Ex Parte Hou et al

Patent Trial and Appeal Board

Feb 22, 2016

13259436 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/259,436 09/23/2011 Hui-Man Hou
56436 7590 02/24/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82258760 8138
EXAMINER
ELHAG, MAGDI
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUI-MAN HOU, JIAN MING JIN, and
YUHONG XIONG
Appeal2014-003288
Application 13/259,436
Technology Center 2600
Before THU A. DANG, JOHN P. PINKERTON, and
NATHAN A. ENGELS, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, and 5-15, which constitute all of
the claims pending in this application. Claims 3 and 4 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Hewlett-Packard Development Company, LP, a
wholly-owned affiliate of Hewlett-Packard Company, as the real party in
interest. App. Br. 3.
Appeal2014-003288
Application 13/259,436
STATEMENT OF THE CASE
Introduction
Appellants' invention is generally directed to a method and system for
sending a message using a mobile phone. Abstract. 2 Claim 1 is
representative and reads as follows:
1. A method of sending a message using a mobile phone, the
method comprising:
composing a message for sending to a recipient;
generating a contact-label having contact information of
the recipient, wherein the generating includes
receiving an image of the recipient;
encoding the contact information to a certain data
format; and
embedding the encoded contact information into
the received image to generate the contact label;
combining the message and the contact-label;
capturing an image of the message and the contact-label
combination for sending to the recipient using the mobile
phone;
decoding the captured image for identifying the contact
information of the recipient; and
2 Our Decision refers to the Final Office Action mailed Mar. 18, 2013
("Final Act."), Appellants' Appeal Brief filed Aug. 23, 2013 ("App. Br."),
the Examiner's Answer mailed Nov. 21, 2013 ("Ans."), Appellants' Reply
Brief filed Jan. 15, 2014 ("Reply Br."), and the original Specification filed
Sept. 23, 2011 ("Spec.").
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Application 13/259,436
sending the message to identified contact information.
References
Brundage US 2004/0037448 Al Feb.26,2004
Klotz, Jr. ("Klotz") US 2004/0205626 Al Oct. 14, 2004
Crookham US 2007/0189579 Al Aug. 16, 2007
Rejection on Appeal
1. Claims 1, 12, and 14 stand rejected on the ground of
nonstatutory obviousness-type double patenting in view of claims 1, 3, and 5
of co-pending Application No. 13/258,466, now US Patent No. 8,856,247.
Final Act. 5. 3 However, Appellants are not appealing this double patenting
rejection, but instead, merely argue the rejection should be held in abeyance
until the claims of the present application are indicated as allowable. App.
Br. 7. As Appellants do not argue that the rejection is in error, we
summarily affirm the rejection of claims 1, 12, and 14 on the ground of
obviousness-type double patenting over the specified claims of US Patent
No. 8,856,247.
2. Claims 1, 2, and 5-15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Klotz, Brundage, and Crookham.
Issues
Appellants' arguments in the Appeal Brief and Reply Brief present us
with the following issues:
1. Does the combination of Klotz, Brundage, and Crookham teach
or suggest "receiving an image of the recipient," "encoding the
3 Patent Application No. 13/258,466 issued as US Patent No. 8,856,247 on
October 7, 2014. Thus, the rejection is no longer provisional.
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Application 13/259,436
contact information [of the recipient] to a certain data format,"
and "embedding the encoded contact information [of the
recipient] into the received image to generate the contact label,"
as recited in claim 1, and as similarly recited in claims 12 and
14? App. Br. 9-12; Reply Br. 7-9.
2. Would it have been obvious to combine Crookham with Klotz
in view of Brundage to teach or suggest the features of claim 1?
App. Br. 12-13; Reply Br. 9-10.
3. Does the combination of Klotz, Brundage, and Crookham teach
or suggest "combining the message and the contact-label" and
"capturing an image of the message and the contact-label
combination for sending to the recipient using the mobile
phone," as recited in claim 1? Reply Br. 6-7.
