Ex Parte Davis

Board of Patent Appeals and Interferences

Jul 30, 2010

10086180 (B.P.A.I. Jul. 30, 2010)

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.
10/086,180 02/25/2002 Bruce L. Davis P0585 1232
23735 7590 08/02/2010
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
LAZARO, DAVID R
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
08/02/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE L. DAVIS
____________

Appeal 2009-007031
Application 10/086,1801
Technology Center 2400
____________

Before JAMES D. THOMAS, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed February 25, 2002. The real party in interest is Digimarc
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007031
Application 10/086,180

2

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-15, 27, 28, and 33, which are all the claims
pending in the application, as claims 16-26, 29-32, and 34-36 are withdrawn.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates to private use of photos maintained in
archives of State Departments of Motor Vehicles or the like. (Spec., 1:8-9.)

Claim 1 is illustrative:
1. A method of printing a trusted image, comprising:
an individual user electronically contacting a
governmental agency, soliciting an image depicting the user stored in
an archive maintained by said governmental agency;
electronically receiving said image from said contacted
governmental agency; and printing a document incorporating said
image.

Appellant appeals the following rejections:
1. Claims 1-3, 5, 10, 11, 27, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Dellert (US 5,760,916, June 2, 1998); and
2. Claims 4, 6-9, 12-15, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Dellert and Rhoads (US 5,841,886, Nov. 24,
1998).

Appeal 2009-007031
Application 10/086,180

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FACTUAL FINDINGS
Dellert
1a. Dellert discloses a “method by which image signals
corresponding to hardcopy photographs can be readily retrieved and
distributed as desired by a user.” (Col. 1, ll. 7-9.)
1b. In Dellert, “hub station 20 may be set such that any image set
signal received will be stored and indexed with its associated identification
signal.” (Col. 9, ll. 13-15.)
1c. In Dellert, “such a system allows a user to consistently obtain
further desired services, such as forwarding copies of the images to others or
obtaining products incorporating the images, without regard to the location
at which the images were scanned . . . . ” (Col. 2, ll. 21-25.)
Rhoads
2. Rhoads discloses that “the present invention is a method of
correlating, with a photograph, information about an individual whose image
appears in the photograph.” (Col. 1, ll. 46-48.)

ANALYSIS
Claims 1, 2, 10, 11, 27, and 33
Issue 1: Did the Examiner err in finding that “contacting a
government agency” is non-functional descriptive material, and Dellert
discloses soliciting an image from an agency, as claimed in claim 1?

Appellant contends that “[n]othing in Dellert would have led an
artisan to grant consumer access to a governmental image archive.” (App.
Br. 8.) Appellant further contends that “[t]he Examiner disregarded
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limitations expressed in the claim – asserting that language requiring a
‘governmental agency’ are entitled to no patentable weight.” (Id.)
The Examiner found “an agency maintaining the image archive as
taught by Dellert would be the same as a governmental agency maintaining
an image archive.” (Ans. 5.) We agree with the Examiner.

In essence, the Examiner found that Appellant’s claimed
“governmental agency” is merely a label given to the agency providing the
images, yet the claims do not show how the governmental agency affects the
accessing or delivering of the images. We agree. Here, the distinction
between where the image data comes from is not patentably consequential
because it is a distinction grounded on nonfunctional descriptive material.
An Examiner must consider all claim limitations, including
descriptive material, when determining patentability of an invention over the
prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). However, the
examiner need not give patentable weight to descriptive material that does
not have a new and obvious functional relationship with the substrate
(nonfunctional descriptive material). See Gulack, 703 F.2d at 1386; see also
In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
Here, there is no functional relationship between the governmental
agency and the step of providing images. For example, Appellant has not
shown how the “government agency” relates to and/or controls the request
for and transmitting of images. Thus, the claimed feature reads on any
“agency” providing images.
Dellert discloses a method for requesting and retrieving images, using
a remote terminal, from an archive at a hub station (FF 1a-c.) Thus, the
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claimed “maintained by a governmental agency” reads on Dellert’s hub
station electronically providing stored images to a requesting user.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Appellant repeats the
same argument made for claim 1 for claims 2, 10, 11, 27, and 33 (App. Br.
7-12). We will, therefore, treat claims 2, 10, 11, 27, and 33 as falling with
claim 1. Therefore, we affirm the Examiner’s § 103 rejection of claims 1, 2,
10, 11, 27, and 33.

