Ex Parte Jonsson et al

Patent Trial and Appeal Board

Sep 17, 2018

14303664 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/303,664 06/13/2014
58342 7590 09/19/2018
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19THFLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Hakan Jonsson
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.
PS14 0535US1 1063
EXAMINER
ABAZA, AYMAN A
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAKAN JONSSON, OLA THORN, KARE AGARDH,
MAGNUS MIDHOL T, ERIK WESTENIUS, and DAVID DE LEON1
Appeal2018-000041
Application 14/303,664
Technology Center 2400
Before CAROLYN D. THOMAS, JON M. JURGOV AN, and
AMBER L. HAGY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1--4, 6-12, and 17-20, all the pending
claims in the present application. Claims 5 and 13-16 are canceled (see
Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants name Sony Corporation as the real party in interest (App. Br. 2).
Appeal2018-000041
Application 14/303,664
The present invention relates generally to capturing a digital image
without user input commanding the capturing of the digital image (see Spec.,
Abstract).
Claim 1 is illustrative:
1. A method of capturing and storing a digital image
with an image acquisition device that is configured to capture
the digital image without user input that commands the
capturing of the digital image, comprising:
detecting in a signal from a sensor a state transition
indicative of a change in user activity, the state transition
independent of the user input that commands the capturing of
the digital image, wherein the sensor comprises an electric field
sensor or a magnetic field sensor;
capturing the digital image with a camera module
of the image acquisition device, the capturing triggered by the
detection of the state transition; and storing the digital image in
a memory.
Appellants appeal the following rejection:
Claims 1--4, 6-12, and 17-20 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Sano (US 2008/0253695 Al, Oct. 16, 2008) and
Clavin (US 2012/0226981 Al, Sept. 6, 2012).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to the Appellants'
2
Appeal2018-000041
Application 14/303,664
arguments. We concur with Appellants' conclusion that the Examiner erred
in combining Clavin 's electric field sensor with the image storage system of
Sano that utilizes a bio-sensor, thus rendering Sano's system unsatisfactory
for its intended purpose.
"If references taken in combination would produce a 'seemingly
inoperative device,' ... such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness."
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)
( citation omitted); see also In re ICON Health & Fitness, Inc., 496 F .3d
1374, 1382 (Fed. Cir. 2007) ("a reference teaches away from a combination
when using it in that combination would produce an inoperative result," but
the obviousness analysis must account for "modifications that one skilled in
the art would make to a device borrowed from the prior art"); In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984) (finding no reason to modify a prior art
device where the modification would render the device "inoperable for its
intended purpose").
As identified by Appellants, "a core feature of Sano" is searching for
images based on bio-information (see Reply Br. 4). Specifically, Sano states
that "there are circumstances where a user possess[ es] a great deal of taken
images ... [and] it is important to select and output (for example, display
output) taken images from a great deal of taken image data easily and
suitably" (i-f 10). Therefore, in Sano "[t]he search processing means further
uses bio-information for generating search conditions" (i-f 20) and
"[a]ccording to the embodiments of the invention, the bio-information of a
user at the time of imaging ... [is] stored in a state in which the information
is associated with taken image data, thereby performing searching by using
3
Appeal2018-000041
Application 14/303,664
the bio-infonnation" (i-f 30). In other words, Sano seeks to detect a user's
emotions such as, for example, "when a user is excited/frantic when
watching sports" and uses this to trigger image taking and thereafter
associates such information/emotions with the image for search purposes.
We agree with Appellants that replacing Sano 's biosensors with
Clavin 's electric field sensors, which merely detects a user's presence (see
Clavin ,r 27), "renders the device of Sano unsatisfactory for its intended
purpose" (App. Br. 9), [because Sano 's system would not be able] "to search
for images based on physical and/or physiological status of the user" (id. at
13) because Clavin 's "electric field sensors that detect a change in the
electric field of the ambient environment are not biosensors" (id. at 14).
We also agree with Appellants contention that "Sano has not been
shown to provide any teaching or suggestion of using sensor data other than
biosensor data as a basis for performing a search" (App. Br. 17) and that
"the Examiner's position that the 'examples' as references in Sano infers
sensors other than biosensors (i.e., electric filed sensors) may be used is
without basis" (id.). In fact, Sano suggests that in all embodiments of the
invention, not just exemplary embodiments, bio-information of the user at
the time of imaging is associated with (i.e., a trigger for) the taken image
data and used for image selection/searching (see ,r,r 27, 30).
Appellants point out that "another option [proposed by the Examiner]
would be to include the sensor of Clavin in addition to the bio-sensor of
Sano so as to trigger based on the electric field sensor, and not the bio-sensor
... [however, Appellants' contend that] the odds of the user being prepared
for the capture of bio-information are very low, resulting in many/most
images being acquired without bio-information" (Reply Br. 5-6), which
4
Appeal2018-000041
Application 14/303,664
would [still] render the device of Sano unsatisfactory because "Sano's core
concept [is] of capturing an image based on bio-information ... (so as to
permit image searching based on bio-information)" (id. at 7). We agree with
Appellants that adding Clavin 's electric field sensor as the trigger for image
taking to Sano 's system would render Sano unsatisfactory because the type
of bio-information contemplated by Sano would likely not be available/seen
at the time of any electric field sensor trigger.
Thus, we disagree with the Examiner's finding that "adding/changing
a sensor will not change the intended use [of Sano]" because "Sano 's system
can still operate using biometric sensor with an added capability of being
triggered by additional electric field sensor" (Ans. 10), given the
aforementioned disclosures in Sano. Furthermore, although we agree with
the Examiner that Sano mentions in paragraph 221 that "[ t ]he invention is
not limited to the embodiments and various modification examples or
extension examples can be considered" (Ans. 11 (citing Sano ,r 221)), as
noted by Appellants, and we agree, Sano 's modifications relate to various
types ofbio-information and how to obtain such bio-information, not using
non-bio-sensors (see Reply Br. 6-7).
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
Accordingly, we will not sustain the Examiner's obviousness rejection of
claims 1--4, 6-12, and 17-20 given that the modification would render the
device of Sano inoperable for its intended purpose.
5
Appeal2018-000041
Application 14/303,664
DECISION
The decision of the Examiner to reject claims 1--4, 6-12, and 17-20 is
reversed.
REVERSED
6