Ex Parte Hwang et alDownload PDFPatent Trial and Appeal BoardMar 26, 201311580779 (P.T.A.B. Mar. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PAUL JIN HWANG, RACHEL THUY NGUYEN, GUOXUAN ZHANG, and JIANYU ROY ZHENG 1 ____________________ Appeal 2010-007079 Application 11/580,779 Technology Center 2100 ____________________ Before DAVID M. KOHUT, BRYAN F. MOORE, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the rejection of claims 1-17, and enter a new ground of rejection of claims 1, 9, and 14 under 37 C.F.R. § 41.50(b). 1 The Real Parties-in-Interest are Sony Corp. and Sony Electronics, Inc. App. Br. 2. Appeal 2010-007079 Application 11/580,779 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention is directed to a system and method for automatic detection of duplicate digital photos. Spec. p. 1, “Field of the Invention.” Exemplary Claims Claim 1 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added): 1. A method for storing, onto a first computer storage, digital photo files on a second computer storage, comprising: for at least one photo file representing a digital photograph on the second computer storage, accessing metadata of the file, the metadata being one or more parameters selected from the group consisting of camera model name, shooting mode, photo effect, shutter speed, aperture value, light metering, exposure compensation, ISO speed, lens type, focal length, whether zoom was used, IS mode, image size, image quality, whether a flash was used, type of flash; comparing the metadata or a hash thereof with data in a data structure representing photo files that have been previously stored onto the first computer storage; and determining whether or not to store the photo file onto the first computer storage based at least in part on the comparing, wherein the photo file is stored onto the first 2 Our Decision refers to Appellants’ Appeal Brief (“App. Br.,” filed Jan. 8, 2010); Reply Brief (“Reply Br.,” filed Apr. 15, 2010); Examiner’s Answer (“Ans.,” mailed Apr. 14, 2010); Final Office Action (“FOA,” mailed Nov. 24, 2009); and the original Specification (“Spec.,” filed Oct. 13, 2006). Appeal 2010-007079 Application 11/580,779 3 computer storage only if the metadata or hash thereof matches data in a data structure representing photo files that have been previously stored onto the first computer storage such that duplicate photos are detected and not copied thereby. Claim 9 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added): 9. An apparatus for storing digital photo files, comprising: at least a first computer storage; and at least one processor accessing a second computer storage to compare hash values of metadata associated with photo files representing digital photographs on the second computer storage with values in a hash table and determining whether or not to store each photo file onto the first computer storage at least partially based thereon. Claim 14 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added): 14. A computer readable storage medium bearing instructions executable by a computer processor to compare hashes of metadata of digital photographs against values in a hash table representing previously stored photographs on an archive data store to ensure that only previously unstored photos are copied onto the archive data store. Appeal 2010-007079 Application 11/580,779 4 Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: Loui US 6,961,463 B1 Nov. 1, 2005 Venkatesan US 7,421,128 B2 Sep. 2, 2008 Rejection on Appeal Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Loui and Venkatesan. Ans. 3. ISSUES AND ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ conclusions with respect to claim 1, and we disagree with (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ arguments. We highlight and address specific findings and arguments regarding claims 1, 9, and 14 for emphasis as follows. 1. Rejection of Claims 1-8 Issue 1 Appellants argue (App. Br. 4-6; Reply Br. 1-2) that the Examiner’s unpatentability rejection under 35 U.S.C. § 103(a) of claim 1 over the combination of Loui with Venkatesan is in error. These contentions present us with the following issue: Appeal 2010-007079 Application 11/580,779 5 Did the Examiner err in finding that the combination of Loui and Venkatesan teaches or suggests Appellants’ claimed method for storing digital photo files onto a first computer storage, which includes, inter alia, steps “for at least one photo file representing a digital photograph on the second computer storage, accessing metadata of the file, the metadata being one or more parameters selected from the group consisting of . . . exposure compensation . . . [and] image quality . . .,” as recited in claim 1? Analysis Appellants argue: The examiner has declared that Loui’s use of time of exposure is the same as the “exposure compensation” in the group of criteria listed in Claim 1 and, hence, that Loui meets the criteria. This is a clearly erroneous finding of fact. Loui’s time of exposure manifestly does not mean “the time the shutter was held open and the film exposed”, much less does it have anything to do with the term of art “exposure compensation”. Instead, Loui makes clear that “time of exposure” means “time of day the picture was taken . . . [i]n no way does time of image capture implicate the particular type of EXIF data delineated in the present specification on the bottom of page 4 known as “exposure compensation” recited in Claim 1. App. Br. 4. Appellants make similar arguments in the Reply. Reply Br. 1-2. In addition, Appellants submitted evidence in support of their contention regarding the non-equivalence of “time of exposure” to “exposure compensation” in the Evidence Appendix to the Appeal Brief. We find no evidence in the record showing that the Examiner considered Appellants’ timely-submitted evidence (App. Br., Evidence App’x), nor has the Examiner even acknowledged its submission. With this omission and Appeal 2010-007079 Application 11/580,779 6 since we agree with Appellants’ contention, that Loui’s “time of exposure” is not equivalent to Appellants’ term of art “exposure compensation,” we cannot sustain the Examiner's unpatentability rejection of independent claim 1, as well as the unpatentability rejection of dependent claims 2-8, depending therefrom. 2. Rejection of Claims 9-17 Issue 2 Appellants argue (App. Br. 7-8 and 9-10; Reply Br. 3) that the Examiner’s unpatentability rejection under 35 U.S.C. § 103(a) of claims 9 and 14 over the combination of Loui with Venkatesan is in error. These contentions present us with the following issue: Did the Examiner err in finding that the combination of Loui and Venkatesan teaches or suggests Appellants’ claimed apparatus and computer readable storage medium bearing instructions, and which each compare hash values of metadata associated with photo files representing digital photographs with a hash table, as similarly recited in each of claims 9 and 14? Analysis Appellants argue, “independent Claims 9 and 14 do not recite ‘hash’ in a vacuum but rather require use of hash values of metadata, whereas in Venkatesan the hashes are of the image data itself, not of any metadata that might accompany the images.” App. Br. 6 (citing Venkatesan col. 4:30-35, emphasis in original). Appeal 2010-007079 Application 11/580,779 7 We agree with Appellants’ contention that the Examiner erred in mistaking a hash of an image itself with the recited hash of metadata, as variously claimed in each of claims 9 and 14. Accordingly, having found at least one error in the Examiner’s rejection, we cannot sustain the Examiner's unpatentability rejection of independent claims 9 and 14, as well as the rejection of dependent claims 10-13 and 15-17, depending therefrom. NEW GROUND OF REJECTION Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1, 9, and 14 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Loui (US 6,961,463 B1) (of record), Venkatesan (US 7,421,128) (of record), and Haitsma (US 2005/0144455 A1). ADDITIONAL FINDINGS OF FACT Claim 1: (1) We find that Venkatesan, while teaching comparing image hashes to identify duplicate images, does not teach or suggest “comparing the metadata or a hash thereof with data in a data structure representing photo files that have been previously stored onto the first computer,” as recited in claim 1 (emphasis added). However, we find that Haitsma meets the above limitation by teaching or suggesting comparing hash values of multimedia objects’ metadata: [0003] . . . [I]nterest is seen in the field of multimedia processing to compute fingerprints of multimedia objects such Appeal 2010-007079 Application 11/580,779 8 as songs, music, pictures or movies. In order to quality two multimedia objects as the same, instead of comparing the multimedia objects itself, only their fingerprints are compared. A fingerprint of a multimedia object is a representation of the most relevant perceptual features of the object in question. Such fingerprints are sometimes also known as “(robust) hashes”. [0004] In most systems using fingerprinting technology, the fingerprints of a large number of multimedia objects along with their associated respective metadata are stored in a database. The term “metadata” refers to information such as the title, artist, genre and so on for a multimedia object. The metadata of a multimedia object is retrieved by computing its fingerprint and performing a lookup or query in the database using the computed fingerprint as a lookup key or query parameter. The lookup then returns the metadata associated with the fingerprint. Haitsma ¶¶ [0003] – [0004]. Additionally, we find that Haitsma’s teaching of