for review and approval (see
column 1, lines 36 through 45). Implicit in this transmission of the image is that it is
transmitted to the telecommunications provider, as the telecommunications provider is
the intermediary to such a transmission. However, we do not find that Reele teaches that
the images are stored in a database or that the telecommunications provider provides a
visual representation of the images along with the periodic statement of services provided
to the customer. We concur with the examiner that Kolling teaches generating periodic
statements for services provided including telecommunications services. See column 18
lines 64 through column 19 line 7 and column 19, lines 34 through 41. While we also
concur with the examiner that Kolling teaches custom enclosures on column 19 lines 43
through 66, we find that these custom enclosures are for advertisements (see items 850,
851 in figure 10 and figure 15) and thus do not find that Kolling’s teaching of custom
enclosures in the statements teaches or suggests that a representation of images captured
and transmitted by the telecommunication device should be provided along with the
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periodic statement. Thus, we do not find that the combination of Reele and Kolling
would have suggested the limitations of independent claims 1 and 9. Accordingly we
will not sustain the examiner’s rejection of claims 1, 2, and 8 through 14.
Rejection of claims 3 and 7.
Claim 3 is dependent upon claim 1, and claim 7 depends on claim 3. The
examiner applies Reele, Kolling and Enomoto in rejecting these claims. As discussed
supra the combination of Reele and Kolling do not teach or suggest the limitations of
claim 1. The examiner has not asserted nor do we find that Enomoto teach or suggests
modifying Reele or Kolling such that the telecommunications provider provides a visual
representation of the images along with the periodic statement of services provided to the
customer. As such we will not sustain the examiner’s rejection of claim 3 and 7 for the
reasons stated supra with respect to claim 1.
Rejection of claims 4 through 6.
Claims 4 through 6 are dependent upon claim 3. The examiner applies Reele,
Kolling, Enomoto and Loeb in rejecting these claims. As discussed supra the
combination of Reele, Kolling and Enomoto do not teach or suggest the limitations of
claim 3. The examiner has not asserted nor do we find that Loeb teaches or suggests
modifying Reele or Kolling or Enomoto such that the telecommunications provider
provides a visual representation of the images along with the periodic statement of
services provided to the customer. As such we will not sustain the examiner’s rejection
of claims 4 through 6 for the reasons stated supra with respect to claim 3.
Rejection of claims 15 and 16.
Appellants argue on page 8 of the brief that the rejection based upon Kolling in
view of Loeb is improper as:
Loeb et al. is not directed to storing images on behalf of a
customer nor is it directed to a billing invoice for a
telecommunication and image services for a predetermined
period of time. Nor is there any teaching or suggestion for
providing an order form for obtaining photographic goods
and/or services. As previously discussed, the Kolling et al.
reference is directed to an electronic billing system. It does
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not teach or suggest the providing of a combined
telecommunication and image service provider nor does it
teach the providing of statement [sic]with the three portions
as claimed by applicant. Thus, it is respectfully submitted
that it could not teach the claimed invention as there are
essential elements missing from the combined cited
references.

The examiner responds, on page 7 of the answer, stating that the feature argued,
storing images on behalf of the customer is not recited in claims 15 and 16. Further, on
pages 7 and 8 of the answer, the examiner states the Kolling teaches providing a periodic
statement for services provided and providing to said customer a visual representation of
captured images. Additionally the examiner finds that Loeb teaches the use of paper
forms.
We are not persuaded by the examiner rationale. As stated supra we do not find
that Kolling teaches or suggests providing a statement to a user for telecommunications
services, which includes a representation of images captured and transmitted by the
telecommunications device.
We note claim 15 is directed to a form and recites limitations directed to
information contained in three sections of the form. The first section being a billing
invoice, the second an index print of images taken during a period of time and the third
being an order form for ordering photographic goods based upon images in the
index print. We consider the information on the first portion, the billing invoice for
telecommunications and imaging services, to be non-functional descriptive material, and
as such does not patentably distinguish the claim over the prior art. See In re Gulack 703
F.2d 1381, 217 USPQ 401 (Fed Cir. 1983). However, we consider the information in the
second portion, the index print containing images, and the third portion “an order form
for ordering photographic goods and/or services based upon said images contained in
said index print” to be functionally related to each other and the substrate on which they
are printed, i.e. the order form on the third section is for the images contained in the
second section. The examiner has not shown that either Kolling or Loeb teaches or
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suggests such information presented on an order form. Accordingly we will not sustain
the examiner’s rejection of claims 15 and 16.

Conclusion
In summary, we will not sustain the examiners rejection of claims 1
through 16. The decision of the examiner is reversed.

REVERSED

JENNIFER D. BAHR )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201

REN/jrg
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