4. Does the combination of Klotz, Brundage, and Crookham teach
or suggest the limitations of dependent claims 7, 10, and 11?
App. Br. 14--15; Reply Br. 11-12.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Appeal Brief (App. Br. 7-16) and Reply Brief (Reply Br.
4--13) that the Examiner has erred. We disagree with Appellants' arguments.
Unless otherwise noted, we adopt as our own the findings and reasons set
forth by the Examiner in the Final Office Action from which this appeal is
taken (Final Act. 5-13) and in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 2-12), and we concur with the conclusions
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reached by the Examiner. For emphasis, we consider and highlight specific
arguments as presented in the Briefs.
Issues 1 and 2
Regarding issue 1, Appellants contend the combination of Klotz,
Brundage, and Crookham fails to teach or suggest "receiving an image of the
recipient," "encoding the contact information [of the recipient] to a certain
data format," and "embedding the encoded contact information [of the
recipient] into the received image to generate the contact label," as recited in
claim 1, and as similarly recited in claims 12 and 14. App. Br. 9-12; Reply
Br. 7-9. In particular, Appellants acknowledge paragraph 181 of Crookham
discloses users may register to have their unique mark encoded to create an
encoded image to represent their individual interests or hobbies, but contend
the image disclosed by Crookham is not an image of a message recipient.
App. Br. 10. Appellants also argue, although paragraph 181 of Crookham
teaches the encoded image can include the "face of a person," the "face of a
person" is not of the particular individual using the encoded image or an
image of the recipient of the message. App. Br. 1 O; Reply Br. 7-8. Thus,
Appellants argue paragraph 181 of Crookham does not teach or suggest the
limitations at issue. App. Br. 11; Reply Br. 8-9.
Appellants further argue Klotz does not disclose a received image of a
recipient embedded with contact information for the recipient and, therefore,
Klotz fails to teach or suggest the limitations at issue. App. Br. 12; Reply
Br. 8-9.
We are not persuaded by Appellants' arguments that the Examiner
erred. Appellants' arguments that Crookham and Klotz each fail to teach or
suggest the limitations at issue are not persuasive because they attack the
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references individually and fail to address the combination of Klotz,
Brundage, and Crookham, which is relied on by the Examiner in rejecting
the claims. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references").
The Examiner finds Klotz teaches sending a scanned document
bearing a sticker that includes a user identify code and service code to a
recipient via email, where the recipient can be the document sender or any
other recipient having user information in the stored database. Final Act. 5-
7 (citing Klotz Figs. 3-5, i-fi-f 12-17, 41--44, and 47--48); Ans. 3--4 (citing
Klotz i-fi-1 39--41 ). The Examiner finds Brundage teaches "receiving an image
of the recipient" and "embedding the encoded contact information into the
received image to generate the contact label." Ans. 5. In particular, the
Examiner finds Brundage teaches ( 1) receiving an image of the recipient
(citing i-fi-136-38; "gray image serves as a 'host' image and is passed to a
digital watermark-embedding module"), (2) encoding the contact
information to a certain data format (citing i1 50), and (3) embedding the
encoded contact information into the received image to generate the contact
label (citing i137; "embedding the watermark in the image using several
techniques as recited in par. 0037"). Id. at 5-6. The Examiner further finds
"[t]herefore, Klotz['s] sticker can be modified by including an image of a
message recipient which is embedded with a watermark comprising contact
information and the required services or machine behavior, as taught by
Brundage." Id. at 6 (citing i-fi-17-10 and 23).
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The Examiner also finds Crookham provides additional evidence
supporting encoding contact information in an image of the recipient. Id. at
7 (citing Fig. 20 and i-fi-143, 46, 191). Specifically, the Examiner finds
Crookham teaches a graphically based encoded image that may be a logo or
face of a person (citing Crookham i-f 181) and, therefore, finds "the encoded
image is an image of the recipient because the recipient may encode his
image, e.g. recipient photograph or favorite logo, for example, with his
contact information." Id. at 7-8; Final Act. 9 (citing Crookham i-fi-f 181 and
186).
