Ex Parte Buckley

Patent Trial and Appeal Board

Feb 19, 2016

12957494 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/957,494 12/01/2010
75931 7590
Basch & Nickerson LLP
1751 Penfield Road
Penfield, NY 14526
02/23/2016
FIRST NAMED INVENTOR
Robert R. Buckley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20090012-US-NP 1214
EXAMINER
YANG, ZHAO HUI
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
02/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. BUCKLEY
Appeal2014-002247
Application 12/957 ,494 1
Technology Center 2400
Before ROBERT E. NAPPI, LARRY J. HUME, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 2, and 5-11. Claims 3 and 4 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellant's claimed invention relates to automatically providing
additional information about a file downloaded from a web-based source by
adding provenance metadata, such as the file's web-based source, to the
downloaded file. Abstract. Of the claims on appeal, claim 1 is illustrative of
1 According to Appellant, the real party in interest is Xerox Corporation.
App. Br. 2.
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Application 12/957,494
the subject matter of the appeal and is reproduced below, with emphasis
added to highlight disputed limitations.
1. A method for providing additional information about a
JPEG file being downloaded from a web-based source,
compnsmg:
downloading, from a web-based source, a JPEG file;
automatically modifYing the downloaded JPEG file by
adding an application marker segment to the downloaded JPEG
file, the application marker segment including a string
identifYing the web-based source of the downloaded JPEG file;
and
storing the modified downloaded JPEG file.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1and2 under 35 U.S.C. § 103(a)
as being unpatentable over How to save an URL in the image property,
http://www.teachertube.com/viewVideo.php?video_id=144285 (last visited
February 15, 2016) (hereinafter "Tutorial")2 when combined with Nathan
Moroney & Timothy Kohler, Automatic creation of file meta-data, Research
Disclosure 511021 (Nov. 2 006) (hereinafter "Moroney") and Shigeta et al.
(US 200710156925 Al; July 5, 2007) (hereinafter "Shigeta"), collectively
referred to hereinafter as "the first combination."
2 The link visited by this panel was provided by the Examiner to Appellant
on July 9, 2013 - as well as during subsequent Examiner interviews and in
the Examiner's Answer- as an alternative copy (uploaded to
teachertube.com) of the same video (uploaded to youtube.com) cited by the
Examiner in the Final Action. See Final Act. 5 (providing link to video on
youtube.com); July 9, 2013 Adv. Act. 2 and Form 892 (link screenshot
stating uploaded by ozesteph1992 on Nov. 17, 2009); Aug. 7, 2013 Inter.
Summ. 2 (providing teachertube link to video); Nov. 7, 2013 Inter. Summ. 1
(same); Ans. 10-11 (finding that the teachertube video copy and the youtube
video copy are identical).
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Application 12/957,494
(2) The Examiner rejected claims 5-7 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Tutorial, Moroney, Shigeta, and
Takahashi et al. (US 2010/0118115 Al; May 13, 2010) (hereinafter
"Takahashi"), collectively referred to hereinafter as "the second
combination."
(3) The Examiner rejected claims 8-11under35 U.S.C. § 103(a) as
being unpatentable over the combination of Tutorial, Moroney, Hamel
(US 2009/0172091 Al; July 2, 2009) (hereinafter "Hamel"), and Albert et
al. (US 2007 /0050321 Al; Mar. 1, 2007) (hereinafter "Albert").
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions the Examiner erred. In reaching this Decision, we consider all
arguments made by Appellant. We disagree with Appellant's arguments
with respect to the claims on appeal, and we incorporate herein and adopt as
our own: ( 1) the findings and reasoning set forth by the Examiner in the
action from which this appeal is taken (Final Act. 5-13), and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellant's
arguments (Ans. 10-18). We, however, highlight and address below
specific findings and arguments for emphasis.
Using Tutorial as a prior art reference
As a preliminary matter, we address Appellant's arguments
concerning the Examiner's use of Tutorial as a prior art reference.
Specifically, Appellant argues ( 1) reliance on Tutorial is improper because
the youtube.com copy of it was removed shortly after it was cited by the
Examiner in the Final Action, and, thus, is a non-existent video and not an
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actual reference, and (2) the Examiner failed to properly make Tutorial part
of the formal record. App. Br. 5-7. Incongruently, Appellant also asserts
that he "is not arguing that the video was not published or meets the
requirements of 35 U.S.C. §102(b)," but rather "is arguing that at the time of
this Appeal, the video is no longer available for review or consideration."
Reply Br. 2.
