Ex Parte Kinjo

Board of Patent Appeals and Interferences

Jan 19, 2010

10401702 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NAOTO KINJO
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Appeal 2009-007673
Application 10/401,702
Technology Center 2600
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Decided: January 21, 2010
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
KEVIN F. TURNER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 7-21, which are all of the pending claims. Claims 1-6 have been
cancelled. An oral hearing was conducted on this appeal on January 12,
2010. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed June 25, 2008), the Answer (mailed
October 7, 2008), and the Reply Brief (filed December 4, 2008) for the
respective details. Only those arguments actually made by Appellant have
been considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to an image processing system in which
image processing is performed on an image obtained by a portable
communication device, such as a mobile telephone. The portable
communication device is used to provide a specification input for a specified
displayed image based on the timing at which the displayed image is
displayed. Processing indicator information that indicates the contents of
processing to be performed on the specified image is set through the
specification input. The image information and the processing indicator
information are transmitted to an image processing apparatus that is
connected to the portable information communication device through a
communication line. (See generally Spec. 5:17–6:10).
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Claim 7 is illustrative of the invention and reads as follows:
7. An image processing system comprising:
a portable information communication device;
a relay server; and
an image processing apparatus,
wherein said portable information communication device performs
image displaying based on received image information, sets specified image
identification information that identifies, as a specified image, a displayed
image for which specification input is made based on a timing at which the
displayed image is displayed, creates processing indicator information that
indicates contents of processing to be performed on the specified image set
through the specification input, and transmits the specified image
identification information and the processing indicator information to said
relay server;
said relay server relays information to be transmitted to said portable
information communication device, accumulates and stores image
information relayed in advance, receives the specified image identification
information and the processing indicator information transmitted from said
portable information communication device, extracts the image information
of the specified image from the image information accumulated and stored
in advance based on the received specified image identification information,
and transmits the extracted image information and the processing indicator
information of the specified image to said image processing apparatus; and
said image processing apparatus is connected to said relay server
through a communication line, receives the image information and the
processing indicator information of the specified image transmitted from
said relay server, and performs image processing on the image information
of the specified image based on the processing indicator information.

The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
Tomida US 2002/0054345 A1 May 9, 2002
(filed Aug. 27, 2001)
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Fukunaga US 6,775,023 B1 Aug. 10, 2004
(filed Jul. 30, 1999)
Kinjo US 7,106,887 B2 Sep. 12, 2006
(filed Apr. 13, 2001)
Claims 7, 9, and 11-20 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Tomida.
Claims 8 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tomida in view of Fukunaga.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tomida in view of Kinjo.1

ISSUE
The pivotal issue before us is whether Appellant has demonstrated
that the Examiner erred in determining that Tomida discloses a portable
information communication device which provides a specification input for
a received image based on the timing at which the image is displayed as
claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:

1 Although the Examiner, in the final Office action (mailed Oct. 31, 2007),
had made a 35 U.S.C. § 112, first paragraph, written description rejection of
claims 17-21, no mention of this rejection is made in the Examiner’s
Answer. We conclude, therefore, that this rejection has been withdrawn.
See Ex parte Emm, 118 USPQ 180, 181 (BPAI 1957).
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1. Tomida discloses (Figs. 1, 9; ¶¶ [0107]-[0109]) a print support
system in which a portable communication terminal 1 communicates with a
print support service server 40 via a mobile communication network 2.
2. Tomida further discloses (Figs. 1, 9; ¶¶ [0113]-[0114]) that the
print support system includes a printer 20 which accesses the print support
service server 40 via the portable communication terminal 1 to download
image data registered in advance by the portable communication terminal 1.
3. Further disclosed by Tomida (Fig. 12; ¶ [0140]) is a display
device 70 included in the portable communication device, such as mobile
telephone 60, which displays a variety of data associated with a displayed
image such as telephone number, conversion time, received image data, text
data, etc.
4. Fukunaga discloses (Figs. 31, 32; col. 40, ll. 27-34) an image
collection and transmission system in which an indication is provided of the
date and time (3204, 3205) a transmitted or received file is stored in a
transmission box 3001 or reception box 3101.
5. Kinjo discloses (col. 20, ll. 45-55) an image processing system
in which a TV station is included among the various output destination
indications for a processed image.

PRINCIPLES OF LAW
1. ANTICIPATION
“It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim.” See In
re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann Maschinenfabrik
GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
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In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). “Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (citation
omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C. §
103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
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“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(e) REJECTION
Appellant’s arguments in response to the Examiner’s anticipation
rejection, based on Tomida, of each of the appealed independent claims 7
and 14-20 assert that the Examiner has not shown how each of the claimed
features is present in the disclosure of Tomida so as to establish a prima
facie case of anticipation. Appellant’s arguments (App. Br. 20-21; Reply Br.
3-5) focus on the contention that, in contrast to the requirements of
independent claims 7 and 14-20, Tomida does not disclose providing a
specification input for an image based on the timing at which the image is
displayed. According to Appellant (App. Br. 20-21; Reply Br. 3-5), Tomida
discloses that image information is stored in association with a number
designation or registration, and not in association with the timing at which
the image is displayed as claimed.
In addressing the language of the appealed claims, the Examiner
directs attention to the portion of Tomida at paragraph 140 which discloses
that the type of data displayed on the display device 70 of the mobile
telephone 60 includes a display of “conversion time.” (FF 3). According to
the Examiner (Ans. 19), the display of the conversion time of image data
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would serve to identify a particular image since the conversion time is
related to file size, i.e., a larger image file would have a greater conversion
time than a smaller image file and vice versa.
We agree with Appellant (App. Br. 21; Reply Br. 4-5), however, that,
to whatever extent Tomida’s disclosure of display of file conversion time
may be considered to provide identification information for a specified
image, this disclosure of Tomida, at best, provides an indication of the
duration of a file conversion process. As argued by Appellant (App. Br. 21;
Reply Br. 4-5), there is simply no teaching or suggestion in Tomida that
such conversion time display provides any indication of the timing at which
the image is displayed as claimed.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Tomida, we do not sustain the Examiner’s 35
U.S.C. § 102(e) rejection of appealed independent claims 7 and 14-20, nor
of claims 9 and 11-13 dependent thereon.

35 U.S.C. § 103(a) REJECTIONS
Claims 8 and 10
We also do not sustain the Examiner’s obviousness rejection of claims
8 and 10, each dependent on claim 7, based on the combination of Tomida
and Fukunaga. The Examiner has applied the Fukunaga reference to
Tomida to address the relay server extraction and the image quality change
features, respectively, of dependent claims 8 and 10. We find nothing in the
disclosure of Fukunaga, however, which overcomes the innate deficiencies
of Tomida discussed supra. In particular, we agree with Appellant (App. Br.
23-24; Reply Br. 5-6) that, although Fukunaga may disclose the storing of
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the date and time that an image file is transmitted and/or received (FF 4),
there is no teaching or suggestion of specifying an image based on the
timing that the image is displayed as set forth in independent claim 7.

Claim 21
The Examiner’s obviousness rejection of dependent claim 21 is also
not sustained. The Examiner has applied the Kinjo reference to Tomida to
address the TV station output destination feature of dependent claim 21. As
with the Fukunaga reference used in the rejection of dependent claims 8 and
10, we find nothing in the disclosure of Kinjo which overcomes the
previously discussed deficiencies of Tomida.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 7, 9, and
11-20 for anticipation under 35 U.S.C. § 102(e), and in rejecting claims 8,
10, and 21 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 7, 9, and 11-20 under
35 U.S.C. § 102(e) and claims 8, 10, and 21 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

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