Ex Parte CHO

Patent Trial and Appeal Board

Mar 21, 2016

11769233 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111769,233 0612712007
58027 7590 03/23/2016
RC PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
FIRST NAMED INVENTOR
Seung-Hwa CHO
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.
P2116USOO 4424
EXAMINER
NGUYEN, DINH
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEUNG-HWA CHO
Appeal2014-004904
Application 11/769,233
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004904
Application 11/769,233
l. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final rejection of claims 1-3, 5-7, 9, 12, and 14--17, which constitute
all the claims pending in this application. Appellant has previously canceled
claims 4, 10, 11, and 13. The Examiner indicates claims 15-17 are objected
to and would be allowable if rewritten in independent form. (Non-final Act.
13). 1 The Examiner indicates that claim 8 is objected to (as being dependent
on claim 15) and withdraws the rejection of claim 8 in the Answer (Ans. 2).
See 37 C.F.R. § 41.39(a)(l). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
A. INVENTION
According to Appellant, the claimed invention relates to "a method
and apparatus for storing an image file in a mobile terminal using a file
name automatically generated when an image that matches an input image
file has been stored in a phone book." Spec. i-f 3.
1 Because claims 8, and 15-17 are objected to and are not rejected, these
claims are not before us on appeal. See 37 C.F.R. § 41.31(c). To the extent
Appellant argues "the imposed objection to claims 15-17 is not factually or
legally viable" and "should be reversed" (App. Br. 12), we note this is a
petitionable matter not within the jurisdiction of the Board. The proper
procedure under MPEP §1002.02(c)(4) is to file a petition with the
Technology Center Director under 37 C.F.R. § 1.113(a) regarding an
objection made by the Examiner ("Petition may be taken to the Director in
the case of objections or requirements not involved in the rejection of any
claim."). Accordingly, since the Examiner's objection to claims 15-17 is a
petitionable, rather than appealable matter, this issue is not before us and we
express no opinion as to its propriety. See 37 C.F.R. § 1.181.
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B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method, using a controller, for storing an image file in a
mobile terminal, comprising:
comparing an input image file with phone book image files
that correspond to contact names stored in a phone book;
automatically creating, if a phone book image file matches
the input image file, a file name of the input image file using a
contact name corresponding to the phone book image file; and
storing the input image file using the file name of the input
image file automatically created by the controller.
C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Tanaka et al.
("Tanaka")
Koyama et al.
("Koyama")
Kim
Hakala et al.
("Hakala")
US 2001/0041056 Al
US 2004/0207722 Al
US 2005/0265578 Al
US 2007 /0027911 Al
Nov. 15, 2001
Oct. 21, 2004
Dec. 1, 2005
Feb. 1,2007
Claims 1-3, 5, 9, 12, and 14 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Hakala and Koyama.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hakala, Koyama, and Tanaka.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hakala, Koyama, and Kim.2
2 The Examiner indicates that claim 8 is objected to (as being dependent on
claim 15) and withdraws the rejection of claim 8 in the Answer (Ans. 2).
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Application 11/769,233
IL ISSUE
The principal issue before us is whether the Examiner erred in
findings the combination of Hakala and Koyama teaches or at least suggests
the disputed limitations "comparing an input image file with phone book
image files that correspond to contact names stored in a phone book" and
"automatically creating, if a phone book image file matches the input image
file, a file name of the input image file using a contact name corresponding
to the phone book image file." (claim 1, emphasis added).
III. FINDINGS OF FACT
Hakala
1. Hakala discloses a controller for storing an image file in a mobile
device. (Fig. 2, i-f 27).
2. In Hakala, a name suggestion is automatically created based on a
comparison of picture features. (i-fi-f 31, 32, and 37).
3. A mobile station comprises a phone book. (Fig. 2, #211 ).
Koyama
4. Koyama discloses a CPU that uses an image recognition unit to
retrieve the image data showing the same person as the image
stored in the address book data by using the image data in the
image memory. (i-f 119).
5. As an example, REI Tanaka is the contact name corresponding to
the image in the address book. (Fig. 23 A, B).
