Ex Parte Kinarti et al

Patent Trial and Appeal Board

May 25, 2016

12977084 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121977,084 12/23/2010
62730 7590 05/27/2016
SAP SE
3410 HILL VIEW A VENUE
PALO ALTO, CA 94304
FIRST NAMED INVENTOR
Barak KINART!
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.
4325/65.2 8636
EXAMINER
TSENG, CHARLES
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
APRIL.MENG@SAP.COM
GIPinhouse@sap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARAK KINART!, VLADIMIR TKACH,
CARMIT PINTO, and A VISHAI GELLER
Appeal2014-007697
Application 12/977,084 1
Technology Center 2600
Before ERIC S. FRAHM, LARRY J. HUME, and
JEFFREY A. STEPHENS, 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
Examiner's Final Rejection of claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is SAP PORTALS
ISRAEL LTD. App. Br. 3.
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Application 12/977,084
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates to the display on
a screen in general, and to capturing elements in the display, in particular."
Spec. ,-r 1.
Exemplary Claim
Claims 1 and 20, reproduced below, are representative of the subject
matter on appeal (emphases and labeling added to contested limitations):
1. A method for capturing a screen object on a
display of a computerized device displaying a content, the
method comprising:
receiving an indication about the screen object;
determining at least one point of the screen object
according to the indication;
marking the at least one point with an at least one pattern;
wherein the at least one pattern comprises at least two pixels;
[L 1] capturing the content of the display for providing a
captured display; wherein the captured display comprises the
screen object and the at least one pattern embedded in the
content;
[L2] searching for the at least one pattern in the
captured-display;
calculating a boundary of the screen object m the
captured-display; and
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Apr. 10, 2014); Reply Brief ("Reply Br.," filed June 29, 2014); Examiner's
Answer ("Ans.," mailed May 6, 2014); Final Office Action ("Final Act.,"
mailed Nov. 14, 2014); and the original Specification ("Spec.," filed
Dec. 23, 2010).
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extracting the screen object from the captured-display
according to the boundary.
20. The method of claim 1, wherein the captured
content of the display is provided to a web browser for
extracting the screen object from the content.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
He et al. ("He") US 6,217,520 Bl
Sambonsugi et al. ("Sambonsugi") US 6,335,985 B 1
Apr. 17, 2001
Jan. 1, 2002
Hayashi
Hondl
Fujieda
Rhoads et al. ("Rhoads")
Fujino et al. ("Fujino")
Cohen et al. ("Cohen")
Seshadri et al. (" Seshadri ")
US 2002/0172398 Al Nov. 21, 2002
US 6, 728,398 B 1 Apr. 27, 2004
US 7,239,740 Bl
US 7 ,254,249 B2
US 7,369,160 B2
US 7,853,036 B2
US 8,090,146 B2
July 3, 2007
Aug. 7,2007
May 6, 2008
Dec. 14, 2010
Jan. 3, 2012
Sheppard et al., On Multiple Watermarking, MM&Sec '01 Proceedings of
the 2001 Workshop on Multimedia and Security: New Challenges, 2001,
pp. 3---6 (hereinafter "Sheppard").
TechSmith Corp., Snaglt 9.0 -Help File PDF, 2008 (hereinafter
"Snaglt").
Swanson et al., Object-Based Transparent Video Watermarking, IEEE First
Workshop on Multimedia Signal Processing, 1997, pp. 369--74 (hereinafter
"Swanson").
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Rejections on Appeal
RI. Claims 1, 11, 12, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Snaglt, Rhoads, and He.
Final Act. 2.
R2. Claims 2 and 6 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Snaglt, Rhoads, He, and Fujieda. Final
Act. 9.
R3. Claims 3 and 16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Snaglt, Rhoads, He, and Sheppard.
Final Act. 10.
R4. Claims 4 and 18 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Snaglt, Rhoads, He, and Seshadri.
