Ex Parte Atkins

Board of Patent Appeals and Interferences

Sep 30, 2011

11069512 (B.P.A.I. Sep. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte C. BRIAN ATKINS
____________________

Appeal 2009-008552
Application 11/069,5121
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 1, 2005. The real party in interest is Hewlett
Packard Development Co., L.P.
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STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 23 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appellant’s invention relates to a method for arranging digital pictures
onto the pages of an album. In the words of Appellant:
Individuals and organizations are rapidly accumulating
large collections of digital image content, including still
images, text, graphics, animated graphics, and full-motion
video images. This content may be presented individually or
combined in a wide variety of different forms, including
documents, presentations, still photographs, commercial videos,
home movies, and meta data describing one or more associated
digital content files. As these collections grow in number and
diversity, individuals and organizations increasingly will
require systems and methods for organizing and presenting the
digital content in their collections. To meet this need, a variety
of different systems and methods for organizing and presenting
digital image content have been proposed.

. . . .

In one aspect, the invention features a machine-
implemented method of arranging images on pages of an album
having multiple potential states each corresponding to a
respective arrangement of the images on the pages. In
accordance with this inventive method the album is received in
an initial state. A series of successive states from the initial
state to an end state is determined, wherein each of the
successive states is selected from candidate states in a
respective neighborhood of a corresponding preceding one of
the states in the series based on a heuristic evaluation of the
candidate states.
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In another aspect, the invention features a machine-
implemented method of arranging images on pages of an
album, in accordance with which an initial arrangement of the
images on the pages of the album is received. Different
candidate arrangements of the images on the pages of the album
are determined, wherein each of the candidate arrangements
corresponds to the initial arrangement with at least one of the
images at a different respective location in the album. The
candidate arrangements are evaluated. One of the candidate
arrangements is selected based on the evaluation. The process
of determining, evaluating, and selecting one of the different
candidate arrangements, is repeated iteratively with the
respective candidate arrangement selected in each of the
iterations as the initial arrangement in each of the
corresponding successive iterations.
(Spec. 1, ll. 10-19, Spec. 3, l. 17 to Spec. 4, l. 4).
The following illustrates the claims on appeal:
Claim 1. A machine-implemented method of
arranging images on pages of an album having multiple
potential states each corresponding to a respective arrangement
of the images on the pages, comprising:
(a) receiving the album in an initial one of the states;
(b) determining a series of successive ones of the states
of the album from the initial state to an end one of the states,
wherein each of the successive states is selected from candidate
one of the states in a respective neighborhood of a
corresponding preceding one of the states in the series based on
a heuristic evaluation of the respective arrangements of the
images on the pages of the album in the candidate states; and
(c) generating a description of the arrangement of images
of the album in the end state.

Claim 4. The method of claim 3, wherein the
determining of the candidate states comprises changing the
layout locations of different respective ones of the images in the
arrangement corresponding to the current state to identify the
candidate states in the neighborhood of the current state.
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7. The method of claim 4, wherein the changing
comprises moving a selected one of the images from a layout
location on a selected one of the pages in the current state
arrangement to a layout location on a different one of the pages.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Long US 2002/0095439 A1 July 18, 2002
Joe Geigel and Alexander C. P. Loui, Automatic Page Layout Using Genetic
Algorithms for Electronic Albuming, Published in Internet Imaging II (Proc.
of SPIE Vol. 4311, No. 4311), 79-90, San Jose, CA (2001) (hereinafter
“Geigel”).

REJECTIONS
The Examiner rejects the claims as follows:
R1: Claims 1 to 4, 9, 12 to 15, and 20 to 23 stand rejected under
35 U.S.C. § 102(e) for being anticipated by Long.
R2: Claims 5 to 8, 10, 11, and 16 to 19 stand rejected under 35
U.S.C. § 103(a) for being obvious over Long in view of Geigel.
We will review the rejections in the order argued, and as grouped in
the Briefs. We have only considered those arguments that Appellant
actually raised in the Briefs. Arguments Appellant could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102 and 35 U.S.C. § 103(a). The
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issue specifically turns on whether the references teach the arrangement of
images on a multiple pages of an album, as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant invented a method and machine to arrange digital images on
pages of an album by making incremental changes, state by state, from an
initial state. (Spec. 3, middle).
2. The Long reference teaches arranging a plurality of digital images in an
electronic photo album. (Long, ¶ [0004]).
3. The Geigel reference teaches a method of Page Creation, assigning
images to album pages, and then Image Placement, laying out the
assigned images to the individual pages. (Geigel, § 2. (1) & (2)).