See 37 C.F.R. § 41.39(a)(l). Thus, claim 8 is also not before us in this
appeal.
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Application 11/769,233
6. CPU 12 sets the image display link "1" in 001 Rei Tanaka's
address data area in the address book data storage area. (i-17 6).
7. CPU 12 then sets the image display link flag "11" in 001 Rei
Tanaka's address data area in the address book. (Fig. 7, i-f81).
IV. ANALYSIS
Appellant contends "Hakala clearly and unambiguously states that the
comparison is with 'a corresponding feature of the previous picture,' which
does not even remotely contemplate 'phone book image files,' much less
phone book image files in the manner claimed." (App. Br. 9).
Appellant also contends:
[K]oyama uses a selected address book image file to find and
retrieve other image files with the same person as in the address
book image file. In other words, an input image file is not
compared with address book image files. Instead, an address
book image file is compared with other already saved image
files. ~y1oreover, even if there is a match in Koyama, a file name
is not automatically created for either the selected address book
image or the images showing the same person as the selected
phone book image.
(App. Br. 9).
Appellant further contends "Koyama is completely silent regarding
the automatic creation of a file name, much less in the manner claimed."
(App. Br. 10).
We consider all of Appellant's arguments and evidence presented, and
disagree with Appellant's contentions regarding the Examiner's rejections of
the claims. We adopt as our own: ( 1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
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Application 11/769,233
reasons and rebuttals set forth in the Examiner's Answer in response to
arguments made in Appellant's Appeal Brief. We incorporate such findings,
reasons, and rebuttals herein by reference unless otherwise noted. We
highlight and address specific findings and arguments below.
We note Appellant is arguing the references separately. Contrary to
Appellant's contentions (App. Br. 9-10), in the non-final office action, the
Examiner relies on Koyama, not Hakala, for teaching or suggesting
"comparing an input image file with phone book image files that correspond
to contact names stored in a phone book" (Non-final Act. 4, FF 4--7). Also
contrary to Appellant's contentions, in the non-final office action, the
Examiner relies on Hakala, not Koyama, for teaching or suggesting
"automatically creating ... a file name of the input image file" limitation.
(Non-final Act. 3--4, FF 1, 2).
The Examiner further finds, in addition to Koyama, that Hakala
implicitly teaches the "comparing an input image file with phone book
image files that correspond to contact names stored in a phone book"
limitation:
Hakala discloses, ([0030] there is looked up the file name of the
previously saved picture file and it is added as a name suggestion
in the name suggestion list of the picture file to be saved), it is
clear that Hakala teaches using the file name of the previously
saved picture for the picture file to be saved. Hakala also
discloses ([0032] by means of image recognition technique, it is
possible to observe for instant the brightness of the picture, the
pattern, a person and from these, there can be generated name
suggestions, the generated file name suggestion is added in the
picture file name suggestion list, or they can be for instance
compared with the corresponding feature of the previous picture,
and the name suggestion can be generated on the basis of this
comparison). That is, Hakala implicitly teaches or suggested a
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Application 11/769,233
person in an input image can be recognized and compared with
the corresponding feature of the previous picture, hence Hakala
implicitly teaches or suggests the claimed limitation, comparing
an input image file with phone book image file (i.e., previous
saved picture), and as Hakala also teaches a phone book ([fig
2)). Therefore, it would have been obvious a skilled artisan in art
to recognize and adapt the teaching to include a phone book
image.
(Ans. 3, emphasis added).
Although Appellant argues Koyama does not teach an automatic
creation of a file name (App. Br. 10), the test for obviousness is not what the
references show individually but what the combined teachings 1,vould have
suggested to one of ordinary skill in the art See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Thus, the issue we address is whether the
Examiner's proffered combination of Hakala and Koyama, would have
suggested "automatically creating ... a file name of the input hnage file."
Here, we agree with the Examiner's finding that Hakala, not Koyama,
teaches this particular limitation. (Non-final /\ct 3, FF 1, 2).
