Ex Parte Cui

Patent Trial and Appeal Board

Mar 12, 2018

13726595 (P.T.A.B. Mar. 12, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/726,595 12/25/2012 Yan Qing Cui 042933/462219 2961
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
LHYMN, SARAH
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAN QING CUI
Appeal 2017-008976
Application 13/726,5951
Technology Center 2600
Before ROBERT E. NAPPI, DAVID M. KOHUT, and LYNNE E.
PETTIGREW, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
1 According to Appellant, the Real Party in Interest is Nokia Technologies
Oy. App. Br. 2.
Appeal 2017-008976
Application 13/726,595
DECISION ON APPEAL
STATEMENT OF THE CASE2
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—7, 9—16, and 18—24.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a new ground of rejection pursuant to
37 C.F.R. § 42.50(b).
INVENTION
The invention is directed to a method of processing digital composite
images during photography. Spec, 5—8.
CLAIMED SUBJECT MATTER
Claims 1,16, and 22 are the independent claims on appeal. Claim 1 is
representative and is reproduced below.
1. A method comprising:
causing a first image of a first real-time scene to be
displayed to a user on a view-finder, the first image
comprising one or more selectable objects from the first
real-time scene;
receiving a first user input selecting at least one
selectable object from the first real-time scene, wherein
2 Our Decision makes reference to Appellant’s Reply Brief (“Reply Br.,”
filed June 5, 2017) and Appeal Brief (“App. Br.,” filed March 3, 2017), and
the Examiner’s Answer (“Ans.,” mailed April 5, 2017) and Final Office
Action (“Final Act.,” mailed August 10, 2016).
3 Claims 2, 8, and 17 were previously cancelled. App. Br. 16—22, Claims
App’x.
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Application 13/726,595
the at least one selected object is a portion of the first
real-time scene, such that at least another portion of the
first real-time scene is unselected;
subsequent to receiving the first user input, causing
display of a second real-time scene on the view-finder;
causing display of the at least one selected object on the
view-finder displaying the second real-time scene; and
in response to a user capture input, a) causing a second
image to be captured, wherein the second image reflects
the second real-time scene, b) combining the at least one
selected object and the second image to create a
composite image, and c) causing the composite image to
be stored.
App. Br. 16, Claims App’x.
Independent claims 16 and 22 recite similar limitations as claim
1, and Appellant argues they are allowable for the same reasons as
argued for claim 1. App. Br. 8—9; Reply Br. 1—5.
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Application 13/726,595
GROUNDS OF REJECTIONS
The Examiner rejected claims 1, 4, 5, 7, 15, 16, and 19—24 under
35 U.S.C. § 103(a) as obvious over the combination of Sorek (U.S.
2010/0172586 Al; July 8, 2010) and Kinjo (U.S. 2002/0001036 Al; Jan. 3,
2002).
The Examiner rejected claims 3 and 18 under 35 U.S.C. § 103(a) as
obvious over the combination of Sorek, Kinjo, and Salgian (U.S.
2008/0089556 Al; Apr. 17, 2008).
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as obvious
over the combination of Sorek, Kinjo, and Fukumoto (U.S. 2011/0242024
Al; Oct. 6, 2011).
The Examiner rejected claims 9, 10, and 12 under 35 U.S.C. § 103(a)
as obvious over the combination of Sorek, Kinjo, and Boo (U.S.
2006/0251328 Al; Nov. 9, 2006).
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as obvious
over the combination of Sorek, Kinjo, Boo, and Salgian.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious
over the combination of Sorek, Kinjo, and Zhou (U.S. 2008/0037852 Al;
Feb. 14, 2008).
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious
over the combination of Sorek, Kinjo, and Krtolica (U.S. 2003/0012438 Al;
Jan. 16, 2003).
ISSUE
Appellant’s arguments present us with the following issue:
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Application 13/726,595
Did the Examiner err in finding the combination of Sorek and Kinjo teaches
or suggests “in response to a user capture input, a) causing a second image to
be captured, wherein the second image reflects the second real-time scene,
b) combining the at least one selected object and the second image to create
a composite image, and c) causing the composite image to be stored,” as
recited in claim 1 and similarly recited in independent claims 16 and 22?
App. Br. 8—13; Reply Br. 1—5.
ANALYSIS
Regarding independent claims 1,16, and 22, the Examiner finds that
Sorek’s method for generating a collage of images in real-time in
combination with Kinjo’s image processing method teaches or suggests the
claimed invention. Final Act. 6—7 (citing Sorek || 30, 32, 49, 50, Figs, la—
d; Kinjo 64, 78). Specifically, the Examiner finds Sorek’s guideline
preview is the same as the claimed view-finder and displays an object from a
captured first image while displaying a second real-time scene, and upon
capturing the second image, the first and second images are automatically
superimposed and combined into a composite image and then stored in
accordance with Kinjo’s teaching. Final Act. 7; Ans. 3 (citing Sorek || 47,