Appellant's argument that the video is non-existent or currently
unavailable for review is not well-taken. In preparing this Decision, we
have reviewed the copy of Tutorial uploaded to teachertube.com using the
link repeatedly provided by the Examiner. See supra 2 n.2. Further, the
Examiner finds the teachertube.com copy of Tutorial is identical to the now-
removed youtube.com copy, including because the content and timing of the
teachertube.com copy matches the Examiner's descriptions and timestamps
of the youtube.com copy provided in the Final Action. See Ans. 11. 3 We
agree with the Examiner the teachertube.com copy has content and timing
matching the descriptions and timestamps of the youtube.com copy provided
by the Examiner in the Final Action. See Tutorial (teachertube.com); Final
Act. 5---6. We also find the Examiner's descriptions in the Final Action of
Tutorial's content are accurate.
As to whether Tutorial is properly part of the formal record, we note
the Examiner provided screenshots in the record of the youtube.com copy
and teachertube.com copy of the video. See Aug. 7, 2013 Inter. Summ. 2
(citing the youtube.com copy screen shot provided to Appellant in the Non-
3 The Examiner also finds that this available teachertube.com copy was
published on November 17, 2009, which is prior to the critical date for the
present Application. See Ans. 10.
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Application 12/957,494
Final rejection as evidencing that the video was available to public at the
time of the invention); Ans. 10 (stating the Examiner provided a screen shot
of the youtube.com copy of the video); July 9, 2013 Form 892 and Adv. Act.
(providing a screenshot of a teachertube.com copy of the video).
Moreover, this issue already has been addressed. Appellant filed a
petition alleging Tutorial was unavailable to Appellant for review. See Aug.
14, 2013 Pet. Dec. 1. This petition was dismissed. See id. (finding "the
reference is publically available for view" and that "an interview was
conducted in which the examiner demonstrated the availability of the video
in question on the company's website"). Likewise, Appellant's petition for
reconsideration also was dismissed. See Feb. 12, 2014 Pet. Dec. 2 ("The
'Tutorial' reference was available throughout prosecution and every effort
was made by the examiner to ensure subsequent availability to both the
applicant and the public as stated in the record."); see also id. at 1 (finding
MPEP 2128 discloses "any publication that can be made available to the
public is available as prior art.").
Even if Tutorial was no longer available - which as found above is
not the case -we are not apprised of any error in the Examiner's finding
that the youtube.com copy of Tutorial is prior art. See Ans. 1 O; see also
Jn re Klopfenstein~ 380 F.3d 1345~ 1350 (Fed. Cir.2004) (finding that a
reference that was only temporarily displayed may still count as a printed
publication). In fact, Appellant admits that he "is not arguing that the video
was not published." Reply Br. 2.
Lastly, we note that the teachings of Tutorial appear redundant
because what Appellant admits is conventional, coupled with the other cited
references covers the cited teachings of Tutorial. For example, Appellant
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admits it is conventional for an image to be downloaded from a web-source.
See Spec. i-f 1. Further, Shigeta teaches embedding information, such as a
URL, about from where transmitted data originates, and that a JPEG file can
include a "Web page address (URL)." See Shigeta i-fi-1273, 275; see also
Hamel i-f 72 (discussing using a URL to link to a web page containing, inter
alia, JPEG files).
The web-based source of the JPEG
Appellant argues Moroney fails to teach or suggest that the JPEG file
is modified to identify "the web-based source of the JPEG file," as
required by claim 1. App. Br. 8; Reply Br. 4. Appellant argues Moroney
instead teaches or suggests that all the information automatically embedded
in the JPEG file is source information from an e-mail message, not the web.
Reply Br. 4. Additionally, Appellant argues Shigeta teaches creating a
JPEG file from browser displayed data, not downloaded a JPEG from the
web. App. Br. 8.
The Examiner finds that Tutorial teaches downloading an image from
a web-based source and modifying it to identify its web-based source. See
Ans. 14; Final Act. 5---6. The Examiner notes the rejection relies on Tutorial
and not Moroney or Shigeta for teaching this disputed limitation. Ans. 14.
We agree with the Examiner and find the first combination, and
Tutorial in particular, teaches or suggests this disputed limitation. See
Tutorial (teachertube.com) (teaching downloading an image file from web
site flickercc and saving the image's URL in the file's properties); Final
Act. 5---6. We also find Appellant's focus on Moroney is misplaced. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding non-
obviousness cannot be established by attacking references individually); In
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re Keller, 642 F.2d 413, 425 (CCPA 1981) (finding the relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the references).
