Ex Parte Jung et al

Patent Trial and Appeal Board

Sep 28, 2015

12799367 (P.T.A.B. Sep. 28, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/799,367 04/23/2010 Edward K.Y. Jung SE1-0589-US 7809
80118 7590 09/28/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
TREHAN, AKSHAY
ART UNIT PAPER NUMBER
2663
MAIL DATE DELIVERY MODE
09/28/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD, and JOHN D. RINALDO
____________

Appeal 2013-003143
Application 12/799,367
Technology Center 2600
____________

Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and
KEVIN C. TROCK, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1–4, 8, 13, 15, 17–24, 26–28, 31, 34, 39–41, 43–45, 53, 55, 57, 59,
60, 66, 67, 70, 83, 90, and 95–100, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 5–7,
9–12, 14, 16, 25, 29, 30, 32, 33, 35–38, 42, 46–52, 54, 56, 58, 61–65, 68, 69,
71–82, 84–89, and 91–94 are cancelled. (See Br. 39–40, 42–47 (Claims
App’x).)
We affirm.

1 The real party in interest identified by Appellants is Searete, LLC, which is
wholly owned by Intellectual Ventures Management LLC. (Br. 4.)
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STATEMENT OF THE CASE
Appellants’ “application relates, in general, to sharing mechanisms
that allows [sic] sharing images between multiple devices at least partially
based on a regional proximity of the devices.” (Spec. 3:29–31.) Claim 1,
which is illustrative, reads as follows:
1. A system comprising:
circuitry for obtaining at least one image representation
from at least one image capture device;
circuitry for identifying one or more entities authorized
to receive the at least one image representation
obtained from the at least one image capture
device based on at least one indication of at least
one subset list of one or more individuals selected
from at least one larger list; and
circuitry for transmitting at least one portion of the at
least one image representation obtained from the at
least one image capture device to at least some of
the one or more entities identified as being
authorized to receive the at least one image
representation obtained from the at least one image
capture device.
Claim 95 stands rejected under 35 U.S.C. § 101 because the claimed
subject matter is nonfunctional descriptive material. (See Final Act. 2; Ans.
2–3.)
Claims 1–4, 8, 13, 15, 17–24, 26–28, 31, 34, 39–41, 43–45, 53, 55,
57, 59, 60, 66, 67, 70, 83, 90, and 95–100 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yamaguchi (US 7,327,385 B2; issued
Feb. 5, 2008), Steinberg et al. (US 6,750,902 B1; issued June 15, 2004;
hereinafter “Steinberg”), and Weaver et al. (US 7,031,700 B1; issued Apr.
18, 2006; hereinafter “Weaver”). (See Final Act. 3–17; Ans. 4–20.)
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Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed July 9, 2012) for the positions of Appellants and the Final Office
Acton (“Final Act.” mailed May 9, 2012) and Answer (“Ans.” mailed Sept.
25, 2012) for the findings and conclusions of the Examiner. Only those
arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Appeal Brief have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012).

ISSUES
The issues presented by Appellants’ contentions are as follows:
Does the Examiner err in rejecting claim 95 under 35 U.S.C. § 101?
Does the Examiner err in finding the combination of Yamaguchi,
Steinberg, and Weaver, particularly Weaver, teaches or suggests “circuitry
for identifying one or more entities authorized to receive the at least one
image representation obtained from the at least one image capture device
based on at least one indication of at least one subset list of one or more
individuals selected from at least one larger list,” as recited in claim 1?
Does the Examiner provide reasons to support the rejection of claim
96?
Does the Examiner err in finding the combination of Yamaguchi,
Steinberg, and Weaver, particularly Weaver, teaches or suggests
circuitry for identifying one or more entities positionally
independent of the at least one image capture device and
authorized to receive the textual content and the at least one
image representation obtained from the at least one image
capture device based on at least one indication of at least one
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subset list of one or more individuals selected from at least one
larger list,
as recited in claim 97?
Does the Examiner err in finding the combination of Yamaguchi,
Steinberg, and Weaver, particularly Steinberg, teaches or suggests “circuitry
for transmitting at least some of the feedback information received from the
at least some of the one or more entities to the at least one image capture
device,” as recited in claim 100?

