Ex Parte Gloyd et al

Patent Trial and Appeal Board

Feb 26, 2016

11430639 (P.T.A.B. Feb. 26, 2016)

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
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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
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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
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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.
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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
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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
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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
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