Ex Parte Kwak

Patent Trial and Appeal Board

Feb 12, 2016

11580941 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111580,941 10/16/2006
68103 7590 02/17/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Ji-yeon Kwak
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.
0501-0017 6697
EXAMINER
FLOHRE, JASON A
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
02/17/2016 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JI-YEON KW AK
Appeal2013-010286
Application 11/580,941
Technology Center 2600
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 40-86, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to "a screen capturing
function," and specifically towards a "screen capturing function, in which a
moving picture reproduced on a display panel is captured and recorded using
a screen recording button provided in a portable apparatus, and in which the
captured image is displayed as a thumbnail." Spec. i-f 2.
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Application 11/580,941
Claim 40 is illustrative:
40. A portable apparatus to provide a capturing
function, the apparatus comprising:
a display panel for displaying moving images in a
first region and a thumbnail image in a second region; and
a picture capturing unit for capturing a picture in
response to a capturing signal,
wherein, in response to the capturing signal, a visual
effect is displayed on the display panel, the visual effect
comprising gradually reducing an image corresponding to the
captured picture in size to a thumbnail while the image being
gradually reduced is moved to the second region, and the visual
effect is superimposed on moving images displayed on the
display panel.
Appellant appeals the following rejections:
RI. Claims 40, 46, 49, 56, 59, 66, 69-71, 76, 78, 80, 82, 84 and 86
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuroiwa
(US 2003/0160874 Al, Aug. 28, 2003) and Mugura (US Patent No.
6,111,614, Aug. 29, 2000).
R2. Claims 41--44, 50-53 and 60-63 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kuroiwa, Mugura, and Hyodo
(US 2002/0093571 Al, July 18, 2002).
R3. Claims 45, 54 and 64 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kuroiwa, Mugura, Hyodo, and Cummins
(US 2005/0251758 Al, Nov. 10, 2005).
R4. Claims 47, 48, 55, 58, 65 and 68 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kuroiwa, Mugura, Hyodo, and Seki
(US 2003/0151676 Al, Aug. 14, 2003).
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R5. Claims 57 and 67 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuroiwa, Mugura, and Suzuki
(US 2005/0231612 Al, Oct. 20, 2005).
R6. Claims 72-74 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuroiwa, Mugura, and Ejima (US 2003/0164890 Al,
Sep. 4, 2003).
R7. Claims 75, 77, 79, 81, 83 and 85 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kuroiwa, Mugura, and Aaltonen
(US 2006/0293077 Al, Dec. 28, 2006).
Claim Groupings
Based on Appellant's arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 40, as set forth below. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
Rejection under§ 103 (a) over Kuroiwa and Mugura
Issue 1: Did the Examiner err in finding that the combined teachings
of Kuroiwa and Mugura teach or suggest the visual effect is superimposed
on moving images displayed on the display panel, as set forth in claim 40?
Appellant contends that "Mugura does not disclose or render obvious
the superimposition of a visual effect on moving images." (App. Br. 10).
Specifically, Appellant contends "Mugura simply discloses that a broadcast
window (i.e., a moving image) that is currently displayed is reduced from a
full size to a smaller size to make room for another image" (App. Br. 9) and
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Application 11/580,941
"the 'known technique' of ivlugura is to ensure that the image being reduced
is not superimposed on moving images" (Id.).
In response, the Examiner finds that, while Kuroiwa' s still image
quickview capture that is displayed superimposed on a display panel teaches
or suggests the claimed "a display panel for displaying moving images in a
first region and a thumbnail image in a second region; and a picture
capturing unit for capturing a picture in response to a capturing signal" (see
Ans. 11; see Kuroiwa Fig. 4d), Mugura's successively smaller broadcast
window outlines that are superimposed over the program display teaches or
suggests a "visual effect comprising gradually reducing an image
corresponding to the captured picture in size to a thumbnail while the image
being gradually reduced is moved to the second region" that "is
superimposed on moving images displayed on the display panel" (Ans. 12;
see Mugura Fig. 12, Col. 8 11. 16-38). We agree with the Examiner.
For example, Mugura describes "a series of successively smaller
broadcast window outlines are superimposed over the program display when
it is desirable to translate to a smaller window" and "superimposing these
successfully smaller broadcast window outlines 1202-1210 over a broadcast
display 1201" resulting in "the program display is translated to a smaller
broadcast window" (Mugura Col. 8 11. 16-33). In other words, Mugura
teaches visually showing the gradual reduction in size of broadcasted
program, i.e., moving images, with successively smaller window outlines
representing the reduction in image size. Mugura's Fig. 12 illustrates
superimposing the successively smaller broadcast window outlines over the
moving images of the broadcast display. Thus, we agree with the
Examiner's finding that Mugura's successively smaller broadcast window
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outlines, superimposed on the program display, teaches or suggests a "visual
effect comprising gradually reducing an image" wherein "the visual effect is
superimposed on moving images displayed on the display panel" (see Ans.
4, 12-13).
Furthermore, Appellants have not rebutted the Examiner's findings
that Mugura' s visual effect of successively smaller broadcast window
outlines, superimposed on a broadcast of moving images, combined with
Kuroiwa's still image thumbnail superimposed on moving images, teach or
suggest the invention as claimed.
For at least these reasons, we are unpersuaded the Examiner erred.
Issue 2: Does Mugura teach away from the claimed invention?
Appellant contends "Mugura clearly leads away from the claimed
invention by expressly disclosing the desire to display the still image and the
moving image separately, that is, without superimposition" (App. Br. 10).
Here, Appellant's contentions are premised on Mugura' s teaching that "the
reduced size broadcast window and the EPG are 'displayed without
overlap"' (Reply Br. 6).
We note a reference does not teach away if it merely expresses a
general preference for an alternative invention but does not "criticize,
discredit, or otherwise discourage" investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The Examiner finds that, in regards to separate display without
overlap, Mugura refers "to the final display state (as exhibited in figure 13)
of the display (when the visual effect has completed) and do not refer to the
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display of series of gradually reduced images (as exhibited in figure 12)"
(Ans. 14). We agree with the Examiner.
Here, Mugura's "without overlap" display specifically refers to "the
broadcast and the electronic program guide are displayed without overlap"
(Mugura Col. 8 11. 5---6). However, Mugura clearly teaches "superimposing
these successfully smaller broadcast window outlines 1202-1210 over a
broadcast display 1201 in the translation of a broadcast window" (Mugura
Col. 8 11. 20-23). In other words, Mugura's broadcast is displayed without
overlap with an electronic program guide, but the successively reduced
outlines are superimposed over the moving images of the broadcast display.
For at least these reasons, we do not find, and Appellant has not established,
that Mugura teaches away from the claimed visual effect being
superimposed on moving images.
In view of the above discussion, since Appellant has not demonstrated
that the combined cited art fails to teach or suggest the argued limitations,
the Examiner's 35 U.S.C. § 103(a) rejection of independent claim 40, as
well as the rejections of commensurate independent claims 49, 59, and 69-
71, not separately argued (App. Br. 13), and dependent claims 41--48, 50-58,
60-68, and 72-86, also not separately argued (Id.), are sustained.
DECISION
We affirm the Examiner's§ 103(a) rejections Rl-R7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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Klh
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