Ex Parte Inoue et al

Board of Patent Appeals and Interferences

Jun 20, 2002

08174353 (B.P.A.I. Jun. 20, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MANABU INOUE, KEIJI TAMAI,
SHIGEAKI IMAI and KATSUYUKI NANBA
__________
Appeal No. 1999-2687
Application 08/174,353
___________
ON BRIEF
___________
Before JERRY SMITH, RUGGIERO and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellants request that we reconsider our decision of
January 14, 2002 wherein we sustained the rejection of claims 1,
3-6, 8-12, 14-16, 21, 23-28, 31, 33-35 and 37-40 as unpatentable
under 35 U.S.C. §§ 102 or 103.
We have reconsidered our decision of January 14, 2002 in
light of appellants’ comments in the request for rehearing, and
we find no errors therein. We, therefore, decline to make any
Appeal No. 1999-2687
Application 08/174,353
2
changes in our prior decision for the reasons which follow.
A brief review of the prosecution of this appeal is
instructive. Appellants filed an appeal brief in which each of
the examiner’s rejections was argued to some extent. The
examiner’s answer in response to this appeal brief responded to
each of the arguments in the brief in a manner that was complete
and persuasive. Appellants filed a reply brief in which they
stated the following:
The Examiner’s Answer clarifies the
Examiner’s position in regard to many of the
rejections.
The Applicants’ primary position on Appeal is
that one skilled in the art would not have
been motivated to combine the disclosure of
Wilson with that of Brownstein and/or Hamada
et al. to achieve the present invention
[reply brief, page 1].

