Ex Parte Atkins

Board of Patent Appeals and Interferences

May 24, 2011

10675823 (B.P.A.I. May. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte C. BRIAN C. ATKINS
____________________

Appeal 2009-006543
Application 10/675,823
Technology Center 2100
____________________

Before: JOSEPH L. DIXON, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006543
Application 10/675,823
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims relate generally to the field of computational placement of
elements, and more specifically to efficiently placing or locating
photographs or graphic images on a page. (Spec. 2). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for arranging a set of objects within an area,
comprising:

initiating a first current binary tree comprising a leaf node;

associating a first object selected from the set with the leaf node;

establishing candidate binary trees, wherein each of the candidate
binary trees comprises the current binary tree and a respective leaf node
associated with another object selected from the set, and locations of the leaf
nodes within each of the candidate binary trees correspond to relative
positions of the associated objects within the area;

computing a respective score for each of the candidate binary trees

selecting one of the candidate binary trees as the current binary tree
based on the computed scores;

repeating the establishing, the computing, and the selecting until the
current binary tree includes all the objects in the set; and

after the repeating, arranging the objects within the area in accordance
with the locations of the leaf nodes within the current binary tree.

Appeal 2009-006543
Application 10/675,823
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Geigel US 2002/0122067 Al Sep. 5, 2002

REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. §102 as being anticipated
by Geigel.
ISSUES
Has the Examiner set forth a sufficient initial showing of anticipation
of independent claim 1? Specifically does Geigel teach "establishing
candidate binary trees, wherein each of the candidate binary trees comprises
the current binary tree and a respective leaf node associated with another
object selected from the set, and locations of the leaf nodes within each of
the candidate binary trees correspond to relative positions of the associated
objects within the area"?

PRINCIPLES OF LAW
35 U.S.C. § 102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Calif., 814 F.2d 628,
631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
Appeal 2009-006543
Application 10/675,823
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broadest reasonable construction 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(Fed. Cir. 2004). The properly interpreted claim must
then be compared with the prior art.

ANALYSIS

The Examiner identifies paragraphs 57-60, 64, 69-70 and 97 along
with figs. 3, 8, and 9 of Geigel to evidence support for the claimed:

establishing candidate binary trees, wherein each of the
candidate binary trees comprises the current binary tree and a
respective leaf node associated with another object selected
from the set, and locations of the leaf nodes within each of the
candidate binary trees correspond to relative positions of the
associated objects within the area
(App. Br. 24, claim 1.)

In the responsive arguments, the Examiner further identifies
paragraph 89 to further support the rejection. (Ans. 7). The Examiner states
that "the Examiner believes that Geigel does in fact teach that the locations
of the leaf nodes within each of the candidate binary trees correspond to
relative positions of the associated objects within the area" (Ans. 7). Yet the
Examiner does not provide any express teachings which clearly support the
Examiner's position. The Examiner further "poses this scenario which is
completely within the scope of Geigel … Thus leading to the undeniable fact
that Geigel fully supports establishing…." We find the Examiner's position
to be based upon speculation in a modified disclosure from Geigel rather
than the express teachings of Geigel. (Ans. 7-8 Emphasis added).
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We find Appellant's arguments in the Appeal Brief and Reply Brief to
fairly address the prior art teachings of Geigel with the exception of
Appellant's unsupported statement/inference that
Once the images have been assigned to pages, the
subgrouping information is discarded; it is not transmitted to
the image placement module for use in determining the
positions of the images on the album pages (see, e.g., page 9,
Table 3, which shows that the image placement module does
not use any parameters that relate to the assignment of images
to subgroups by the page creator module).

(App. Br. 8). Rather, we find that Geigel is merely silent with respect to the
use of data regarding assignment of images to subgroups.
Therefore, we conclude that the Examiner has not shown that Geigel
anticipates independent claim 1 and its respective dependent claims.

The Examiner has rejected independent claims 1, 8, and 15 in the
same statement of the rejection and only addresses the language of
independent claim 1 as representative for each of the three independent
claims. (Ans. 3-4). To the extent that independent claims 8 and 15 vary
slightly from the language of independent claim 1, we find that the Examiner
has not addressed these slight differences and has not shown that Geigel
anticipates independent claims 8 and 15 and their respective dependent
claims.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1-21 solely over the Geigel
reference based upon anticipation.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1-21 is
reversed.

REVERSED

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