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as
recited in the claim, it cannot be said to prove prior invention of
the thing claimed and, thus, cannot anticipate under
35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008) (emphasis added).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 4, 9, 12 to 15, and 20 to 23
under 35 U.S.C. § 102(e) [R1]

The Examiner has rejected the noted claims for being anticipated by
Long. Appellant demurs, arguing:
Long’s image arrangement method, on the other hand, consists
of generating a series of different image arrangements on a
single page until a cost predicate is met. None of these Image
arrangements, however, can constitute a respective album
“state” as defined in claim 1 because none of the image
arrangements constitutes a respective arrangement of the
images on (plural) pages of an album, as recited in claim 1.
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Instead, each image arrangement consists of an arrangement of
the images on a single page.
(Brief 10, bottom)
The Examiner supports the rejection by stating that photo albums are
known to contain multiple pages, and then pointing to Long, paragraph
[0104]. (Answer 11, top). That latter citation is telling, as it states that
multiple pages are produced by the procedure of fitting images to the pages.
(Id.). We do not find error in the Examiner’s position.
The Appellant further argues that:
Long does not expressly nor inherently disclose determining a
series of successive (plural) ones of the states of the album from
the initial state to an end one of the states, wherein each of the
successive states is selected from candidate ones of the states in
a respective neighborhood of a corresponding preceding one of
the states in the series based on a heuristic evaluation of the
respective arrangements of the images.
(Brief 11, middle).
We find Appellant’s argument unpersuasive. As the Examiner
indicates, Long discloses a first arrangement of the images (¶ [0020]), and
attempts various rearrangements of the images on the page in accordance
with a heuristic evaluation of the trial arrangements based on various criteria
(alignment, positioning, size, etc.). The term “cost” in Long refers to a
weighting factor to evaluate the placement of the images on the page.
(¶ [0058]).
As variations of the two arguments above are applied to the other
claims rejected under 35 U.S.C. § 102(e), we decline to find error in the
rejection of all claims under rejection R1. (Brief 12 to 14).

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Arguments with respect to the rejection
of claims 5 to 8, 10, 11, and 16 to 19
under 35 U.S.C. § 103(a) [R2]
The Examiner has rejected the noted claims for being obvious over
Long in view of Geigel.
With respect to claims 5, 6, and 11, Appellant repeats a variation of
the arguments for claim 1, discussed above. (Brief 15, middle). We did not
find these arguments persuasive. With special regard to claim 11, we adopt
and endorse the Examiner’s findings. (Answer 13, bottom).
With respect to claims 7, 8, 10 and 16 to 19, each claim rearranges
images from their original position and page in the initial state to another
page in the candidate rearrangements. (See claims 1 and 7, for example).
The Examiner applies the Geigel reference to teach moving images between
pages, referring to the crossover and mutation functions taught in the Figure
2a of Geigel. (Answer 7, bottom). However, the Appellant is correct in
stating:
In particular, in accordance with Geigel’s teaching, the images
are not arranged on the pages of the album until after the
images have been assigned to the pages. After the page creator
module has assigned the images to the pages, neither the page
creator module nor the image placement module modifies that
assignment.
(Brief 16, middle).
Geigel teaches two distinct stages: Page Creation and Image
Placement. (FF #3, above). In the former stage images are first assigned to
a page, creating what the claim calls the “initial state”. The crossover and
mutation of images between nodes (pages) occurs only in the Page Creation
stage in Geigel, corresponding to the claimed creation of an initial state.
(Geigel, § 4.4, Fig. 4). The moving of images between pages AFTER the
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initial state, as claimed in claims 7, 8, 10 and 16 to 19, does not occur in the
Image Placement stage of Geigel, corresponding to the claimed series of
successive states. (Geigel, § 4.5).
The Appellant has thus properly pointed out error in the rejection of
claims 7, 8, 10 and 16 to 19.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 7, 8, 10 and
16 to 19 under 35 U.S.C. § 103(a) (R2). However, the rejections R1 and R2
of the other claims we find to be without error.

DECISION
We reverse the Examiner’s rejection [R2] of claims 7, 8, 10 and 16 to
19. We affirm the Examiner’s rejections [R1 and R2, respectively] of claims
1 to 6, 9, 11 to 15 and 20 to 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN PART

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