For the reasons stated by the Examiner, we agree with the Examiner's
findings, and we agree the combination of Klotz, Brundage, and Crookham
teaches or suggests the limitations at issue.
Appellants' argument regarding the teaching of paragraph 181 of
Crookham raises the issue of the construction of the phrase "image of the
recipient." As discussed supra, the Examiner concludes the "recipient" can
be the sender or any other recipient having user information stored in the
database. Ans. 4. The term "image" is broadly defined in the Specification
as "a personal photo of the contact, a handwritten signature, some text, a
geometric figure, or any related or unrelated picture." Spec 4. Thus, even if
we were to agree with Appellants' argument that the "face of a person"
taught in paragraph 181 of Crookham is not the image of the particular
individual using the encoded image, we would still agree with the Examiner
that Crookham teaches the "image of a recipient" because the
Specification's broad definition of image, as including "any related or
unrelated picture," includes the "face of a person" the user of the image may
choose, as taught in paragraph 181 of Crookham.
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We also would further agree with the Examiner the combination of
references teaches the "embedding" limitation because the sticker or contact
label of Klotz can be modified by embedding the digital watermark with
encoded contact information, as taught by Brundage, into the received image
or face of a person chosen by the user, as taught by Crookham. See Ans. 6-
8.
Regarding issue 2, Appellants contend it would not have been obvious
to combine Crookham with Klotz in view of Brundage because the
motivation to combine articulated by the Examiner- that Crookham
teaches an easy way of exchanging contact information while providing an
immediate reflection of the user's personality and interests - is achieved in
Crookham by including the image on the user's business card without
embedding the encoded contact information into the received image. App.
Br. 12-13; Reply Br. 9-10. We are not persuaded by this argument,
however, because embedding contact information into the received image, as
taught and suggested by the combination of Brundage and Crookham, is an
additional way of achieving the goal of Crookham of disseminating contact
information while providing an immediate reflection of the user's
personality and interests without having to place the image on the user's
business card.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417. Moreover, the Supreme Court has made clear
that, when considering obviousness, "the analysis need not seek out precise
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Application 13/259,436
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." See KSR, 550 U.S. at 418. Here,
we agree with the Examiner it would have been obvious for a person of
ordinary skill in the art to encode contact information and other personal
data in a user's image, as taught and suggested by Crookham in view of
Brundage, to provide an easy way of exchanging contact information for the
purpose of communication in social or business networking. Ans. 18.
Appellants have not provided persuasive evidence or argument to support a
conclusion that modifying the sticker or contact label of Klotz to include the
received image or "face of a person," as taught by Crookham, embedded
with a digital watermark encoded with contact information, as taught by
Brundage, is not simply "the predictable use of prior art elements according
to their established functions." See KSR, 550 U.S. at 417.
Issue 3
Regarding issue 3, Appellants contend the combination of Klotz,
Brundage, and Crookham does not teach or suggest "combining the message
and the contact-label" and "capturing an image of the message and the
contact-label combination for sending to the recipient using the mobile
phone," as recited in claim 1. Reply Br. 6-7. This contention is based on
Appellants' argument the Examiner is now asserting an email allegedly
created in Klotz is the composed "message for sending to a recipient" and
the "recipient" of claim 1 is the sender of the email. Id. at 6. Although the
Examiner does find the "recipient" of claim 1 can be the sender of an email
(see Ans. 4), we disagree with Appellants' argument the Examiner finds the
composed message for sending to a recipient is an email.
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To the contrary, the Examiner finds Klotz discloses a tag based user
interface scheme for digitizing and processing hard copy documents utilizing
a sticker encoded with a user identity and service code. Ans. 3. The
Examiner further finds, when the user wishes to process a document, he
attaches a sticker to the document and places the document into a scanner,
which reads the document and formulates a bitmap representative of the
document and identifies and decodes the sticker to determine the identity of
the user. Id. at 3--4 (citing Klotz i-fi-1 42--44). The Examiner further finds
Klotz teaches sending a scanned document to a recipient via email. Id. at 4.