ANALYSIS
We have reviewed Appellants’ arguments and contentions (Br. 12–35)
in light of the Examiner’s findings and conclusions (Final Act. 2–17; Ans.
2–20) and explanations regarding Appellants’ arguments (Ans. 20–26).
Appellants’ arguments and contentions do not persuade us of error in the
Examiner’s findings, conclusions, and explanations; accordingly, we adopt
the Examiner’s findings, conclusions, and explanations as our own. The
following discussion, findings, and conclusions are for emphasis.

REJECTION UNDER 35 U.S.C. § 101
The Examiner concludes claim 95 encompasses non-functional
descriptive matter because it recites instructions on non-transitory media
without reciting that the non-transitory media is used or usable with a
computer or machine. (Ans. 2–3.) The Examiner explains “the scope of the
presently claimed non-transitory media can range from paper on which the
program is written, to a program simply contemplated and memorized by a
person.” (Ans. 23.)
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Appellants contend the Examiner erred because the Examiner
improperly applied the machine or transformation test to reject the claim
under § 101. (Br. 12–14 (citing Bilski v. Kappos, 561 U.S. 593 (2010).)
We are unpersuaded of error because Appellants do not address the
ground of rejection articulated by the Examiner. Claim 95 is not a claim to a
process; rather it is a claim to media bearing instructions for a process.
Although the Examiner did state that the claim “raises a question as to
whether the claim is directed merely to an abstract idea” (Ans. 2 (emphases
added)), the actual rejection articulated by the Examiner is based on a
finding that the claim is directed to non-functional descriptive matter (id.), in
accordance with what is sometimes known as the printed matter doctrine. In
other words, the Examiner has found, and we agree, that claim 95 does not
preclude embodiments that are merely printed instructions on paper, which
is a non-transitory medium. See In re Miller, 418 F.2d 1392, 1396 (CCPA
1969) (“printed matter by itself is not patentable subject matter, because [it
is] non-statutory . . .”). Here, unlike the claim at issue in Miller, claim 95
encompasses printed matter by itself, and not in a new and unobvious
relationship with its substrate.
Appellants’ arguments do not persuade us of error in the rejection of
claim 95 under § 101.

REJECTION UNDER 35 U.S.C. § 103(A)
Claim 1
Differences between the Claim and the Prior Art
Appellants contend as follows:

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[T]hose portions of Weaver identified by the USPTO, and so
far as Appellant[s] can discern, the pinpoint-cited portions of
Weaver also do not recite at least “circuitry for identifying one
or more entities authorized to receive the at least one image
representation obtained from the at least one image capture
device based on at least one indication of at least one subset
list of one or more individuals selected from at least one
larger list” as recited in Appellant[s’] Independent Claim 1.
(Br. 16.) Appellants reproduce, verbatim, certain, but not all, portions of
Weaver relied on by the Examiner (see Br. 17 (reproducing Weaver, Fig. 4;
col. 2, ll. 6–20; col. 4, ll. 11–15)) together with certain other passages of
Weaver (see Br. 18 (reproducing Weaver, col. 2, ll. 57–59; col. 11, ll. 62–66;
col. 12. ll. 1–19). Certain portions of the reproduced passages of Weaver are
enclosed in rectangles of emphasis. (See Br. 17–18.) Appellants then state
that “Appellant[s] ha[ve] shown by direct quotations that Independent Claim
1 and the cited portions of Weaver are very different on their faces.” (App.
Br. 19.) Appellants offer no other explanation of the significance Appellants
urge us to attach to the emphasized portions of Weaver.
On appeal, Appellants may rebut the Examiner’s findings and
reasoning with opposing evidence or argument. Failure to do so may
constitute a waiver of potential arguments. See Ex parte Frye, 94 USPQ2d
1072, 1075–76 (BPAI 2010) (precedential); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir 2008) (arguments not made are considered
waived). Furthermore, merely reciting the language of the claims and
asserting that the cited prior art reference does not recite what the claim
limitation recites is insufficient. See 37 C.F.R. § 41.37(c)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); see also In re Lovin, 652
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F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted [identical text in a previous version of] Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”).
Furthermore, the test of obviousness is not the precise language
recited by the reference; the test for obviousness is what the references,
when considered together, “would have suggested to one of ordinary skill in
the art,” In re Keller, 642 F.2d 413, 425 (CCPA 1981), who is a person of
ordinary creativity and not an automaton (KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007)), and whose inferences and creative steps we may
consider (id. at 418). See also In re Bond, 910 F.2d 831, 832–33 (Fed. Cir.
1990) (citing Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 &
n.11 (Fed. Cir. 1986)) (Interpretation of references “is not an ‘ipsissimis
verbis’ test.”); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953
F.2d 1360, 1369 (Fed. Cir. 1991). (“[A] . . . reference . . . need not duplicate
word for word what is in the claims.”).
Appellants’ argument amount to little more than a recitation of the
language of the disputed limitation of claim 1, a recitation of the language of
Weaver reference, and a naked assertion that they are not the same. See
37 C.F.R. § 41.37(c)(iv); see also Bond, 910 F.2d at 832–33. The
unexplained emphases added by Appellants amount to no more than an
invitation for us to examine the claims and art in greater detail than argued
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by Appellants. See Baxter, 952 F.2d at 391. Additionally, Appellants do not
address the entirety of the Examiner’s articulated findings regarding the
disputed limitation; for example, Appellants do not address the Examiner’s
reliance (Final Act. 5; Ans. 6), inter alia, on Weaver’s teaching of
“conferences carrying video or other media” (Weaver, col. 9, l. 5).
For the foregoing reasons, Appellants’ arguments are insufficient to
persuade us of error in the Examiner’s reliance on Weaver, when combined
with Yamaguchi and Steinberg, to teach or suggest the disputed limitation.
Combination of References
Appellants contend:
that if Yamaguchi were modified and/or combined to cure the
aforementioned deficiencies to reach [sic] “circuitry for
identifying one or more entities authorized to receive the at
least one image representation obtained from the at least
one image capture device based on at least one indication of
at least one subset list of one or more individuals selected
from at least one larger list”, such a modification and/or
combination would change the principle operation [sic] of
Yamaguchi.
(Br. 19 (citing MPEP § 2143.01; In re Ratti, 270 F.2d 810 (CCPA 1959).)
Appellants reproduce passages of Yamaguchi, enclosing portions in
rectangles for emphasis. (Br. 20–21 (reproducing Yamaguchi, Fig. 4, col. 6,
ll. 26–57).) Appellants conclude as follows:
[I]f Yamaguchi were to be modified to reach “circuitry for
identifying one or more entities authorized to receive the at
least one image representation obtained from the at least
one image capture device based on at least one indication of
at least one subset list of one or more individuals selected
from at least one larger list” as recited in Independent Claim
1, Yamaguchi would no longer principally operate by “When
the users of cell phones 110 want to get a copy of the picture
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currently on the host display 120, they send a request
command to the host display from their cell phones 110.”
Thus, under controlling Federal Circuit precedent, there can be
no “teaching” to resolve the facial differences shown above
between the Yamaguchi technical material and Independent
Claim 1 as a matter of law.
(Br. 21–22 (quoting Yamaguchi, col. 6, ll. 47–50).)
Appellants’ conclusory statement, which Appellants characterize as
“attorney argument” (Br. 21–22) is unpersuasive because it conflates