Claim 3
Issue 2: Did the Examiner err in finding that Dellert discloses that the
document is a photo identification document?
Appellant contends “Dellert has no teaching of a photo identification
document.” (App. Br. 9.)
The Examiner found that “[a] photograph is by nature an
identification document of the image it is depicting. The claimed subject
matter does not indicate any specific details or formatting required other
than photo identification.” (Ans. 14.) We agree with the Examiner.
Claim 3 merely requires a “photo” identification document, as no
further descriptive subject matter is set forth. As such, we agree that a
photograph in and of itself represents a basic photo identification.
Furthermore, we find that providing the document as a photo
identification document is merely a statement of intended use or purpose.
An intended use of a claimed device does not limit the scope of the claim.
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (product claim’s
intended use recitations do not give patentable weight); see also Boehringer
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Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003) (“An 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.”). Here, Appellant’s purpose of
printing an identification document merely defines an intended use of the
retrieved image.
Claim 3 was argued separately (App. Br. 9-10). Thus, Appellant has
not persuaded us of error in the Examiner’s conclusion of obviousness for
representative claim 3. Therefore, we affirm the Examiner’s § 103 rejection
of claim 3.

Claim 5
Issue 3: Did the Examiner err in finding that using “a motor vehicle
licensing agency” and “a driver license photo” amounts to using
nonfunctional descriptive material?
Appellant contends that “such terms are integrally, and functionally,
involved in the recited acts.” (App. Br. 11.)
The Examiner found that “appellant’s own remarks indicating that an
artisan would recognize that the image archive is the same regardless of the
maintaining entity (i.e., there is no functional difference)” is evidence of
obviousness. (Ans. 13.) We agree with the Examiner.
As noted above regarding claim 1, and equally applied here, the
Examiner need not give patentable weight to descriptive material that does
not have a new and obvious functional relationship with the substrate. Here,
the “motor vehicle agency” and the “driver license photo” do not have a
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functional relationship with the “electronically contacting,” “electronically
receiving,” and “printing” elements of the claim.
Claim 5 was argued separately (App. Br. 10-12). Thus, Appellant has
not persuaded us of error in the Examiner’s conclusion of obviousness for
claim 5. Therefore, we affirm the Examiner’s § 103 rejection of claim 5.

Claims 4, 6-9, 12-15, and 28
Issue 4: Did the Examiner err in combining Dellert and Rhoads?
Appellant contends that “the rejection is silent as to why such
teaching would have been combined with Dellert’s online photo ordering
method. The rejection makes an unexplained leap. It lacks the ‘articulated
reasoning with some rationale underpinning’ required by KSR.” (App. Br.
13.)
The Examiner found:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to take the method disclosed
by Dellert and modify it as indicated by Rhoads such that said
document is an identification badge. One would be motivated to
have this as identification badges are desirable and widely used
for identification purposes.
(Ans. 8) (citation omitted.)
Here, the Examiner articulates that identification badges are desirable
and widely used, as shown in Rhoads (see Ans. 8). We add that Dellert is
concerned with using electronic images to form products incorporating the
images (FF 1c) and Rhoads is similarly concerned with correlating a
photograph with information about the individual whose image appears in
the photograph (FF 2). As such, both cited references are concerned with
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incorporating photographs into other products. Thus, we find that there is
not an “unexplained leap” from Dellert’s system to Rhoads identification
badge.
The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider “the background knowledge possessed by a person having ordinary
skill in the art” and “the inferences and creative steps that a person of
ordinary skill in the art would employ.” See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions,” and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id at 417, 418.
Here, we find that the Examiner’s articulated reason noted supra
sufficiently shows some rational underpinning given that both Dellert and
Rhoads are concerned with incorporating images into products.

For claims 6-9, 12-15, and 28, Appellant essentially repeats the same
argument made for claim 4. We will, therefore, treat claims 6-9, 12-15, and
28 as falling with claim 4 (App. Br. 13-15). Based on the record before us,
we find that the Examiner did not err in rejecting claims 4, 6-9, 12-15, and
28. Accordingly, we affirm the rejections of claims 4, 6-9, 12-15, and 28.

DECISION
We affirm the Examiner’s § 103 rejections.
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Application 10/086,180

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

erc

DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON OR 97008