Ex Parte Gloyd et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201611430639 (P.T.A.B. Feb. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111430,639 23990 7590 DOCKET CLERK FILING DATE 0510912006 03/01/2016 P.O. DRAWER 800889 DALLAS, TX 75380 FIRST NAMED INVENTOR Daniel Monteith Gloyd 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. 2006.03.013.LDO 6870 EXAMINER MATTHEWS, ANDRE L ART UNIT PAPER NUMBER 2621 NOTIFICATION DATE DELIVERY MODE 03/01/2016 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): patents@munckwilson.com munckwilson@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL MONTEITH GLOYD, GREGORY SCOTT FOGEL, and JENNIFER MARIE LEVIN Appeal2014-003982 Application 11/430,639 Technology Center 2600 Before ROBERT E. NAPPI, JAMES W. DEJMEK, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Samsung Electronics Co., Ltd. as the real party in interest. App. Br. 4. Appeal2014-003982 Application 11/430,639 THE INVENTION The claimed invention is directed to a mobile handset having a camera with a touch sensitive keypad. The camera display is configured to display (1) a frame and a first icon when a first key is touched and (2) a second icon when the first key is pressed. Spec. i-fi-18-10. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A mobile handset having a camera, the mobile handset compnsmg: a touch-sensitive keypad having a plurality of keys; a display configured to display a frame and a first icon in response to a first key being touched, the frame configured to assist in framing a subject to be photographed, the first icon associated with an adjustable parameter of the camera, the display further configured to display a second icon in response to the first key being pressed, the second icon associated with an adjustment control for the adjustable parameter of the camera; and a processing unit configured to adjust the adjustable parameter of the camera in response to the first key being pressed. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Choi US 6,211,856 Bl Apr. 3, 2001 Ostergard US 2004/0061685 Al Apr. 1, 2004 Tatami ya US 2004/0183934 Al Sept. 23, 2004 Nobels US 2005/0190279 Al Sept. 1, 2005 Dowe US 2007/0040810 Al Feb.22,2007 2 Appeal2014-003982 Application 11/430,639 REJECTIONS Claims 1---6, 11-14, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nobels in view of Tatamiya and Dowe. Final Act. 2-11. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nobels in view of Tatamiya, Dowe, and Ostergard. Final Act. 11-12. Claims 7-9, 15-17, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nobels in view of Tatami ya, Dowe, and Choi. Final Act. 12-17. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' contentions that the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellants. We disagree with Appellants' arguments. Claims 1, 2, and 4--20 Appellants argue Tatamiya does not teach or suggest "a display configured to display a frame and a first icon in response to a first key being touched" as recited in claim 1. App. Br. 13-18. First, Appellants argue the Examiner does not indicate which element of Fig. 6A teaches the frame. According to Appellants, the brackets cannot be the frame because there is no discussion of the brackets in Tatami ya. App. Br. 14; Reply Br. 3--4. Second, even if the brackets were a frame, Appellants argue the brackets do 3 Appeal2014-003982 Application 11/430,639 not satisfy the requirements of claim 1 because the brackets are always displayed and are not being displayed in response to a first key being touched. App. Br. 17-18; Reply Br. 4--5. The Examiner finds the brackets in Tatamiya Figure 6A-which also appear in Figures 6B and 6C-to be frames that are displayed when a button in pressed. Final Act. 2 (citing Tatamiya Fig. 6A, i-fi-135-36); Advisory Act. 2; Ans. 18-19. The Examiner further finds the brackets (frames) are shown in Figure 6B along with a first icon once a button is touched. Ans. 18. The Examiner also concludes that claim 1 merely requires displaying the frames and a first icon in response to the first button being touched which Tatamiya's Figures 6A and Figure 6B teaches that both items are not displayed until the button is touched. Id. We are not persuaded by Appellants' argument that the Examiner erred in finding Tatamiya teaches the disputed claim limitations. First, we agree with the Examiner that the brackets shown in Tatamiya Figures 6A-C are a frame as defined by the claims. Claim 1 recites that the frame is "configured to assist in framing a subject to be photographed." We agree with the Examiner that the Tatamiya brackets are a frame that assists in framing a subject to be photographed. Although the Examiner has not cited any discussion of the purpose of the brackets, the relevant portion of the drawings in the prior art alone can be the basis for a rejection. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); Karsten Mf'g Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1384 (Fed. Cir. 2001) (claims to golf club anticipated by picture of prior art golf club). Second, we do not agree with Appellants' claim construction. During prosecution, claims must be given their broadest reasonable interpretation 4 Appeal2014-003982 Application 11/430,639 while reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although the claim requires the frame and a first icon to be displayed in response to a first button being touched, there is nothing in the claim language that prevents the frame from being displayed prior to the button being pushed. To the contrary, the claim is silent as to what is shown in the display prior to the first button being touched. Claim 1 uses the open-ended transition "comprising" and, therefore, the claim does not exclude additional uncited elements. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005). Because the argument is not commensurate with the scope of the claims, it is unpersuasive. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Further, we agree with the Examiner's claim construction and finding that both the bracket and first icon are not displayed until the first button is touched. Accordingly, we sustain the rejection of independent claim 1, along with the rejection of claims 11 and 18, which are argued on the same grounds (App. Br. 19), and dependent claims 2, 4--10, 12-17, 19, and 20, which are not argued separately (App. Br. 20-21 ). Claim 3 Claim 3 recites "the frame displayed on the display comprises a plurality of lines disposed generally at comers of the subject to be photographed." App. Br., App'x A at 1. Appellants argue even if the brackets are a frame, Figure 6A does not teach or suggest a plurality of lines disposed at the comers of the subject to be photographed. App. Br. 19-20. 5 Appeal2014-003982 Application 11/430,639 Appellants also argue the brackets "are so close to the center of the display and so far from the comers of the display that it is impossible to reasonably argue that the brackets are disposed generally at the comers of the subject to by photographed." See App. Br. 20. In making the argument, Appellants rely in Figure 6b of the instant application, reproduced below, to show what the claim covers: F!G~6b Figure 6b illustrates a display of a camera viewfinder according to an embodiment of the present disclosure. Spec. i-f 18. The Examiner finds the brackets in Tatamiya Fig. 6A are a "plurality of lines disposed generally at comers of the subject to be photographed." Final Act. 4. The Examiner further concludes the lines "could be at the comers but do not have to be at the comers of the object." Advisory Act. 2; see also Ans. 19. First, we are not persuaded by Appellants' comparison of the prior art with the embodiment shown in figure 6b of the instant application that the Examiner erred. We will not read limitations from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Regardless of the general contentions and imputed intended meanings articulated by Appellants in the Appeal Brief, "[i]t is the claims that measure the 6 Appeal2014-003982 Application 11/430,639 invention." See SRI Int'! v. Matsushita Elec. Corp. ofAm., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en bane) (citations omitted). Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994)). "[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments .... [C]laims may embrace 'different subject matter than is illustrated in the specific embodiments in the specification."' Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations omitted). Although Figure 6b of the instant application shows a frame with lines at all four comers, that is not required by language of claim 3. Instead, the claim only recites "comers" without specifying a specific number of comers beyond the need to have a plurality of comers. Accordingly, we agree with the Examiner's conclusion that the broadest reasonable interpretation of the claim does not require lines at all comers of the object. To the extent that Appellants' argument is based on an incorrect claim construction, we do not find that argument persuasive. Self, 671 F.2d at 1348 Second, based on the claim construction above, we are not persuaded by Appellants' argument that the object to be photograph cannot be framed by the brackets. One can use a camera to photograph objects that will be 7 Appeal2014-003982 Application 11/430,639 shown in various portions of the screen. For example, the brackets of Tatamiya Figure 6A can be used to frame the comers of an item located in the center of the display. Therefore, we agree with the Examiner finding Tatamiya teaches the additional limitation recited in claim 3. Accordingly, we sustain the Examiner's rejection of claim 3. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1-20. 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 Copy with citationCopy as parenthetical citation