Yamaguchi’s principle (“the laws or facts underlying the workings of an
artificial device,” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 927 (10th
ed. 1999) (definition 1c)) of operation with how Yamaguchi principally
(“most important[ly], consequential[ly], or influential[ly] : CHIEF[LY],” id. at
926 (definition 1)) operates. Even if we were to accept, arguendo, that the
combination of Weaver with Yamaguchi would change how Yamaguchi
principally (i.e., most importantly) operates, Appellants’ contentions do not
demonstrate that the combination changes Yamaguchi’s principle (i.e.,
underlying laws or facts) of operation. Furthermore,
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425 (citations omitted).
Appellants further contend as follows
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[I]f Yamaguchi were modified and/or combined to cure the
aforementioned deficiencies to reach “circuitry for identifying
one or more entities authorized to receive the at least one
image representation obtained from the at least one image
capture device based on at least one indication of at least
one subset list of one or more individuals selected from at
least one larger list”, such a modification and/or combination
would render Yamaguchi unsatisfactory for one or more of its
intended purposes.
(Br. 22 (citing MPEP § 2143.01; In re Gordon, 733 F.2d 900 (Fed. Cir.
1984).) Appellants reproduce passages of Yamaguchi, enclosing portions in
rectangles for emphasis. (Br. 23–24 (reproducing Yamaguchi, Fig. 4, col. 6,
ll. 26–57).) Appellants conclude as follows:
[I]f Yamaguchi were to be modified to reach “circuitry for
identifying one or more entities authorized to receive the at
least one image representation obtained from the at least
one image capture device based on at least one indication of
at least one subset list of one or more individuals selected
from at least one larger list” as recited in Independent Claim
1, Yamaguchi would no longer be satisfactory for the following
intended purpose: “[T]hose present may more easily share in
the experience . . . . create great amusement and fun at
parties, weddings, homes, or conferences”.
(Br. 25 (quoting Yamaguchi, col. 6, ll. 42–43, 56–57).)
Appellants’ conclusory statement, which Appellants characterize as
“attorney argument” (Br. 25), is unpersuasive. We assume, arguendo, and
without deciding, that allowing those present to “more easily share in [an]
experience . . . [to] create ‘great amusement and fun’” in various contexts is
an intended purpose of Yamaguchi’s system and method, and not merely a
subsidiary advantages of meeting “a need for an enhanced system of image
display for cellular phones and other such wireless devices having digital
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camera capabilities, while ensuring adequate bandwidth and resolution for
the advanced imaging capabilities anticipated, yet with minimal power
consumption” (Yamaguchi, col. 1, ll. 32–37). Nevertheless, Appellants do
not explain, nor is it apparent from the quoted passages or Appellants’
emphases, why “identifying one or more entities authorized to receive the at
least one image representation obtained from the at least one image capture
device based on at least one indication of at least one subset list of one or
more individuals selected from at least one larger list” as recited in claim 1
and taught by Weaver (see Final Act. 5; Ans. 6) would prevent “those
present [from] . . . more easily shar[ing] in the experience . . . [to] create
great amusement and fun at parties, weddings, homes or conferences”
(Yamaguchi, col. 6, ll. 42–43, 56–57).
For the forgoing reasons, Appellants’ arguments do not persuade us
the Examiner erred in concluding it would have been obvious at the time of
Appellants’ invention to combine the teachings Yamaguchi, Steinberg, and
Weaver as articulated by the Examiner.
Claim 1 Summary
Appellants’ arguments do not persuade us of error in the rejection of
claim 1 over the combination of Yamaguchi, Steinberg, and Weaver.
Accordingly, we sustain the rejection of claim 1. Appellants argue the
patentability of independent claims 40, 83, 90, and 95 over the cited art by
relying on the arguments presented for claim 1. (Br. 32–35.) Appellants do
not separately argue the patentability of claims 2–4, 8, 13, 15, 17–24, 26–28,
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31, 34, and 39, which depend from claim 1,2 (Br. 25) and claims 41, 43–45,
53, 55, 57, 59, 60, 66, 67, and 70, which depend from claim 40 (Br. 32).
Therefore, we sustain the rejection of claims 2–4, 8, 13, 15, 17–24, 26–28,
31, 34, 39, 40, 41, 43–45, 53, 55, 57, 59, 60, 66, 67, 70, 83, 90, and 95 for
the same reasons as for claim 1.
Claim 96
Appellants contend the Examiner “did not cite to any specific art with
respect to Claim 96.” (Br. 26.) Appellants further assert there are “no
specific reasons supporting a rejection of Claim 96.” (Id.) We are not
persuaded of error. As pointed out by the Examiner (Ans. 23–24), and
conceded by Appellants (Br. 26), in rejecting claim 96 the Examiner stated
the claim was “rejected for similar reasons as to claim 17[](See rejection set
forth in claim 17) [sic]” (Final Act. 9). In rejecting claim 17, the Examiner
relied on the rejection of claim 1, from which claim 17, like claim 96,
directly depends. (Final Act. 8.) The Examiner made additional findings
regarding the limitations added by claim 17 to those of claim 1. (Final Act.
8–9 (citing Steinberg, Figs. 1, 7, and 8).) Therefore, we find the Examiner
has presented specific reasons for the rejection of claim 96. Appellants do
not point to any specific error or deficiency in the Examiner’s findings as
they apply to either claim 17 or claim 96.
Accordingly, we sustain the rejection of claim 96 for the reasons set
forth under this heading and those set forth supra regarding claim 1.

