Ex Parte Kotler et al

Patent Trial and Appeal Board

Feb 28, 2017

12142821 (P.T.A.B. Feb. 28, 2017)

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.
12/142,821 06/20/2008 Matthew J. Kotler 323812.01 8084
69316 7590 03/02/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
ORR, HENRY W
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEN J. KOTLER, L. TUCKER HATFIELD,
MICHAEL B. FRIED, FENG ZHU, and HEENA MACWAN
Appeal 2016-007059
Application 12/142,8211
Technology Center 2100
Before ERIC S. FRAHM, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1—20. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423
(BPAI 1994) (precedential).
We reverse.
1 Appellants identify Microsoft Corporation as the real party in interest.
Br. 1.
Appeal 2016-007059
Application 12/142,821
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to “[a] digital image editing
system . . . that allow[s] a user to visualize a range of changes to an image
before applying one of them so that the user can choose an appropriate
change.” Spec. 1 5. In a disclosed embodiment, the range of changes are
reflected by a plurality of thumbnail images, wherein each thumbnail image
illustrates a representation of the image with a different filter parameter
value applied to the image. Spec. 113.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics'.
1. A computer-based method for selecting a parameter value of a
filter to apply to an image, the method comprising:
receiving a request from a user to modify an image by applying
an image filter to the image, the image being displayed on a computer
screen;
receiving a selection of the image filter from a set of available
image filters;
determining a range of parameter values for a parameter of the
selected image filter;
determining at least one of a size of a thumbnail gallery or a size
of individual thumbnails in the thumbnail gallery to illustrate the
determined range of parameter values based on a screen resolution of
the computer screen and that the displayed image is at least partially
visible on the computer screen when the thumbnails are overlaid on the
image',
creating the individual thumbnails of the image based on the
determined at least one of the size of the thumbnail gallery or the size
of the individual thumbnails in the thumbnail gallery, each thumbnail
illustrating the image with a different parameter value within the
determined range of parameter values of the image filter applied to the
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Application 12/142,821
image, wherein each thumbnail is created by applying the image filter
using one of the parameter values; and
displaying the created thumbnails in a user interface on the
computer screen from which a user can select a thumbnail to apply the
parameter value illustrated by the selected thumbnail so that the user
can preview an effect of each of the parameter values before selecting
a final parameter value to apply to the image.
The Examiner’s Rejections
1. Claims 4 and 5 stand rejected under 35U.S.C. § 112, second
paragraph as being indefinite. Non-Final Act. 3.
2. Claims 1—3, 6, 7, and 9—20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Adobe® Photoshop® CS3 User Guide
(2007) (“Adobe”); Lin et al. (US 2007/0033522 Al; Feb. 8, 2007) (“Lin”);
and Takamori et al. (US 2001/0006425 Al; July 5, 2001) (“Takamori”).
Non-Final Act. 4—20.
3. Claims 4, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adobe, Lin, Takamori, and Himberger et al. (US
2006/0036950 Al; Feb. 16, 2006) (“Himberger”). Non-Final Act. 20—22.
Issues on Appeal
1. Did the Examiner err in finding claims 4 and 5 are indefinite?
2. Did the Examiner err in finding the combination of Adobe, Lin,
and Takamori teaches or suggests “the displayed image is at least partially
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Application 12/142,821
visible on the computer screen when the thumbnails are overlaid on the
image,” as recited in claim l?2
ANALYSIS3
Rejection under 35 U.S.C. § 112, second paragraph
In rejecting claims 4 and 5 under 35 U.S.C. § 112, second paragraph
as being indefinite, the Examiner finds the phrase “the multiple
thumbnails” lacks sufficient antecedent basis. Non-Final Act. 3. Further,
the Examiner explains the use of the term “multiple thumbnails” emphasizes
a plurality of thumbnails whereas “thumbnails” may not be interpreted as a
plurality of thumbnails. Ans. 24.
We disagree with the Examiner and find that an ordinarily-skilled
artisan would understand what is being claimed when read in light of the
Specification. Claims 4 and 5 depend from claim 1, which recites, inter alia
“determining ... a size of individual thumbnails” and “creating the
individual thumbnails . . . each thumbnail illustrating the image with a
different parameter value.” We agree with Appellants that “the multiple
thumbnails” of claim 4 refers to a plurality of thumbnails in the thumbnail
gallery that were created for the various parameter values across the
determined range of parameter values, as recited in claim 1. See Br. 8.
2 Regarding the rejections under 35 U.S.C. § 103(a), we only address this
issue, which is dispositive. We do not address additional issues raised by
Appellants’ arguments.
3 Throughout this Decision, we have considered the Appeal Brief, filed
November 3, 2015 (“Br.”); the Examiner’s Answer, mailed May 6, 2016
(“Ans.”); and the Non-Final Office Action (“Non-Final Act.”), mailed
June 4, 2015, from which this Appeal is taken.
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Application 12/142,821
Similarly, we agree with Appellants that “the multiple thumbnails” recited in
claim 5 also refers to the plurality of thumbnails created, as recited in claim
1. See Br. 9.
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner’s rejection of claims 4 and 5 under 35U.S.C. § 112, second
paragraph.
Rejections under 35 U.S.C. § 103(a)
In rejecting claim 1, the Examiner relies on the combined teachings of
Adobe, Lin, and Takamori. See Non-Final Act. 4—7. In particular, the
Examiner relies on the Filter Gallery dialog box of Adobe, reproduced
below to teach many of the limitations of claim 1. Non-Final Act. 4—5
(citing Adobe 384—85).
ft B C 0 E
Filter Gallery tfiaiug bex
.4. Ptmew ft. Mfcr attgnry C Thimbmisi of selected filter II fitter iimmbtissk H. PUtm pap-up menu K Qptiomfarsehaed
fiis-:! G. List of filter effects to apply warrmy? ft. Litter efferf selected but ran applied l. Fitter effects applied ctamMivety hut net sekaierf
