Ex Parte Lee

Patent Trial and Appeal Board

Jan 23, 2013

11377290 (P.T.A.B. Jan. 23, 2013)

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.
11/377,290 03/17/2006 Moon-Heui Lee 50687 5557
1609 7590 01/23/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
DIEP, TRUNG T
ART UNIT PAPER NUMBER
2664
MAIL DATE DELIVERY MODE
01/23/2013 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 MOON-HEUI LEE
____________________

Appeal 2011-004816
Application 11/377,290
Technology Center 2600
____________________

Before THU A. DANG, JAMES R. HUGHES,
and GREGORY J. GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/377,290

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I. STATEMENT OF THE CASE
Appellant appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5, 6, and 8-14 (App. Br. 2). Claims 4 and 7 have been canceled
(App. Br. 8-9 and Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant’s invention is directed to a method for displaying image
data of a moving picture on a portable terminal as a thumbnail image;
wherein, the file format of the moving picture includes one frame of the
moving picture data that is used as thumbnail image data which is added to
the moving picture data separate from a header (Abstract; Spec. 8:25-9:10).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for displaying image data in a portable
terminal, the method comprising:

photographing a moving picture in a moving picture
photographing mode, the moving picture having one or more
frames; and

if a moving picture storage option is selected during
photographing, adding one of the frames of the photographed
moving picture as item display data to the photographed
moving picture and storing the photographed moving picture,

wherein the item display data is stored in an additional
field added at the end of the last field of the format of the
photographed moving picture, separately from a header in the
photographed moving picture.

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C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Anderson US 5,903,309 May 11, 1999
Sasagawa US 7,417,668 B2 Aug. 26, 2008
(filed Apr. 08, 2004)

Claims 1-3, 5, 6, and 8-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sasagawa in view of Anderson.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
determining that the combination of Sasagawa and Anderson teaches or
would have suggested that “the item display data is stored in an additional
field added at the end of the last field of the format of the photographed
moving picture, separately from a header in the photographed moving
picture” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Sasagawa
1. Sasagawa discloses a digital camera that records and plays back
both still and moving picture (col. 4, ll. 14-18).
2. When the last recorded video file is a moving picture file, the
image of the leading frame is displayed on a monitor 30 (col. 7, ll. 20-25).
3. The file format includes a header followed by moving picture
data and a data index (Fig.6; col. 7, ll. 3-5).
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Anderson
4. Anderson discloses a digital camera that records movie clips
having a file format 470 that includes a header field 462 and JPEG data field
464 followed by a thumbnail image 466, an information field 472, and a
sound field 474 (Figs. 9 and 10; col. 5, ll. 50-55 and col. 6, ll. 29-35).
5. The camera also includes a multiple image file format 480
having a header 482 that points to a series of extended file formats 470
including at least one thumbnail (Fig. 10; col. 7, ll. 19-34).

IV. ANALYSIS
Claims 1-3, 5, 6, and 8-14
Appellant contends that “the thumbnail included in the extended file
format 470 and the file format 480 of Anderson is not stored in the
additional field added at the end of the last field of the file format, separately
from a header in the photographed moving picture” (App. Br. 6).
However, the Examiner finds that:
Anderson reference clearly teaches each of the extended file
formats 470 in a multiple image file format 480 wherein the
thumbnail, information field, and sound field can be considered as
item display data which is stored in an additional field added at the
last field of the format of the multiple image format file, separately
from the header 482 in the multiple image format file (Ans. 11).

We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 merely defines “item display data” as “one of the frames
[,i.e., images,] of the photographed moving picture [that is added] to the
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photographed moving picture,” i.e., data associated with images of a picture
that is to be added to the data of the picture.
Although claim 1 also recites that the “item display data is stored in
an additional field added at the end of the last field of the format of the
photographed moving picture, separately from a header in the photographed
moving picture,” we note that the “additional field,” “last field” and
“header” are merely data structures that the item display data is stored
therein and thus the limitation “stored in…” merely describes the item
display data. However, how data is stored does not alter the functionality of
or provide any additional function to the claimed adding step of the claimed
method for displaying data as recited in claim 1. That is, the limitation is
essentially nonfunctional descriptive material in that the limitation simply
describes data to be added and displayed but the underlying functionality
remains the same regardless of how the data is stored. Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No.
2006-1003), aff’d, Rule 36 (June 12, 2006) .
Thus, we interpret claim 1 to merely require adding data associated
with an image of a photographed moving picture to the data relating to the
photographed moving picture, as consistent with the Specification and claim
1.
Sasagawa is directed to a digital camera that captures moving picture
videos; wherein, the image of the leading frame is used as an icon to be
displayed (FF 1 and 2). The file format includes a header followed by the
moving picture data and a data index (FF 3). We find that leading frame of
the moving picture data comprises data associated with an image. That is,
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we find that Sasagawa’s leading frame comprises “item display data” (claim
1).
In addition, Anderson is directed to a digital camera that records
movie clips having an extended file format including a header, JPEG data,
thumbnail image, information field and the sound field arranged in that
particular order with the header being the first field (FF 4). A multiple
image file format includes a header that points to a series of extended file
formats (FF 5). We find that the extended file format comprises data
associated with an image that is added to the JPEG data separate from the
header. In particular, we agree with the Examiner’s finding that Anderson’s
extended file format comprises “item display data [that] is stored in an
additional field added at the end of the last field of the format of the
photographed moving picture, separately from a header in the photographed
moving picture” (claim 1).
In view of our claim construction above, we find that the combination
of Sasagawa and Anderson at least suggests providing “item display data
[that] is stored in an additional field added at the end of the last field of the
format of the photographed moving picture, separately from a header in the
photographed moving picture,” as required by claim 1.
Accordingly, we find that Appellant has not shown that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Sasagawa in view
of Anderson. Further, independent claims 5 and 9 having similar claim
language and claims 2, 3, 6, 8, and 10-14 (depending from claims 1, 5, and
9), which have not been argued separately, fall with claim 1.

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V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-3, 5, 6, and 8-14 under
35 U.S.C. § 103(a) 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)(iv).

AFFIRMED

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