2 Appellants identify claims 2–4, 8, 13, 15, 17–24, 26–28, 31, 34, 39, and
96–100, as depending from claim 42 (Br. 25); however claim 42 is cancelled
(Br. 44 (Claims App’x)).
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Claim 97
Appellants contend as follows:
[T]he pinpoint-cited portions of Weaver do not recite at least
“circuitry for identifying one or more entities positionally
independent of the at least one image capture device and
authorized to receive the textual content and the at least one
image representation obtained from the at least one image
capture device based on at least one indication of at least one
subset list of one or more individuals selected from at least one
larger list” as recited in Appellant[s’] Dependent Claim 97.
(Br. 27.) As with claim 1, Appellants have reproduced verbatim the
language of the claim and passages of Weaver with rectangles added for
emphasis (Br. 27–28 (reproducing Weaver, col. 2, ll. 18–20; col. 4, ll. 15–
19).) We note Appellants do not address all of the passages of Weaver
relied on by the Examiner or any of the passages of Steinberg relied on by
the Examiner. (See Final Act 15 (citing Weaver, col. 2, ll.11–20; col. 3, ll.
1–20; col. 4, ll. 10–33; Steinberg, Figs. 7, 8).) The only argument offered is
the conclusory statement that the recitations of the claim and the reproduced
passages of Weaver are different. (See Br. 28.) Appellants’ argument is
unpersuasive of error for the substantially the same reasons as set forth
supra regarding claim 1.
Accordingly, we are unpersuaded of error in the rejection of claim 97
for the reasons set forth under this heading and the reasons set forth supra
regarding claims 1 and 96, from which claim 97 depends. Claims 98 and 99
depend from claim 97. Appellants’ only argument for the separate
patentability of claims 98 and 99 is the same as Appellants’ argument
regarding claim 96. (See Br. 28–30.) Therefore, for the same reasons as for
claims 1, 96, and 97, we sustain the rejection of claims 98 and 99.
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Claim 100
Appellants contend “the pinpoint-cited portions of Steinberg do not
recite at least ‘circuitry for transmitting at least some of the feedback
information received from the at least some of the one or more entities to
the at least one image capture device’ as recited in Appellant[s’]
Dependent Claim 100.” (Br. 31.) Similarly to claim 1, Appellants
reproduce a figure from Steinberg with rectangles added for emphasis (id.
(reproducing Steinberg, Fig. 12).) The figure reproduced by Appellants was
not relied on by the Examiner in the office action appealed from to teach the
limitations of claim 100 (see Final Act. 17 (citing Steinberg, Figs. 7, 8, 11)).
To the extent Appellants may have intended to reproduce Steinberg’s Figure
11, we note that Appellants contentions do not address the Examiner’s
reliance on Figures 7 and 8. (See also Steinberg, Figs. 10, 13 (appearing on
the same page as Steinberg, Figs. 11, 12).) Appellants’ arguments are not
commensurate with the grounds of rejection, in that they do not address the
passages of Steinberg relied on by the Examiner as read together by one of
ordinary skill in the art. The only argument offered is the conclusory
statement that the recitations of the claim and the recitations of the
reproduced figure of Steinberg are different. (See Br. 32.) Appellants’
argument is unpersuasive of error for the substantially the same reasons as
set forth supra regarding claim 1.
Accordingly, we are unpersuaded of error in the rejection of claim 100
for the reasons set forth under this heading and the reasons set forth supra
regarding claims 1 and 96–99, from which claim 100 depends. Therefore,
we sustain the rejection of claim 100.

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DECISION
The decision of the Examiner to reject claims 1–4, 8, 13, 15, 17–24,
26–28, 31, 34, 39–41, 43–45, 53, 55, 57, 59, 60, 66, 67, 70, 83, 90, and 95–
100 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

ACP