Ex Parte Gann

Patent Trial and Appeal Board

Jun 27, 2016

13062428 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/062,428 03/04/2011
22879 7590 06/29/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Robert G. Gann
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.
82660127 3979
EXAMINER
YODER III, CHRISS S
ART UNIT PAPER NUMBER
2664
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT G. GANN
Appeal2015-001584
Application 13/062,428
Technology Center 2600
Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
KAMRAN JIVANI, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON i\.PPEi\L
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-7 and 9-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-001584
Application 13/062,428
STATEMENT OF THE CASE
The present patent application "relates to image capturing devices and
more particularly to minimally processing displayed images captured from a
burst." Spec. 1 :4--5. Claim 1 illustrates the claimed subject matter:
1. A method, comprising:
capturing a sequence of digital pictures in succession with
an image capture device;
performing first processing to render the pictures at a
lower quality to a display of the image capture device;
receiving a user selection of one of the pictures; and
performing second processing with the image capture
device on the selected picture to cause rendering of the selected
picture at a higher quality, wherein the second processing is
selected from the group consisting of red eye removal, teeth
whitening, and noise filtering.
REJECTIONS
Claims 1-7 and 9-15 stand rejected under 35 U.S.C. § 112 i-f 2 as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention.
Claims 1-7, 9-11, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Wang (US 7, 710,488 B2; May 4, 2010) ("Wang") and
Feldis, III (US 2003/0007078 Al; Jan. 19, 2003) ("Feldis").
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang, Feldis, and Prentice et al. (US 2006/0152609 Al; July 13, 2006)
("Prentice").
2
Appeal2015-001584
Application 13/062,428
ANALYSIS
§ 112 Rejection
With respect to the Examiner's rejection of claims 1-7 and 9-15
under 35 U.S.C. § 112 i-f 2, Appellant argues claims 1-5 and 11-15 together.
See App. Br. 4---6. We select claim 1 as representative of the rejection of
these claims. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv). Appellant also argues claim
6, 7, and 10 together and claim 9 separately. See App. Br. 6. We select
claim 6 as representative of the rejection of claims 6, 7, and 10. See 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
Independent claim 1 recites in relevant part "performing first
processing to render the pictures at a lower quality" and "performing second
processing ... to cause rendering of the selected picture at a higher quality."
The Examiner rejected these claim under 35 U.S.C. § 112 i-f 2 as indefinite
because neither the claim nor the specification provides a standard for
determining whether a picture has been rendered at a "lower quality" or a
"higher quality." See Final 2-3; Ans. 14--15.
Appellant argues "[a] person of ordinary skill in the art would
understand that the 'lower quality' recited in the 'performing first
processing' clause of claim 1 refers to quality of a picture that is less (in
terms of quality) than the 'higher quality' provided by the 'second
processing.'" App. Br. 5. Moreover, according to Appellant, the
specification describes a first processing stage that performs "minimal"
processing to produce a low quality image and a second processing stage
that performs "full processing" to produce a higher quality image. Id. See
also Reply Br. 1--4.
3
Appeal2015-001584
Application 13/062,428
We find Appellant's arguments unpersuasive. As concluded by the
Examiner, even if one of ordinary skill in the art might infer that "pictures at
a lower quality" refers to pictures with lower quality than "the selected
picture at a higher quality," claim 1 encompasses other interpretations. See
Ans. 10. For example, "pictures at a lower quality" may refer to pictures at
a lower quality than the "captur[ ed] ... sequence of digital pictures" recited
in the first method step. Id.
Moreover, under Appellant's construction, the method recited in claim
1 must process "the selected picture at a higher quality" before "first
processing to render the pictures at a lower quality" in order to know what a
"lower quality" picture is during the "first processing." But claim 1 requires
rendering "the selected picture at a higher quality" after rendering the "lower
quality" pictures. Specifically, claim 1 recites "capturing a sequence of
digital pictures," "performing first processing to render the pictures at a
lower quality," "receiving a user selection of one of the pictures," and then
"performing second processing ... on the selected picture to cause rendering
of the selected picture at a higher quality." Claims Appendix i (emphases
added). Because the recited method renders "the selected picture at a higher
quality" after rendering the "lower quality" pictures, the "higher quality"
selected picture cannot provide a reference for determining the quality of the
"lower quality" picture when the method generates the "lower quality"
picture.
The cited specification sections also fail to provide a standard for
determining whether a picture is a "lower quality" picture. For example, the
cited sections disclose a minimal processing stage that produces low quality