Although Appellant also argues Hakala doesn't disclose comparison
of an input image file with phone book image files that correspond to contact
names from a phonebook (App. Br. 11 ), we find Appellant is again arguing
the references separately. We agree with the Examiner's finding Hakala's
name suggestion list teaches or suggests "a file name of the input image
file," as recited in claim 1. (Ans. 3). We also agree with the Examiner's
finding Hakala's mobile station, which contains a phone book, at least
suggests "contact names" associated with any given phone book. (Ans. 5,
FF 3).
Furthennore, even if we assume, arguendo, our reviewing court may
more narrowly construe the claimed "phone book image file" as not being
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exactly equivalent to Koyama's phonebook image file or Hakala's phone
book, since the Examiner rejects the claims as obvious over the combined
teachings of Hakala in view of Koyama, the test for obviousness is not what
the references show individually but what the combined teachings would
have suggested to one of ordinary skill in the art. See In re Merck at 1097.
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The skilled
artisan would "be able to fit the teachings of multiple patents together like
pieces of a puzzle" since the skilled artisan is "a person of ordinary
creativity, not an automaton." Id. at 420-21.
Appellant has provided no evidence that "comparing an input image
file with phonebook image files" and "automatically creating" a "file name"
if the image files match was "uniquely challenging or difficult for one of
ordinary skill in the art," Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007), nor has Appellant presented evidence
that this incorporation yielded more than expected results.
Thus, although Appellant argues that "the requisite reasoning ... to
combine the applied art" has not been established (App. Br. 10), we agree
with the Examiner that it would have been obvious, in view of the
combination of Hakala and Koyama, to include the steps of "comparing an
input image file with phonebook image files" and "automatically creating" a
"file name" if the image files match, as claimed, "to make it easier to
process and save pictures in a mobile device thereby improving its
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functionality ... " (Non-Final Act. 5). That is, we find the Examiner has
provided sufficient articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.
Moreover, regarding disputed limitation "automatically creating," we
note it is well settled that merely providing a mechanical or automatic means
to replace manual activity to accomplish the same result is an obvious
improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
We particularly note that the claimed "automatically creating ... a file
name" is conditionally associated with "if a phone book image file matches
the input image file" (claim 1 ). Thus, the automatic creation of a file name
is not positively recited because the predicate condition may never be
satisfied. 3
We agree with the Examiner's finding the cited references Hakala and
Koyama both teach "phone book image files" and "contact names." (Ans. 3-
5, FF 3-7). Therefore, we find the Examiner's proffered combination of
3 Because the conditional "if' clause of claim 1 does not cover both sides of
the condition a question arises as to how much patentable weight, if any,
should be given to a conditional limitation that is not positively recited as
actually occurring. Cf with In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir.
2006) ("[O]ptional elements do not narrow the claim because they can
always be omitted."). "If the condition for performing a contingent step is
not satisfied, the performance recited by the step need not be carried out in
order for the claimed method to be performed." Cybersettle, Inc. v. National
Arbitration Forum, Inc., 243 Fed. Appx. 603, 608 (Fed. Cir. 2007)
(Unpublished case). Also see Ex parte Katz, 2011 WL 514314, at *4-5
(BPAI 2011) (Appeal No. 2010-006083) where "the steps dependent on the
'if conditional would not be invoked, the Examiner was not required to find
these limitations in the prior art in order to render the claims obvious."
(Op. 4). See also MPEP § 2111.04 regarding conditional (optional) language
in a method claim: "Claim scope is not limited by claim language that
suggests or makes optional but does not require steps to be performed .... "
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such familiar prior art elements according to their established functions
would have conveyed a reasonable expectation of success to a person of
ordinary skill having common sense at the time of the invention.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness.
Accordingly, we find Appellant has not shown the Examiner erred in
rejecting independent claim 1, and independent claims 9 and 12 falling
therewith (App. Br. 10), and claims 2, 3, 5, and 14 depending respectively
therefrom, but not separately argued.
Appellant does not provide separate and substantive arguments for
claims 6-7 (App. Br. 11-12). Accordingly, we also sustain the Examiner's
rejection of claims 6 and 7 under 35 U.S.C. § 103(a).
CONCLUSION AND DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-7, 9, 12,
and 14.
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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