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Adobe 385 shows an exemplary view of a Filter Gallery dialog box. Adobe
385. The Examiner finds, inter alia, the filter options (denoted by the letter
F) discloses a slider bar for a range of settings for different parameters
associated with the selected filter (e.g., Stroke Length, Sharpness, and
Strength). Non-Final Act. 4—5. The Examiner finds the available values for
the parameter settings teach the claimed “determining a range of
parameter values” limitation. Non-Final Act. 5.
The Examiner finds Lin teaches determining the size of GUI elements
(e.g., thumbnails) based on screen resolution. Non-Final Act. 5 (citing Lin
121, Figs. 4, 5).
Regarding the plurality of thumbnails, wherein each thumbnail
illustrates the image with a different parameter value within the determined
range of parameter values, the Examiner relies on, inter alia, Figure 9 of
Takamori, reproduced below. See Non-Final Act. 6.
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Figure 9 of Takamori illustrates an image adjustment window for a visual set
up. Takamori | 63. Takamori discloses “a plurality of preview images ‘a’,
which are varied in accordance with the variation of the parameter values of
the selected various sorts of function parameters, are displayed on the screen
adjustment window, and thus it is possible to scrutinize the image processing
conditions comparatively in the various aspects.” Takamori 1148.
Thus, the Examiner relies on the combined teachings of Adobe, Lin,
and Takamori to teach or suggest, inter alia, modifying an image by
applying an image filter (see Adobe 385), wherein the range of parameter
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values for the image filter are determined (see Adobe 385, element F). Non-
Final Act. 4—5. Additionally, the Examiner finds the combined references
teach creating a thumbnail gallery of images with each thumbnail illustrating
the image with a different parameter value within the range of values for the
parameter (see Takamori 1148, Fig. 9) and wherein the size of the
thumbnail images is determined based on a screen resolution value (see Lin
121). Non-Final Act. 5—7.
However, claim 1 further recites “the displayed image is at least
partially visible on the computer screen when the thumbnails are overlaid on
the image.” Appellants contend there is no teaching for this limitation in the
references. Br. 14—16. Specifically, Appellants assert “Adobe discloses
displaying a thumbnail gallery of filters next to a preview A of an image.”
Br. 14 (citing Adobe 385) (emphasis added). Because the thumbnail gallery
is next to the image, Appellants argue Adobe fails to teach a thumbnail
gallery overlaid on the image. Br. 14. Further, Appellants contend
“Takamori discloses displaying thumbnails of previews of an image without
disclosing overlaying the thumbnails over the original image.” Br. 14.
Additionally, Appellants challenge the Examiner’s findings that
Takamori’s thumbnail gallery as illustrated in Figure 9 is “capable of
overlaying other windows such as the Filter Gallery Dialog Window [(of
Adobe 385)] with an image to be modified with a selected filter.” Br. 15
(quoting Non-Final Act. 6). Appellants contend such a teaching is not
inherently disclosed in the cited references and, additionally, the Examiner
has failed to support such findings. Br. 15—16.
In response the Examiner finds the preview display window of
Takamori is a separate window and that there are at least two windows (i.e.,
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a window of the original image and a window with the preview thumbnails).
Ans. 28. The Examiner notes that the Adobe application runs on either a
Windows®-based or Mac®-based operating system, and that “one of
ordinary skill would have known that multiple windows can be displayed at
once and that z-ordering (i.e., overlapping windows). . . existed at [the] time
of the invention.” Ans. 28.
Our reviewing court has explained:
[OJbviousness findings “grounded in ‘common sense’ must
contain explicit and clear reasoning providing some rational
underpinning why common sense compels a finding of
obviousness.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343,
1354 (Fed. Cir. 2013) (citation omitted); see alsoArendi S.A.R.L.
v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)
(“[RJeferences to ‘common sense’ . . . cannot be used as a
wholesale substitute for reasoned analysis and evidentiary
support. . . .”); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.
Cir. 2013) (“In recognizing the role of common knowledge and
common sense, we have emphasized the importance of a factual
foundation to support a party’s claim about what one of ordinary
skill in the relevant art would have known.”); Mintz v. Dietz &
Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012) (“The mere
recitation of the words ‘common sense’ without any support adds
nothing to the obviousness question.”); Perfect Web Techs. Inc.
v. InfoUSA Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009) (“[T]o
invoke ‘common sense’ or any other basis for extrapolating from
prior art to a conclusion of obviousness, [the factfinder] must
articulate its reasoning with sufficient clarity for review.”).
In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017).
Here, although at the time of the invention it may have been well-
known that a Windows® or Mac®-based operating system supported
overlapping windows, the Examiner has not sufficiently explained or
provided supporting evidence that Takamori’s preview window is in a
separate window than the original image or why it “would have been
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obvious to one of ordinary skill to overlay Takamori’s Figure 9 preview
thumbnail window over the window that contains the original image.” See
Ans. 31.
Accordingly, for the reasons discussed supra, we are constrained by
the record before us to not sustain the Examiner’s rejection of claim 1. For
similar reasons, we also do not sustain the Examiner’s rejection of
independent claims 11 and 17, which recite similar limitations.
Additionally, we do not sustain the Examiner’s rejections of claims 2—10,
12—16, and 18—20, which depend therefrom.
DECISION
We reverse the Examiner’s decision to reject claims 4 and 5 under 35
U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision to reject claims 1—20 under 35
U.S.C. § 103(a)
REVERSED
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