Final Act. 12.
R5. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Snaglt, Rhoads, He, and Cohen.
Final Act. 13.
R6. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Snaglt, Rhoads, He, and Sambonsugi.
Final Act. 14.
R7. Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Snaglt, Rhoads, He, and Hayashi.
Final Act. 15.
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R8. Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Snaglt, Rhoads, He, Sheppard, and
Swanson. Final Act. I 6.
R9. Claim I3 stands rejected under 35 U.S.C. § I03(a) as being
obvious over the combination of Snaglt, Rhoads, He, and Hondl. Final
Act. I 7.
RIO. Claim 20 stands rejected under 35 U.S.C. § I03(a) as being
obvious over the combination of Snaglt, Rhoads, He, and Fujino. Final
Act. I8.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8-I2), we decide the
appeal of obviousness Rejection RI of claims I, I I, I2, and I 9 on the basis
of representative claim I.
We decide the appeal of obviousness Rejection RI 0 of separately
argued claim 20, infra.
Remaining claims 2-IO and I3-I8 in Rejections R2 through R9, not
argued separately, stand or fall with the respective independent claim from
which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 4 I .3 7 ( c )(I )(iv).
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Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-20,
and we incorporate herein and adopt as our own: (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 in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 20 for emphases as follows.
1. RejectionRl of Claims 1, 11, 12, and 19
Issue 1
Appellants argue (App. Br. 8-11; Reply Br. 3--4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Snaglt, Rhoads, and He is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests a method that includes, inter alia, the steps in limitations
L 1 and L2, as recited in claim 1?
(b) Under § 103, did the Examiner err in combining the references
in the manner suggested because, allegedly, there is no reasonable
expectation of success with such a combination?
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Analysis
(a) Limitations Allegedly not Taught or Suggested
Limitation LI: "capturing the content of the display"
Appellants contend Snaglt contrasts with the claimed invention
because:
[T]he user moves the red rectangle to select an image (the
"screen object") [in Snaglt] and captures the image alone
directly from the display content based on the position of the
red rectangle without the pattern (red rectangle) embedded in
the captured content. Then "the capture is sent to the selected
output". . . . The output receives the image and not a captured
display to extract the "screen object" therefrom.
App. Br. 9 (citing Snaglt, p. 14, fifth paragraph). "Snaglt does not capture
the content of the display with an embedded pattern indicating the
boundaries of the image, instead Snaglt extracts the image from the display
based on the indications ... as illustrated in the figure ... [on] page 14 of
the Snaglt help file." Id.
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). "In the patentability
context, claims are to be given their broadest reasonable interpretations ...
limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
In response to Appellants' argument, the Examiner finds, and we
agree, Appellants have not responded to the Examiner's rejection, but instead
argue the references separately, although the rejection is for obviousness
under§ 103 over the combination of Snaglt, Rhoads, and He. "[O]ne cannot
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show non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F .2d
413, 426 (CCPA 1981).
In particular, the Examiner finds, "Snaglt does not disclose marking at
least one point of the screen object with an at least one pattern embedded in
the content, wherein the pattern comprises at least two pixels .... However,
these limitations are well-known in the art as disclosed in Rhoads." Ans. 3
(emphasis added); and see Final Act. 6-7 (citing Rhoads col. 6, 11. 27-50
and 61---67; col. 7, 11. 11-24; and col. 16, 11. 1-18). Particularly with respect
to the teachings of Rhoads, the Examiner finds:
Rhoads explains the watermarks indicate boundary information
for corresponding objects (Rhoads at col. 16/lines 5-18).
Rhoads explains it is understood for watermarks to comprise
pixels to be embedded in image data of pixels (Rhoads at col.