50), 6 (citing Sorek | 50, Fig. 2).
Appellant argues Sorek’s preview is not a view-finder that displays an
object from a captured first image while displaying a second real-time scene
prior to capturing the second image. App. Br. 10; Reply Br. 1—3, 5. Rather,
Appellant argues, Sorek captures the first and second images separately, and
then a preview of a composite image is generated, as seen in the guideline
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Appeal 2017-008976
Application 13/726,595
preview mode, for user modification or acceptance. App. Br. 8, 10; Reply
Br. 4.
We agree with Appellant. Sorek teaches a digital camera with a
digital display, and Sorek Figures lb and Id depict the first and second
images as being captured separately. Sorek 149, Figs, lb, Id. Figure 2 of
Sorek depicts the Guideline Preview, which allows a user to create and
modify a composite image from the images of Figures lb and Id. Sorek
Tflf15—24, 31,51, Fig. 2. However, the Examiner does not show, nor do we
find, that Sorek teaches that the view-finder displays the composite image to
the user in real-time prior to capture, or that the selected object from the first
image is displayed on the view-finder while displaying the second real-time
scene. Thus, we agree with Appellant that Sorek’s Guideline Preview is not
the same as a view-finder displaying a selected object from the first image
on the view-finder while displaying a second real-time scene prior to capture
of the second image, as required by the claims.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1,16, and 22 or claims 3-7, 9-15, 18—21, 23, and 24
which are dependent upon one of independent claims 1, 16, or 22.
NEW GROUND OF REJECTION
Claims 1,16, and 22 are newly rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Sorek and Kinjo.
As discussed above, we agree with Appellant that Sorek does not
teach a view-finder displaying a selected object from a first image on the
view-finder while displaying a second real-time scene, as claimed.
However, we find that Kinjo teaches these limitations. Kinjo teaches a
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Application 13/726,595
digital camera with a monitor that displays real-time scenes of images being
taken. Kinjo 154. In a first real-time scene, Kinjo teaches that subject A is
photographed and a reference area is selected (i.e., the reference area is the
selectable object from first real-time scene) by the user. Kinjo 155. The
user then prepares to photograph subject B (in a second real-time scene), and
the monitor on the camera shows the selectable object superimposed with
the second real-time scene. Kinjo 1 59, Fig. 3B. Kinjo teaches that the user
can use the monitor for size comparisons and measurements and to alter the
light of the selectable object and the second-real-time scene prior to
capturing the second image. Kinjo H 57, 115. Additionally, Kinjo teaches
that the photograph of subject B is stored in image memory after it is taken.
Kinjo 1122, 59. It would have been obvious to one of ordinary skill in the
art to modify Sorek’s method for generating a collage (composite image),
where a user captures a second image (Sorek Figs, lc, Id) and generates a
composite image with a selected object from the first image (Sorek Fig. 2),
with Kinjo’s real-time view-finder display to view the selected object from
the first image superimposed over the real-time scene prior to capturing the
second image. Kinjo H 54—56, 59; see Sorek 1 50, Fig. 2. One of ordinary
skill in the art would have been motivated to do so in order to provide the
user with flexibility in determining the right composition for the composite
image before the second image or subsequent images are taken in response
to a user capture input and the composite is generated and stored so a user
can reference the image later. Kinjo H 57, 115.
We designate our analysis to be a new ground of rejection of
independent claims 1,16, and 22 under 35 U.S.C. § 103 as obvious over the
combination of Sorek and Kinjo.
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OTHER ISSUES
We have made a new ground of rejection regarding independent
claims 1,16, and 22 under 37 C.F.R. § 41.50(b). However, we have not
reviewed dependent claims 3—7, 9-15, 18—21, 23 or 24 to the extent
necessary to determine whether these claims would have been obvious over
the combination of Sorek and Kinjo or other prior art. We leave it to the
Examiner to determine the appropriateness of any further rejections based on
these other references. Our decision not to enter a new ground of rejection
for all claims should not be considered as an indication regarding the
appropriateness of further rejection or allowance of the non-rejected claims.
DECISION
The Examiner’s rejections of claims 1, 3—7, 9—16, and 18—24 are
reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION for claims 1, 16, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sorek and Kinjo.
Section 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
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Application 13/726,595
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under §41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
REVERSED; 37 C.F.R, § 41.50(b)
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