Ex Parte Hicks

Board of Patent Appeals and Interferences

May 7, 2009

10008032 (B.P.A.I. May. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAY HICKS
____________

Appeal 2008-5910
Application 10/008,032
Technology Center 2600
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Decided:1 May 7, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-4. (see App. Br. 1). We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant invented a method of editing, organizing and distributing
photographic prints from a captured digital image2
Claim 1 which further illustrates the invention follows:

1. A method of editing, organizing and distributing photographic
prints from a captured digital image, said method comprising:
creating a set of preliminary editing parameters to be associated with
and applied to said digital image;
storing a file comprising said editing parameters and said associated
digital image;
creating a database of a plurality of said files of editing parameters
and associated digital images;
creating a second set of editing parameters to be associated with and
applied to said digital images;
selecting at least one of said digital images for presentation on a page;
applying a digital matte element to said selected at least one digital
image;
producing a digital page incorporating said selected at least one image
and said applied matte;

2 See generally App. Br. 1-2.
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presenting said digital page for viewing;
storing said digital page in a computer network accessible storage
location; and
creating a photographic print from said digital page.

The Rejections3
The Examiner relies upon the following prior art references as
evidence of unpatentability:

Yokomizo US 6,522,418 B2 Feb. 18, 2003
Watanabe US 6,578,072 B2 Jun. 10, 2003
Nakabayashi US 7,113,306 B1 Sep. 26, 2006

The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as being
unpatentable over Yokomizo and Nakabayashi.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Yokomizo, Nakabayashi and Watanabe.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

3 See, Ans. 4-8
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Claims 1-3
Appellant argues that Yokomizo does not disclose editing a captured
digital image three times with the third edit being a matting step (App. Br.
4). It is the Examiner’s position that Yokomizo discloses at least three
digital image edits with the third edit being a border processing step (Ans.
9).

ISSUE
Has the Appellant shown that the Examiner erred in finding that the
combination of Yokomizo and Nakabayashi discloses a three-step editing
method for captured digital images?

FINDINGS OF FACT
Yokomizo
1. Figure 1 of Yokomizo is reproduced below:
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Figure 1 discloses the structure of the overall image editing architecture
including the dealer branch shop, the dealer retail shop and the dealer
headquarters shop.
2. The shop personnel or the user can edit the captured images numerous
ways by using a computer and an editing table (col. 3, ll. 58-63). The photos
can be edited by changing the tone of the photo to a simulated oil painting or
a water color painting (col. 3, ll. 64-66). Other edits can be performed such
as sharpening the photo, removing red-eye effects and additional edits not
specified (col. 4, ll. 1-5).
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3. Editorial work can be performed on a single image for assembling a
plurality of images into an album (col. 4, ll. 6-8). Albums can be formed by
inserting the photos into previously designed and edited templates (col. 4, ll.
13-20). Some templates provide the option of using photographic
background images, clip art, fixed images and other editorial tools. Other
templates permit the user to edit the border effects of the photos (col. 19, ll.
46-58).
4. Additional editorial work can be applied to the partly edited document
file, i.e., the template (col. 4, ll. 16-19). Templates can also be employed to
define the borders of frames (col. 19, ll. 54-58).

Specification
5. After the raw digital images are obtained, the laboratory will encode the
exposures and provide each discrete photographic frame with a
corresponding code number to identify the photographic frame for further
processing. The laboratory will also apply 24 initial editing parameters to
each photographic image while the encoding is taking place. Certain flawed
photographic images can be discarded, and preliminary orientation and
cropping instruction can be applied for each exposure (Spec. 8, ll. 2-10).
6. Watermarks and/or photographer’s logos can be applied to each frame
during the encoding (Spec. 8, ll. 16-20).
7. The second set of edits can include the correction of skin blemishes,
elimination of unwanted reflections, lens flare or background objects and
fine adjustments to color and color balance of the images (Spec. 9, ll. 4-9).
8. The next step of the editing process is the application of organizational
edits and establishing photographic groups or collections. It might also be
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desirable to display multiple photographs on a single page in conjunction
with a matte (Spec. 9, ll. 22-28). After the application of organizational
edits and formation of groups or collections, the photographer can insert
caption watermarks, titles or advertising information on the images on the
photographs (Spec. 11, ll. 23-26).
Nakabayzashi
9. Discloses an image data processing apparatus with a parameter setting
unit that edits an image with predetermined imaging processing and a saving
unit that saves the image and the editing parameters together with relating
information (col. 1, ll. 54-60).

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “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) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
Office personnel must rely on Appellant's disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.”’ In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002)(emphasis in original) (citations and quotations omitted).
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"'A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellant argues that Yokomizo only teaches two editing steps of the
same image wherein a first edit is followed by a second edit consisting of
placing the image in an album (App. Br. 4). It is the Appellant’s position
that Yokomizo does not disclose editing an image three times with the third
edit being a matting step (App. Br. 4). The Examiner indicates that
Yokomizo edits the image once (i.e. watercolor effect), twice (insertion into
a template) and a third time which can be construed to be a matte type edit
since the image’s border is affected (Ans. 9).
Yokomizo discloses numerous editing procedures that can be
employed to edit an image (FF 1-4). Both the Appellant and the Examiner
attempt to characterize Yokomizo’s edits as either two or three distinctive
edits, respectively.
Claim 1 requires that two sets of editing parameters be associated and
applied to the digital image before a matting process is applied. The editing
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parameters are not specifically defined in the claim. We look to the
specification for clarity.
"The Patent and Trademark Office ("PTO") determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary sill in the art.'"
Phillips, 415 F.3d at 1316 (quoting American Academy, 367 F.3d at 1364).
The specification provides a multitude of options for grouping edits to form
editorial parameters (FF 5-8). Further, edits can be switched from one set of
editing parameters to another set of editing parameters thereby further
blurring the distinction between the editing parameters. See FF 6 and 8.
Thus, there is no apparent demarcation between the sets of editing
parameters.
Therefore, the Examiner's interpretation of “editing parameters” is
consistent with the Specification and we agree that Yokomizo discloses two
sets of editing parameters (FF 2-3) and applies a template/border/matte to
the selected image or images (FF 4). Cf. American Academy, 367 F.3d at
1369 ("We have cautioned against reading limitations into a claim from the
preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification.").
Appellant’s argument that the border effects are done as part of the
template and therefore the application of a template and border effects is a
single editing step is not persuasive (App. Br. 5). After Yokomizo applies
the second set of editorial parameters by forming the high-grade albums by
inserting images into templates, Yokomizo performs additional editing on
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the templates (FF 3-4). Therefore we agree with the Examiner that
Yokomizo’s edit of the template/border/matte is a separate editorial step.

Claim 4
Regarding the obviousness rejection of claim 4 over Yokomizo,
Nakabayashi and Watanabe, we find that Appellant has not persuasively
rebutted the Examiner's prima facie case of obviousness for this claim, but
merely contended that the additional reference fails to disclose the teachings
missing in Yokomizo and Nakabayashi (App. Br. 6).

CONCLUSION OF LAW
The Appellant has not shown that the Examiner erred in finding that
the combination of Yokomizo and Nakabayashi discloses a three-step
editing method for captured digital images.

DECISION
We will sustain the decision of the Examiner to reject claims 1-4.

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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)(1)(iv).
AFFIRMED

KIS

Milton S. Sales
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester NY 14650-2201