Ex Parte Hasegawa

Patent Trial and Appeal Board

Nov 21, 2012

10821477 (P.T.A.B. Nov. 21, 2012)

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.
10/821,477 04/08/2004 Yuka Hasegawa P/29-1718 1055
2352 7590 11/23/2012
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
RAMAKRISHNAIAH, MELUR
ART UNIT PAPER NUMBER
2656
MAIL DATE DELIVERY MODE
11/23/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUKA HASEGAWA

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Appeal 2010-010166
Application 10/821,477
Technology Center 2600
____________

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

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/821,477

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-24 (App. Br. 1). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. A videophone terminal for conducting a call with a
communicating terminal by communicating voice and sound
and an image, comprising:

imaging means for shooting an image;

a microphone for converting voice and sound into an
electric signal;

display means for displaying a screen image;

a communicating means for communicating a call;

storage means for beforehand storing a telephone book
table including a telephone number of a communicating
terminal and a reply method at call reception with a relationship
established therebetween; and

control means for conducting control at reception of a
call from a communicating terminal to convert an image and
voice and sound to be sent from the videophone terminal to the
communicating terminal into data according to a reply method
related to a telephone number of the communicating terminal in
the telephone book table stored in the storage means,

the reply method including a reply using any one of a
camera image, a still image, or a substitute image.

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Claims 1, 2, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sato (U.S. 6,515,695 B1) in view of Nishimura (JP
07-115633) (Ans. 4-6).
Claims 8, 9, 20, and 21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Nishimura (Ans. 6-8).
Claims 3-7 and 15-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sato in view of Nishimura and Saiki (JP 11-234641)
(Ans. 8-10).
Claims 10, 11, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nishimura and Saiki (Ans. 10-11).
Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishimura in view of Nakajima (JP 2003032727A).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in concluding that the combination of
Sato and Nishimura teaches or suggests “conducting control at reception of
a call from a communicating terminal to convert an image and voice and
sound to be sent from the videophone terminal to the communicating
terminal into data according to a reply method related to a telephone number
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Application 10/821,477

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of the communicating terminal” (emphasis added), as recited in independent
claim 1, and as similarly recited in independent claim 13?
2. Did the Examiner err in finding that Nishimura discloses “a
reply using any one of a camera image, a still image, or a substitute image,”
as recited in independent claims 8 and 20?
3. Did the Examiner err in concluding that Saiki teaches a
“substitute image expressing a feature of a movement in an image shot by
the imaging means” by “a movement of a character beforehand set,” as
recited in claims 3 and 15?