Our reasoning here with respect to Tutorial also applies to Appellant's
arguments directed to claim 2, which specifies that the string is a URL, as
well as claim 8, which similarly recites this disputed limitation for a TIFF
image. See App. Br. 17.
Automatically modifj;ing the downloaded JPEG file . .. including a
string identifj;ing the web-based source of the downloaded JPEG file
For this disputed limitation, Appellant argues the first combination
fails to teach (i) automatically modifying the JPEG file and (ii) that the
string identifies a web-based source of the JPEG file.
Appellant first argues Shigeta fails to teach or suggest automatically
modifying a JPEG because Shigeta teaches a string (e.g., URL) is only
embedded in the JPEG after a user selects an area to transfer - in other
words, "any modification requires an initial user action." See App. Br. 9.
Secondly, Appellant argues Shigeta fails to teach the string (e.g., a
URL) identifies a web-based source of a downloaded JPEG file. See App.
Br. 8-9. Appellant contends Shigeta instead teaches the URL identifies
information displayed by a browser rather than identifying a JPEG
downloaded from the web. See App. Br. 8.
The Examiner finds the teachings of Moroney and Tutorial together
teach this disputed limitation. See Ans. 14. Specifically, the Examiner finds
Moroney teaches automatically modifying a JPEG file to embed meta-data
information. See Ans. 14 (citing Moroney 2, i-f 2, 11. 4, 7, 8). As to Tutorial,
the Examiner finds it teaches modifying a downloaded JPEG file to include
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its URL information. See Ans. 14; Final Act. 5---6 (citing Tutorial 0:29---0:50,
0:57-1:01, 1:21-1:53).
We agree with the Examiner and find the first combination, and
Moroney and Tutorial in particular, teaches or suggests this disputed
limitation. See Tutorial (teachertube.com) (teaching downloading an image
file from web site flickercc and copy the image URL to save in the
properties of the file); Final Act. 5---6 (citing Moroney 2).
We again find Appellant does not look to the combination, but instead
incorrectly focuses on an individual reference (Shigeta) which, in addition,
was cited by the Examiner for other reasons than what is disputed here. See
Merck, 800 F.2d at 1097 (Fed. Cir. 1986) (finding non-obviousness cannot
be established by attacking references individually).
Our reasoning here with respect to Moroney and Tutorial also applies
to Appellant's arguments directed to claim 8, which similarly recites this
disputed limitation for a TIFF image. See App. Br. 17.
Modifj;ing the JPEG file with (i) a date on which the JPEG file was
downloaded or (ii) who downloaded the JPEG file
Appellant argues the second combination, and Takahashi in particular,
fails to teach or suggest embedding (i) a date on which the JPEG file was
downloaded from the web-based source, as recited in claim 5, and (ii)
information identifying who downloaded the JPEG file, as recited in claim 6.
See App. Br. 11-12. Appellant argues Takahashi instead teaches embedding
control data - instead of meta data - in comment fields of JPEGs to
control the receiving device. See App. Br. 11.
The Examiner finds the second combination teaches these disputed
limitations, and also finds Appellant again attacks references individually.
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See Ans. 15. Specifically, the Examiner finds Moroney and Tutorial
together teach or suggest adding to a JPEG file the date on which it was
downloaded. See Final Act. 9 (citing Moroney 2, i-f 2 ("date of receipt"),
Tutorial). Likewise, the Examiner also finds Moroney and Tutorial together
teach or suggest adding to a JPEG file information identifying who
downloaded it. See Final Act. 9 (citing Moroney 2, i-f 1 ("the recipient ...
associated with the file transfer"), Tutorial).
We agree with the Examiner and find the second combination, and
Moroney and Tutorial in particular, teaches or suggests these disputed
limitations. See Tutorial (teachertube.com) (teaching downloading an image
file from a web site); Final Act. 8-9 (citing Moroney 2)(teaching date of
receipt and recipient meta data for an image file).
We again find Appellant incorrectly focuses on an individual
reference (Takahashi), which additionally the Examiner cites for other things
(e.g., a JPEG can have a comment field). See Merck, 800 F.2d at 1097 (Fed.
Cir. 1986) (finding non-obviousness cannot be established by attacking
references individually).
Furthermore, our reasoning here with respect to Moroney and Tutorial
also applies to Appellant's arguments directed to claim 7, as well as claims 9
and 10, which similarly each recite one of these disputed limitations for a
TIFF image, and claim 11, which recites them both. See App.
Br. 18-19.
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Application 12/957,494
DECISION
We affirm the Examiner's rejections of claims 1, 2, and 5-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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