6/lines 27-50 and 61-67; col. 15/lines 59-67 and col. 16/lines 1-
18). It follows Snaglt may be accordingly modified with the
teachings of Rhoads to embed watermarks in objects for
improved image segmentation and object identification. As
Rhoads teaches the embedment of watermarks for objects in an
image (Rhoads at col. 6/lines 27-50 and 61-67; col. 15/lines 59-
67 and col. 16/lines 1-18), it follows the application of the
teachings of Rhoads to Snaglt results in the capture of screen
objects with embedded watermarks.
Ans. 3. We note Appellants have not cited to a definition of a "pattern
embedded in the content" in the Specification that would preclude the
Examiner's reasonable interpretation. 4
4 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
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In the Reply Brief~ Appellants allege "neither Snaglt nor Rhoads teach
or suggest the entire limitation i.e.[,] capture of display content when there
are patterns embedded in the content as required by the claim limitation."
Reply Br. 3. Furthermore, "Rhoads does not discuss capturing screen
content and Snaglt would not teach marking the comers and capturing the
content if there were embedded patterns already marking the boundaries -
contrary to the teachings of Snaglt on page 14." Id.
In response, and in addition to arguing the references separately as
indicated by the Examiner, supra, we find Appellants' arguments are not
commensurate with the scope of limitation L 1 of claim 1, which does not
require "marking the comers." In addition, Appellants' newly-raised
argument that Snaglt would be rendered unsatisfactory for its intended
purpose if combined with Rhoads (id.) will be addressed infra.
Therefore, on this record, we agree with the Examiner's finding that
the combination of Snaglt and Rhoads teaches or at least suggests the
contested LI "capturing" limitation, as recited in claim 1.
Limitation L2: "searching for the at least one pattern"
Appellants contend "Snaglt does not teach 'searching for the at least
one pattern in the captured-display;' since Snaglt only captured the 'screen
object' (image) and has no need to search for the pattern marking the
boundaries of the 'screen object' (image) in itself." App. Br. 9--10.
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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However, we note the Examiner does not rely upon Snaglt for contested
limitation L2. Instead, the Examiner relies upon the He reference for
teaching or at least suggesting this limitation. Ans. 4 (citing He, col. 1, 11.
47-50; col. 5, 11. 35---63; and col. 8, 11. 53-65). Appellants present no
substantive arguments regarding the teachings and suggestions of the He
reference except to state "a PHOSITA would clearly not teach or suggest
combining the search from He with the teachings of Snaglt and Rhoads.
Accordingly independent claims 1 and 11 should be considered allowable."
Reply Br. 4.
On this record, we agree with the Examiner's finding that the
combination of Snaglt, Rhoads, and He teaches or at least suggests the
contested L2 "searching" limitation, as recited in claim 1.
Motivation to Combine
Appellants contend there is no reasonable expectation of success to be
found in the reference combination.
As explained above Snaglt teaches direct extraction of the
"screen object" and not a display content including the "screen
object". It would clearly not improve segmentation or improve
searching time by marking the extracted screen object with a
watermark to improve searching time for the "screen object"
(image) in itself.
App. Br. 10. Appellants relatedly allege a person with skill in the art would
"clearly" not be motivated to combine the teachings of Rhoads or He with
Snagit. Id. On this record, we find there is no evidence to support
Appellants' allegations.
In KSR, the Supreme Court rejected the rigid application of the
teaching, suggestion, or motivation test while acknowledging the importance
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of identifying "a reason that would have prompted a person of ordinary skill
in the art to combine the elements as the new invention does." KSR Int'! Co.
v. Teleflex, Inc., 550 U.S. 398, 401 (2007). The reasonable expectation of
success must be based on the perspective of a person of skill in the art at the
time of invention. See Life Techs. Inc. v. Clontech Labs, Inc., 224 F.3d
1320, 1326 (Fed. Cir. 2000) ("[r]easonable expectation of success is
assessed from the perspective of the person of ordinary skill in the art. That
the inventors were ultimately successful is irrelevant to whether one of
ordinary skill in the art, at the time the invention was made, would have
reasonably expected success.").
