Ex Parte Dalton et al

Patent Trial and Appeal Board

Feb 28, 2013

11260354 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAN L. DALTON and WILFRED F. BRAKE
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Appeal 2010-012189
Application 11/260,3541
Technology Center 2600
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed on Oct. 27, 2005. The Real Party in Interest is Hewlett
Packard Development Company LP. (App. Br. 1.)
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Application 11/260,354

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STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4 and 6-20. Claim 5 was canceled during prosecution.
(App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Invention
Appellants’ invention is directed to a demonstration (“demo”) dock
that includes dock firmware detectable by a digital camera inserted therein
or coupled thereto (i.e., docked), which identifies the dock as a demo dock.
(Spec. 2, ¶ [0009].)2
Representative Claim
1. An apparatus comprising:
a demo dock comprising a dock connector and a
delectable feature that identifies the demo dock; and a digital
camera connectable to the demo dock that comprises demo
firmware that begins an interactive demonstration of the camera
in response to the removal of the camera from the dock and
resets the camera for normal camera operation when the
demonstration is terminated.

Rejections on Appeal
1. The Examiner rejects claims 1, 3, 4, 7, 8, 11, 13-15, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Nozawa (JP -2003-
271117 published Sep. 25, 2003) and Fredlund (U.S. Pat. Pub. No.
2004/0041933 A1, published Mar. 4, 2004).

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed Jul. 19, 2010; and Appeal Brief (“App. Br.”) filed Mar. 9, 2010. We
also refer to the Examiner’s Answer (“Ans.”) mailed June 11, 2010.
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2. The Examiner rejects claims 2, 6, 9, 10, 12, 16, and 18-20
under 35 U.S.C. § 103(a) as being unpatentable over Nozawa, Fredlund, and
Battles (US Pat. Pub. No. US 2004/0070681 A1, published Apr. 15, 2004).
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claims 1 and 18. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
1. Under § 103, did the Examiner err in in finding that the cited
references collectively would have taught or suggested:
a digital camera connectable to the demo dock that comprises
demo firmware that begins an interactive demonstration of the
camera in response to the removal of the camera from the dock
and resets the camera for normal camera operation when the
demonstration is terminated.
(emphasis added) within the meaning of independent claim 1 and the
commensurate language of independent claim 11?
2. Under § 103, did the Examiner err in combining Nozawa and
Fredlund?
3. Under § 103, did the Examiner err in finding that the cited
references collectively would have taught or suggested “upon removal,
presenting an interactive demonstration using audio-visual capabilities of the
camera, and activating certain navigation buttons of the camera to allow
interaction with the demonstration,” within the meaning of independent
claim 18?

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FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the analysis as follows.