ANALYSIS
Issue 1 – Obviousness Rejections of Claims 1, 2, 13, and 14
Appellant contends that the Examiner erred in rejecting independent
claims 1 and 13 as obvious because the combination of Sato and Nishimura
does not teach or suggest the claim limitation emphasized above (App. Br.
4-6). In support of this contention, Appellant argues that Sato does not
“teach, or suggest either conducting control at reception of a call or a reply
method related to a telephone number of the communicating terminal” (id. at
4-5 (emphasis omitted)). Appellant further argues that Sato instead “focuses
on the multimedia communications terminal making outgoing calls” (id. at 5
(emphasis omitted)).
The Examiner concluded, however, that Sato teaches conducting call
reception and replying in accordance with the communicating terminal’s
phone number by teaching that “the phone book memory (11, fig. 1) is used
to store phone numbers of other terminals and information associated
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therewith, which includes a flag indicating whether information of the
present user is sent or not, and a flag indicating whether transmission/
reception of video data is permitted or not” (Ans. 13).
We agree with the Examiner’s conclusion and underlying findings of
fact. Sato discloses that “terminals are classified into terminals supporting
phone communications services capable of providing audio-only
communications, terminals supporting multimedia communications services
capable of providing communications both by audio and video data, and
terminals supporting both phone communications services and multi-media
communications services” (col. 8, ll. 26-33). Sato also discloses that
“protocols p1-p3 are made to correspond to these kinds of terminals” (col. 8,
ll. 34-35). That is, Sato teaches conducting control of a call to respond with
a protocol that depends on the type of terminal making the call.
Appellant also argues that the Examiner erred in rejecting claims 1
and 13 as obvious because the claim should have been interpreted by the
Examiner “to require that the reply method include a reply using a camera
image, a reply using a still image, and a reply using a substitute image”
(App. Br. 5 (emphasis added)). Each of claims 1 and 13, however, recite
“any one of a camera image, a still image, or a substitute image” (emphasis
added). That is, claims 1 and 13 require any one of the three types of images
and not all three images. Moreover, we agree with the Examiner’s
conclusion that Nishimura teaches a “reply method including a still image”
(Ans. 5). In particular, Nishimura discloses “a response message with an
image” (¶ [0010]).
Appellant also argues that “there is no motivation for one of ordinary
skill in the art to combine Nishimura with Sato et al. since, as previously
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stated, Sato et al. only teaches, discloses, and suggests a process of using a
multimedia communications terminal to make outgoing calls, whereas
Nishimura discloses the use of a video telephone system in response to
incoming calls” (App. Br. 5 (emphasis omitted)). Contrary to Appellant’s
argument, however, Sato teaches receiving calls and replying to calls as
explained supra. Moreover, we agree with the Examiner’s conclusion that
one would have been motivated to modify Sato with some of the features of
Nishimura’s reply method to “facilitate audio and video message appropriate
for the caller” (Ans. 5). Accordingly, we find no error in the Examiner’s
obviousness rejections of independent claims 1 and 13 as well as claims 2
and 14 dependent therefrom because Appellant does not set forth any
separate patentability arguments for these dependent claims (see App. Br. 6).

Issue 2 – Anticipation Rejections of Claims 8, 9, 20, and 21
Appellant contends that the Examiner erred in rejecting independent
claims 8 and 20 as anticipated because Nishimura does not disclose “a reply
using any one of a camera image, a still image, or a substitute image” (id.).
Claims 8 and 20, however, require any one of the three types of recited
images and not all three image types because the three image types are
grouped by the claim term “or”. Moreover, as shown supra, Nishimura
discloses a reply including a still image. Accordingly, we find no error in
the Examiner’s obviousness rejections of independent claims 8 and 20 as
well as claims 9 and 21 dependent therefrom because Appellant does not set
forth any separate patentability arguments for these dependent claims (see
App. Br. 7).
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Issue 3 – Obviousness Rejections of Claims 3-7 and 15-19
Appellant contends that the Examiner erred in rejecting claims 3 and
15 as obvious because Saiki does not teach “a ‘substitute image expressing a
feature of a movement in an image shot by the imaging means’ by ‘a
movement of a character beforehand set’” (id. at 7-8). The Examiner
concluded, however, that Saiki “clearly teaches transmitting image data
selected from image stored, and also from external image input such as
Television, VTR, etc” (Ans. 17).
We agree with the Examiner’s conclusion and underlying findings of
fact. Saiki discloses a substitute image as “external input image from TV
and VTR which were connected to the image external input terminal” (¶
[0028]). Saiki also discloses that “a user can operate the image selecting
arrangement 8 manually, and the image data which transmits to a partner can
also be chosen freely” (id.). Accordingly, we find no error in the
Examiner’s obviousness rejections of claims 3 and 15 as well as claims 4-7
and 16-19 dependent therefrom because Appellant does not set forth any
separate patentability arguments for these dependent claims (see App. Br. 7).
We also find no error in the Examiner’s rejection of the remaining
claims on appeal (i.e., claims 10-12, 22-24) because Appellant does not set
forth any separate patentability arguments for those claims (see id. at 7-8).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-7, 10-19, and
22-24 as unpatentable under 35 U.S.C. § 103(a) and claims 8, 9, 20, and 21
as anticipated under 35 U.S.C. § 102(b).
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

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