fingerprints or “robust hashes” meets the limitation cited above. (2) In addition, we find that using “Exchangeable Image File” (EXIF) data is well-known data standard in the in digital photo arts (e.g., see Spec. 4:18-22). We also find that Appellants’ recited “exposure compensation” information would be known to a person with skill in the art as a type of EXIF data, and that it would have been obvious to a skilled artisan to use other existing EXIF data in a comparison process. (3) We find that it would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention to modify the method and system of Loui by incorporating hash tables taught by Venkatesan. The motivation is to enhance Loui’s ability to identify duplicate images (Loui Abstract). In addition, we find that it would have been obvious to one of Appeal 2010-007079 Application 11/580,779 9 ordinary skill in the art at the time of Appellants’ invention to modify the combined teachings of Loui and Venkatesan with Haitsma’s fast hash-based multimedia object metadata retrieval in order to provide a more efficient search and comparison of the fingerprints (hashes) of multiple multimedia objects, e.g., pictures, rather than the hashes of the images themselves. Haitsma ¶¶ [0007] – [0008]. Claim 9: (1) Similar to claim 1, we find that Venkatesan, while teaching comparing image hashes to identify duplicate images, does not teach or suggest “compar[ing] hash values of metadata associated with photo files,” as recited in claim 9 (emphasis added). We find that Haitsma meets the above limitation by teaching or suggesting comparing hash values of multimedia objects’ metadata. Haitsma ¶¶ [0003] – [0004]. (2) As with claim 1, we find that it would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention to modify the method and system of Loui by incorporating hash tables taught by Venkatesan. The motivation is to enhance Loui’s ability to identify duplicate images (Loui Abstract). In addition, we find that it would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention to modify the combined teachings of Loui and Venkatesan with Haitsma’s fast hash-based multimedia object metadata retrieval in order to provide a more efficient search and comparison of the fingerprints (hashes) of multiple multimedia objects, e.g., pictures, rather than the hashes of the images themselves. Haitsma ¶¶ [0007] – [0008]. Appeal 2010-007079 Application 11/580,779 10 Claim 14: (1) Similar to claim 1, we find that Venkatesan, while teaching comparing image hashes to identify duplicate images, does not teach or suggest “compar[ing] hashes of metadata of digital photographs against values in a hash table,” as recited in claim 14 (emphasis added). We find that Haitsma meets the above limitation by teaching or suggesting comparing hash values of multimedia objects’ metadata. Haitsma ¶¶ [0003] – [0004]. (2) As with claim 1, we find that it would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention to modify the method and system of Loui by incorporating hash tables taught by Venkatesan. The motivation is to enhance Loui’s ability to identify duplicate images (Loui Abstract). In addition, we find that it would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention to modify the combined teachings of Loui and Venkatesan with Haitsma’s fast hash-based multimedia object metadata retrieval in order to provide a more efficient search and comparison of the fingerprints (hashes) of multiple multimedia objects, e.g., pictures, rather than the hashes of the images themselves. Haitsma ¶¶ [0007] – [0008]. CONCLUSIONS (1) The Examiner erred with respect to the unpatentability rejection of claims 1-17 under 35 U.S.C. § 103(a) over Loui in view of Venkatesan, and we cannot sustain the rejection. Appeal 2010-007079 Application 11/580,779 11 (2) We enter a new ground of rejection for independent claims 1, 9, and 14 as being unpatentable over the combination of Loui, Venkatesan, and Haitsma. Claims 1, 9, and 14 are unpatentable. (3) Since the Patent Trial and Appeal Board is a review body, rather than a place of initial examination, we have not reviewed claims 2-8, 10-13, and 15-20 to the extent necessary to determine whether the combination of Loui, Venkatesan, and Haitsma renders any of these claims obvious. We leave it to the Examiner to determine the appropriateness of any further rejections of these dependent claims under 35 U.S.C. § 103(a). DECISION (1) The decision of the Examiner to reject claims 1-17 is reversed. (2) Claims 1, 9, and 14 are newly-rejected as being unpatentable over the combination of Loui, Venkatesan, and Haitsma. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and Appeal 2010-007079 Application 11/580,779 12 have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 C.F.R. § 41.50(b) ELD Copy with citationCopy as parenthetical citation