The reply brief did not address any of the specific responses
made by the examiner in the answer, but only addressed the
propriety of the combination of references used by the examiner.
The previous decision essentially affirmed the examiner’s
rejections because appellants did not respond to the persuasive
arguments of the examiner set forth in the answer, and because we
agreed with the examiner that there was appropriate motivation to
combine the prior art teachings in the manner proposed by the
Appeal No. 1999-2687
Application 08/174,353
3
examiner.
In the request for rehearing, appellants’ first point
asserts that the decision by the Board reflects a technical
misunderstanding of the prior art. Specifically, appellants
argue that Hamada corrects for shake on a real-time basis, and
therefore, does not use stored shake information for shake
correction. Appellants also argue that the portions of Wilson
and Hamada relied on in formulating the rejection are
inconsistent with each other [request, pages 1-4].
Appellants’ position improperly analyzes the obviousness
of physically combining Wilson’s preferred embodiment with
Hamada’s preferred embodiment. Wilson was used as a teaching
that shake can be corrected at a later time by using previously
stored shake information. Wilson, however, does not describe the
nature of the shake correction. Hamada was cited for the sole
purpose of teaching that shake correction involves a comparison
between detected shake information and image information. Thus,
when the shake correction occurs at a later time as suggested by
Wilson, it would have been obvious to the artisan that this
correction would be achieved by performing a comparison as
suggested by Hamada. Therefore, we are not persuaded by this
particular argument that the previous decision was in error.
Appeal No. 1999-2687
Application 08/174,353
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Appeal No. 1999-2687
Application 08/174,353
5
Appellants’ second point in the request is that the
previous decision ignores the significance of the still image
claim language. Specifically, appellants argue that Wilson
cannot be used with still images and Hamada does not teach shake
correction at a later time [request, pages 4-5].
In the original brief, appellants simply argued that the
applied prior art did not teach a reproducing apparatus in which
a still image is reproduced from a developed film and corrected
based on shake information of the still image. They supported
this argument by noting that Hamada corrected for shake before
the film was developed and Wilson corrected the video signal
during the buffering function [brief, pages 29-30]. The examiner
clearly responded to this argument [answer, pages 24-25].
Although appellants filed a reply brief as noted above, they
never addressed the examiner’s response nor made any further
mention of the separate patentability based on a still image.
To the extent that this request asks that we change the
previous decision based on the fact that the claimed image is a
still image, we decline to do so. As noted in the previous
decision, we only considered those arguments actually made by
appellants in the brief. To the extent that appellants argued
the patentability of claims containing a recitation of still
Appeal No. 1999-2687
Application 08/174,353
6
images in the original brief, the examiner persuasively responded
to these arguments as was evident in our previous decision.
Appellants are attempting to have new arguments considered in
this request for rehearing, and we will not consider arguments in
a rehearing which have not been first presented during
prosecution of the appeal before the examiner. Therefore, we are
not persuaded by this particular argument that the previous
decision was in error.
Appellants’ third point in the request is that there is
no motivation to combine the references. Specifically,
appellants argue that the Board failed to consider the requisite
legal requirements necessary for the combination of references
[request, pages 6-11].
To the extent that appellants raised issues of motivation
for the combination of references in the briefs, the examiner
responded to these issues in the answer and we responded to these
issues in the previous decision. For the most part, the request
for rehearing simply raises additional arguments which were not
presented in the briefs. As noted above, these are arguments
that appellants could have made and should have made while
prosecution was before the examiner. It is not appropriate for
us to consider arguments made for the first time in a request for
Appeal No. 1999-2687
Application 08/174,353
7
rehearing. We have carefully reviewed the record in this appeal,
and we find that the questions regarding motivation to combine
were properly addressed by the examiner and by the Board.
Therefore, we are not persuaded by this particular argument that
the previous decision was in error.
Appellants’ fourth point in the request is that the
decision ignores In re Donaldson. Specifically, appellants argue
that the rejection of claim 1 be reconsidered in view of the
requirements of Donaldson, as requested in the original brief on
appeal. Appellants then analyze the relevant differences that
affect this analysis [request, pages 11-13].
We note that the original brief did raise the Donaldson
issue with respect to claim 1 only. The brief only raised the
question of whether the first and second recording means were
anticipated by Wilson under a Donaldson analysis [brief, pages
12-13]. The examiner responded to this argument by analyzing why
the corresponding elements of Wilson were equivalents to the
claimed first and second recording means [answer, page 15].
Although appellants filed a reply brief, they did not further
challenge the examiner’s response with respect to the Donaldson
issue.
Appeal No. 1999-2687
Application 08/174,353
8
In the previous decision, we noted that the examiner had
persuasively responded to each of appellants’ arguments with
respect to the rejection of claim 1 [previous decision, page 5].
We also stated the following:
Since we agree with each of the examiner’s
assertions with respect to the disclosure of
Wilson as set forth in the response to
arguments section of the answer, and since
appellants have not persuasively challenged
these assertions, we agree with the examiner
that claims 1 and 3 are fully met by the
disclosure of Wilson [previous decision, page
7].

Thus, based on the record before us, we agreed with the
examiner’s analysis of claim 1 based on the Donaldson issue.
The request for rehearing essentially seeks to change our
previous decision by asking us to look at a new record by making
several new arguments with respect to the Donaldson question. As
noted above, these are arguments that appellants could have made
and should have made while prosecution was before the examiner.
It is not appropriate for us to consider arguments made for the
first time in a request for rehearing. We have carefully
reviewed the record in this appeal, and we find that the
questions regarding Donaldson were properly addressed by the
examiner and by the Board. Therefore, we are not persuaded by
this particular argument that the previous decision was in error.
Appeal No. 1999-2687
Application 08/174,353
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We have carefully considered the arguments raised by
appellants in their request for rehearing, but none of these
arguments are persuasive that the original decision was in error.
We are still of the view that the invention set forth in claims
1, 3-6, 8-12, 14-16, 21, 23-28, 31, 33-35 and 37-40 is not
patentable over the applied prior art based on the record
presented to us in the original appeal.
We have granted appellants’ request to the extent that we
have reconsidered our decision of January 14, 2002, but we deny
the request with respect to making any changes therein.
Appeal No. 1999-2687
Application 08/174,353
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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).
REHEARING DENIED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1999-2687
Application 08/174,353
11
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