For the reasons stated by the Examiner, we agree with the Examiner's
findings. Based on these findings, we find Klotz teaches or suggests
"combining the message and the contact-label" and "capturing an image of
the message and the contact-label combination for sending to the recipient
using the mobile phone," as recited in claim 1.
Issue 4
Regarding issue 4, Appellants contend the combination of Klotz,
Brundage, and Crookham fails to teach or suggest the limitations of
dependent claims 7, 10, and 11.
Claim 7
Appellants argue Klotz does not disclose "decoding the contact
information from the contact-label" and, therefore, Klotz in view of
Brundage and Crookham fails to teach this limitation as recited in claim 7.
App. Br. 14; Reply Br. 11. The Examiner finds Klotz in view of Brundage
and Crookham teaches the limitations of claim 7. Ans. 8. We are not
persuaded by Appellants' argument. The Examiner finds, and we agree,
Klotz teaches decoding the sticker and accessing the database server 316,
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wherein the user contact information is stored. Ans. 8 (see Klotz iii! 15, 41-
43, 51 ). The Examiner also finds Brundage teaches associating the
watermark with one or more machine behaviors, including "[ o ]pening an
email client to email to a specific person (e.g., a person whose email address
is stored in the machine behavior description associated with the
watermark." Ans. 9 (see Brundage iii! 7-10). We agree with the Examiner
the combination of Klotz and Brundage teaches or suggests "decoding the
contact information from the contact-label" because, when the sticker
(contact-label) modified to include the digital watermark of Brundage
embedded in the image taught by Crookham is decoded, the contact
information associated with the watermark, i.e., the email address of a
person, is obtained from the contact-label or sticker.
Claim 10
Appellants' contend, based on the Examiner's new interpretation that
the claimed message is an email, Klotz does not teach the limitation "placing
the contact label onto [the] surface of the message," as recited in claim 10.
Reply Br. 11-12. As discussed supra, we do not agree with Appellants'
argument the Examiner now finds the message is an email. The Examiner
finds, and we agree, Klotz teaches and suggests this limitation because Klotz
teaches the user applies a sticker on the surface of the message, which is the
hard copy of the document to be sent. Ans. 9 (citing Klotz if 42).
Claim 11
Appellants argue Klotz and Crookham do not teach "saving the
contact information decoded from the contact-label in the mobile phone for
further use," as recited in claim 11. App. Br. 14--15; Reply Br. 12. We are
not persuaded by this argument because Appellants attack the references
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individually and fail to address the combination of Klotz, Brundage, and
Crookham, which is relied on by the Examiner in rejecting the claims. See
In re Merck, 800 F .2d at 1097.
Appellants also argue paragraph 189 of Crookham discloses that
information returned to a mobile phone may be a link, text, or voice-enabled
message, but does not disclose the information returned is the recipient's
contact information. Reply Br. 12. The Examiner finds Crookham teaches
an individual's information obtained from the look up table may be routed to
the recipient's mobile phone to facilitate and complete the information
exchange. Ans. 10 (citing Crookham i-f 1894). We also note paragraph 189
of Crookham teaches, in addition to returning a link, text, or voice-enabled
message, "[i]n another embodiment, a person having an encoded image may
associate desired personal information with the encoded value in the lookup
table." Thus, as discussed regarding claim 7, we agree with the Examiner
the combined references teach and suggest "decoding the contact
information from the contact-label." And, we further agree with the
Examiner Crookham teaches or suggests saving this information in the
mobile phone.
CONCLUSION
For the foregoing reasons, we sustain the Examiner's rejection of
claim 1 and the rejection of independent claims 12 and 14, as well as
dependent claims 2, 5, 6, 8, 9, 13, and 15, all of which are argued together
4 We believe the Examiner incorrectly cited paragraph 185 of Crookham
instead of paragraph 189, which contains the cited language.
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with claim 1. App. Br. 13. For the reasons stated supra, we also sustain the
Examiner's rejection of dependent claims 7, 10, and 11.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, and 5-15
under 35 U.S.C. § 103(a).
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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