ANALYSIS
Claims 1-4, and 6-17
Appellants argue, inter alia;
However, none of these three scenarios, as characterized
by the Examiner, teaches or suggests that the demo firmware
begins an interactive demonstration of the camera in response
to the removal of the camera from the dock, as recited in claim
1. None of the three scenarios by which demo mode is initiated
in the Fredlund reference teach or suggest that the stimulus for
such demo mode initiation is the removal of the camera from
the demo dock.
(App. Br. 7.)
The Examiner found that the cited references, notably Nozawa, taught
a demo dock comprising a dock connector (cradle 200) and a detectable
feature that identifies the demo dock (battery-charger primary detecting
element 112). (Ans. 4.) The Examiner also found that the cited references
taught a digital camera that comprises demo firmware that begins an
interactive demonstration of the camera. (Ans. 5.) We agree with and adopt
the Examiner’s findings with respect to independent claims 1 and 11.
Initially, we note that the features argued by Appellants merely
constitute non-functional descriptive material (data) and statements of
intended use of the recited data. Representative apparatus claim 1 simply
recites an apparatus that comprises a demo dock and a digital camera that is
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connectable to the demo dock. Claim 1 then recites functionality of the
demo firmware to begin an interactive demonstration. Thus Appellants’
arguments are directed to the software (firmware) contained within the
apparatus. We conclude that the demo firmware does not further limit the
structure of the claimed apparatus. The firmware contained in the digital
camera constitutes non-functional descriptive material, which “does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (Fed. Cir. Appeal No. 2006-1003, aff’d, (Rule 36) (June 12,
2006) (“wellness-related” data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method). See also
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at
1887-90 (discussing non-functional descriptive material). Similarly, “[a]n
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly we need
not attribute any distinguishing character to the asserted claim features.
Based on this record, Appellants’ have not shown that the Examiner
erred in rejecting apparatus claims 1 and 11.
Combinability
Appellants’ argue, inter alia;
There is no articulated reason with some rational underpinning
that would have prompted one of ordinary skill to combine the
prior art elements in the manner claimed because the Nozawa
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reference provides the benefits stated by the Examiner without
requiring the teachings of the Fredlund reference.
(App. Br. 10.) Appellants contend that: 1) the Nozawawa reference, by
itself, allows the user to learn the features of the camera via the demo when
the camera is out of the dock – it does not require the teachings of the
Fredlund reference in order to do so and 2) the immediacy with which the
camera of the Nozawa reference may be operated, and pictures taken, is not
improved by combining in the teachings of Fredlund. (App. Br. 10-11.)
Where, as here, an invention requires more than a straight-forward
combination of the prior art, the Examiner must articulate a reasoning with
some rational underpinning to support the legal conclusion of obviousness.3
We conclude the Examiner provided an articulated reasoning with some
rational underpinning for combining the cited references, i.e., improved
functionality (allowing a user to immediately view a demonstration). (Ans.
8-9.) Moreover, after considering the evidence before us, it is our view that
Appellants’ arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art and
are, therefore, ineffective to rebut the Examiner’s prima facie case of
obviousness.
“What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)

3 “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). The test for obviousness is not whether
the features of a reference may be bodily incorporated into the structure of
another reference but what the combined teachings of those references
would have suggested to one of ordinary skill in the art. In re Keller, 642
F.2d 413, 425 (CCPA 1981). This reasoning is applicable in the present
case.
Based on the two issues discussed above, we conclude that the
Examiner did not err in rejecting representative claim 1. Accordingly, we
affirm the Examiner’s rejection of claims 1, 3, 4, 7, 8, 11, 13-15, and 17.
Claims 2, 6, 9, 10, 12, and 16
As noted above, the Examiner rejected dependent claims 2, 6, 9, 10,
12, and 16 as being unpatentable over Nozawa, Fredlund, and Battles.
Appellants did not argue the patentability of the above-mentioned claims
with particularity. (App. Br. 13-14.) Therefore, we affirm the rejection of
the above-mentioned claims for the same reasons discussed with respect to
independent claims 1 and 11.
Claims 18-20
Upon removal, presenting an interactive demonstration
Similar to the arguments discussed above regarding independent claim
1, Appellants contend that the cited combination of references fail to teach
or suggest the limitation that the camera begins an interactive demonstration
in response to the removal of the camera from the dock. (App. Br. 12.) We
agree essentially for the reasons argued by Appellants.
The Examiner argues that Fredlund teaches a system that goes into
demonstration mode and can be programmed to start the demonstration at
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any time, which includes when the camera is out of the cradle. (Ans. 22.)
However, we agree with Appellants that, according to the claim language,
removal of the camera from the dock is the stimulus to begin an interactive
demonstration of the camera. (App. Br. 12.)
Based on this record, we conclude that the Examiner erred in rejecting
independent claim 18. Accordingly, we reverse the Examiner’s rejection of
claims 18-20.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-4 and 6-17 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims 18-
20 under 35 U.S.C. § 103(a)

DECISION
We affirm the Examiner’s rejection of claims 1-4 and 6-17 under 35
U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 18-20 under 35 U.S.C.
§ 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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