Moreover, in KSR, the Court stated "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
"some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
The Examiner finds it would have been obvious to modify Snaglt with
the teachings of Rhoads (Final Act. 7), as well as to modify the teachings of
Snaglt and Rhoads with the teachings of He. Final Act. 8. We find these
findings of motivation meet the articulated reasoning and rational
underpinning requirements of KSR, cited above.
Additionally, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations L 1 and L2 of claim 1, nor do we find error in the
Examiner's resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner's obviousness rejection of independent claim 1, and grouped
claims 11, 12, and 19, which fall therewith. See Claim Grouping, supra.
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2. Rejection RI 0 of Claim 20
Issue 2
Appellants argue (App. Br. 11-12; Reply Br. 4--5) the Examiner's
rejection of claim 20 under 35 U.S.C. § 103(a) as being obvious over the
combination of Snaglt, Rhoads, He, and Fujino is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein the captured content of the
display is provided to a web browser for extracting the screen object from
the content," as recited in claim 20?
Analysis
Appellants contend "Snaglt teaches outputting the screen object, thus
there is no need 'for extracting the screen object from the content' in contrast
to the requirement by claim 20;" and "Fujino teaches extraction of features
of the camera image data and not extraction of a screen object as required by
claim 20." App. Br. 12.
In response, the Examiner finds, and we agree:
Fujino explains captured image data may be transmitted to a
web browser comprising multiple image processing applets for
performing various image processes such as object detection
and feature extraction (Fujino at col. 1 O/lines 40-57 and col.
12/lines 18-49). As Fujino teaches a web browser with the
capability of performing various types of image processing, it
follows Snaglt may be accordingly modified with the teachings
of Fujino to send its content of the captured display to a web
browser for extraction of the screen object from the content.
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Ans. 6-7. In addition, "Fujino is cited for teaching it is known in the art for
sending captured image data to a web browser for subsequent image
processing such as feature extraction." Ans. 7.
In the Reply Brief, Appellants contend
Fujino only teaches extraction of features of the camera image
data and not extraction of a captured disp 1 ay. Likewise as
explained above and in the appeal brief Snaglt only discloses
capturing final images and providing them as output. Snaglt
does not teach or suggest capturing the content of a display to
extract an object or image therefrom.
Reply Br. 4.
We do not find Appellants' arguments against the references
separately to be persuasive.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 20, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 20.
3. Rejections R2 through R9 of Claims 2-10 and 13-18
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 through R9 of claims 2-10 and 13-18 under
§ 103 (see App. Br. 11 ), we sustain the Examiner's rejection of these claims.
Arguments not made are waived.
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REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3-6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
Regarding the newly presented arguments advanced in the Reply
Brief purporting that Snaglt would be rendered unsatisfactory for its
intended purpose if combined with Rhoads (Reply Br. 3), 5 we find this new
argument is not in response to any shift in the Examiner's position in the
Answer, and is therefore untimely and need not be considered under our
procedural rules. See 37 C.F.R. § 41.41(b)(2).
However, even assuming, arguendo, our reviewing court were to
consider such new arguments to be timely in response to a shift in the
Examiner's position, we find Appellants' assertions amount to unsupported
attorney argument, and therefore we give them little weight. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100
F.3d 135, 139--40 (Fed. Cir. 1996).
Therefore, on this record, and by a preponderance of the evidence, we
do not find error in the Examiner's reliance on the combined teachings and
suggestions of Snaglt, Rhoads, and He.
5 "Thus the combination of the teachings of Rhoads with Snaglt would
render Snaglt unsatisfactory for its intended purpose (in contrast to the
requirements of MPEP 2143.01 V) and would not be combined to teach the
full limitation." Reply Br. 3.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through RIO of claims I-20 under 35 U.S.C. § I03(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims I-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § I. I 3 6( a )(1 )(iv).
AFFIRMED
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