Ex Parte Clemens

Board of Patent Appeals and Interferences

Jun 30, 2004

09019965 (B.P.A.I. Jun. 30, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRUCE P. CLEMENS

__________
Appeal No. 2003-0408
Application 09/019,965
___________
ON BRIEF
___________
Before JERRY SMITH, RUGGIERO, and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-27 and 29, which
constituted all the claims in the application. An amendment
after final rejection was filed on May 19, 2000 and was entered
Appeal No. 2003-0408
Application 09/019,965
2
by the examiner. This amendment cancelled claims 6, 7, 13, 14,
16 and 20-26. Accordingly, this appeal is directed to the
rejection of claims 1-5, 8-12, 15, 17-19, 27 and 29.
The disclosed invention pertains to a method and
apparatus of operating an imaging system in a dual mode of
operation by capturing a still image concurrently with performing
digital video streaming operations of a digital camera tethered
to a computer system.
Representative claim 1 is reproduced as follows:
1. A method of operating an imaging system in a dual mode
of operation by capturing a still image concurrently with
performance of digital video streaming operations of a digital
camera tethered to a computer system comprising:
pausing digital video streaming operations of the
digital camera;
capturing a still image by the digital camera;
storing the still image as digital still image data in
a memory within the digital camera;
transferring the digital image data from the digital
camera to the computer system;
storing the digital still image data in a first memory
in the computer system and storing digital video streams in a
second memory in the computer system; and
resuming digital video streaming operations of the
digital camera;
wherein the above steps are performed as an atomic
operation which is non-interruptible.
Appeal No. 2003-0408
Application 09/019,965
3
The examiner relies on the following references:
Nagasawa et al. (Nagasawa) 5,659,654 Aug. 19, 1997
Endsley et al. (Endsley) 5,841,471 Nov. 24, 1998
(filed Sep. 12, 1996)
Tung et al. (Tung) 5,859,979 Jan. 12, 1999
(filed Oct. 21, 1997)
Claims 1-5, 8-12, 15, 17-19, 27 and 29 stand rejected
under 35 U.S.C. § 103(a). As evidence of obviousness the
examiner offers Tung and Nagasawa with respect to claims 1-5,
8-12, 27 and 29, and the examiner adds Endsley to this
combination with respect to claims 15 and 17-19.
Rather than repeat the arguments of appellant or the
examiner, 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, the appellant’s
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.
Appeal No. 2003-0408
Application 09/019,965
4
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Appeal No. 2003-0408
Application 09/019,965
5
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1-5, 8-12, 27
and 29 based on the teachings of Tung and Nagasawa. The examiner
essentially finds that Tung teaches the claimed invention except
that Tung fails to teach the camera being a digital camera. The
examiner cites Nagasawa as teaching a digital camera which can
capture both still and moving images. The examiner finds that it
Appeal No. 2003-0408
Application 09/019,965
6
would have been obvious to the artisan to include the digital
camera of Nagasawa in the system of Tung. The examiner also
finds that it would have been obvious to the artisan to store
still images and digital video streams in first and second
memories of a computer system. Finally, the examiner finds that
there is no evidence that the combined system would suffer from
interruptions or information being lost or destroyed. The
examiner, therefore, concludes that the combined system would
operate in a non-interruptible manner [answer, pages 4-5].
With respect to independent claims 1 and 8, appellant
argues that there is no teaching or suggestion in Tung or
Nagasawa to combine the features disclosed in the two references
to arrive at the claimed invention. Appellant also argues that
neither Tung nor Nagasawa, alone or in combination, teaches or
suggests that the entire capture and image retrieval command
sequence of claims 1 and 8 is an atomic operation and non-
interruptible. Appellant notes that the lack of a discussion of
interrupting video streaming in Tung or Nagasawa is not evidence
that the combined system would operate in an atomic and non-
interruptible manner as claimed [brief, pages 5-7].
Appeal No. 2003-0408
Application 09/019,965
7
The examiner responds that Tung teaches pausing the video
streaming action, capturing a still image, transferring the still
image to the remote site, and resuming video streaming all
performed as an atomic operation which is non-interruptible
[answer, pages 11-14].
Appellant responds that the images in Tung are sent
between computers over a computer network. Appellant argues that
there is an indeterminate amount of time required to send two
SNAPSHOT messages in the Tung computer network, and during this
time the computers will continue processing which could cause
interrupts within the computers to occur. Appellant asserts that
the processing in Tung is anything but atomic and non-
interruptible as claimed [reply brief].
We will not sustain the examiner’s rejection of
independent claims 1 and 8 for essentially the reasons argued by
appellant in the briefs. Most importantly, we agree with
appellant that there is no teaching within the combination of
Tung and Nagasawa that the steps and operation of these claims
are performed as an atomic operation which is non-interruptible.
Appellant’s specification describes the atomic operation as
follows:
Appeal No. 2003-0408
Application 09/019,965
8
The camera device driver performs
the entire image capture and image
retrieval command sequence as an
atomic operation, thereby causing
the captured image to be stored on
the host computer system before it
can be overwritten by the next
video frame in the video streaming
sequence generated by the camera.
This atomic operation cannot be
interrupted by events relating to
the video streaming processing,
thus ensuring that the captured
image will be retained on the host
[specification, page 20].
Since the images in Tung are sent from the camera to a remote
location over a computer network and must receive two commands
from the remote location, we agree with appellant that there is
no way that such a network can perform the claimed steps and
operations as an atomic operation which is non-interruptible as
claimed. The examiner erred in finding that the failure of the
applied prior art to discuss interruptions was evidence that the
combined system was atomic and non-interruptible. Limitations in
a claimed invention must be specifically suggested by the applied
prior art or must be clearly inherently present in the prior art.
Neither situation is present in this case.
Since we have not sustained the examiner’s rejection of
independent claims 1 and 8, we also do not sustain the examiner’s
rejection of dependent claims 2-5 and 9-12.
Appeal No. 2003-0408
Application 09/019,965
9
With respect to independent claim 27, the examiner relied
on the rejection as set forth with respect to claim 1. Appellant
argues that claim 27 has limitations not present in claim 1, and
the examiner’s vague reference to the rejection of claim 1 fails
to establish a case of obviousness [brief, pages 9-10]. The
examiner responds that the limitations of claim 27 are
sufficiently similar to the limitations of claim 1 that the
rejection of claim 1 was sufficient to support the rejection of
claim 27 [answer, page 15].
Although we agree with the examiner that claim 27 is
sufficiently similar to claim 1 to allow the rejection of claim 1
to be used as the rejection of claim 27, the similarity of these
claims also requires that we not sustain the examiner’s rejection
of claim 27 for the same reasons discussed above with respect to
claim 1. We also do not sustain the examiner’s rejection of
claim 29 because it depends from claim 27.
We now consider the examiner’s rejection of claims 15 and
17-19 based on the teachings of Tung, Nagasawa and Endsley.
Independent claim 15 has limitations similar to claim 1. Endsley
was only cited to teach a camera device driver as recited in
claim 15, but Endsley does not overcome the deficiencies in the
basic combination of Tung and Nagasawa discussed above.
Appeal No. 2003-0408
Application 09/019,965
10
Therefore, we do not sustain the examiner’s rejection of claims
15 and 17-19 for the same reasons discussed above with respect to
claim 1.
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-5, 8-12, 15, 17-19,
27 and 29 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOESPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JS:dym
Appeal No. 2003-0408
Application 09/019,965
11
Aloysius T C Auyeung
Blakely Sokoloff Taylor & Zafman
12400 Wilshire Boulevard
Seventh Floor
Los Angeles, CA 90025-2026