images "processed just enough to display the images to a display,"
4
Appeal2015-001584
Application 13/062,428
"sufficient for display on a small handheld portable image capture device,"
or "that appear good or acceptable on a display of the image device." Spec.
3 :30-4:3, 6:26-28. But the cited sections do not provide a standard for
ascertaining what is "just enough to display the images to a display,"
"sufficient for display on a small handheld portable image capture device,"
or "good or acceptable on a display of the image device." See id. The cited
specification sections similarly fail to provide a standard for determining
whether a selected picture is a "higher quality" picture. See id. at 3:29-4:10,
6:23-7:2, 7:20-8: 10, 8: 17-19.
For the above reasons, we sustain the Examiner's rejection of claims
1-5 and 11-15 under 35 U.S.C. § 112 i-f 2. We also sustain the Examiner's
rejections of claims 6, 7, 9, and 10 under 35 U.S.C. § 112 i-f 2 for the same
reasons, as Appellant relies on similar arguments to those discussed above.
See App. Br. 6; Reply Br. 4--5.
§ 103 Rejections
With respect to the Examiner's rejection of claims 1-7 and 9-15
under 35 U.S.C. § 103(a), Appellant groups the claims as follows: (1)
claims 1-5; (2) claims 6, 7, 9, 10; (3) claims 11, 13-15; and (4) claim 12.
See App. Br. 7-10. We select claims 1, 6, and 11 as representative of the
rejection of their respective claim groups. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends the Examiner's combination of Wang and Feldis
fails to teach or suggest the following limitation recited in claim 1:
"performing second processing with the image capture device on the
selected picture to cause rendering of the selected picture at a higher quality,
wherein the second processing is selected from the group consisting of red
5
Appeal2015-001584
Application 13/062,428
eye removal, teeth whitening, and noise filtering." App. Br. 7-9. Appellant
argues claim 1 requires the same "image capture device" that "captur[ es] a
sequence of digital images" also "perform[s] second processing." Id. at 8.
Appellant asserts Feldis teaches that a camera 50 captures images and a
separate host device 200 processes the captured images. Id. Therefore, in
Appellant's view, "Feldis would have led a person of ordinary skill in the art
away from the subject matter of claim 1." Id. Appellant also argues one of
ordinary skill in the art "would clearly recognize that the camera 50 and the
host device/computer 200 ... are separate devices, and would not be
considered an 'image capture device."' Reply Br. 9.
We find Appellant's arguments unpersuasive. Appellants essentially
argue that Feldis teaches away from the Examiner's combination of Wang
and Feldis. "A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). However, "[t]he prior art's mere disclosure
of more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
Here, Feldis merely teaches alternatives and does not criticize,
discredit, or discourage the claimed solution. Feldis discloses that some
cameras have "fast processors [that] enable users to perform heavy data
processing functions, e.g., stitching a plurality of pictures, on the cameras."
Feldis i-f 2. Feldis discloses these cameras "reduce the inconvenience of
6
Appeal2015-001584
Application 13/062,428
subsequently editing or otherwise processing the image data on a host
device, e.g., [a] computer" but explains that "providing cameras with ...
state-of-[the-]art processors increases the cost of the digital cameras." Id.
Feldis goes on to disclose an alternative to providing cameras with state-of-
the-art processors: using cameras without state-of-the-art processors to
capture images and transferring the images to a host device for processing.
See, e.g., id. i-fi-19--12. Feldis "does not criticize, discredit, or otherwise
discourage" having a camera perform image-processing functions. In fact,
Felids discloses it was well known in the art for certain cameras to perform
"heavy data processing functions." Id. i12. Rather, Feldis discloses
alternatives that have their respective advantages and disadvantages.
Accordingly, we find Appellant's teaching away argument unpersuasive.
In any event, the Examiner alternatively construed "image capture
device" to encompass Feldis's camera 50 and host device 200. Ans. 15.
Although Appellant argues one of skill in the art would not consider separate
devices an "image capture device," Appellant's specification indicates
otherwise. For example, the specification discloses "the image capturing
device 100 is not limited to an apparatus but includes computer and
electronic systems." Spec. 6:8-9 (emphasis added). In light of this, one of
ordinary skill in the art would have interpreted "image capture device" to
encompass not only a single device but also computer and electronic systems
such as Feldis's camera and host device system. Accordingly, Appellant's
arguments have not persuaded us the Examiner erred.
For the above reasons, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a). Because Appellant's arguments for claims 6, 11,
and 12 are substantially the same as those discussed above, see App. Br. 7-
7
Appeal2015-001584
Application 13/062,428
10; Reply Br. 6-10, we also sustain the Examiner's rejections of these
claims under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we affirm the rejections of claims 1-7 and 9-
15 under 35 U.S.C. §§ 103, 112.
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
8