Ex Parte Levey

Patent Trial and Appeal Board

May 27, 2016

12843241 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/843,241 07/26/2010
61947 7590 06/01/2016
Apple - Blank Rome
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
HOUSTON, TX 77002
FIRST NAMED INVENTOR
Charles I. Levey
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.
P20627US1
(l 19-0553US1)
5787
EXAMINER
VIEAUX, GARY C
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
mbrininger@blankrome.com
houstonpatents@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES I. LEVEY
Appeal2014-007309
Application 12/843,241
Technology Center 2600
Before DEBRA K. STEPHENS, KARA L. SZPONDOWSKI, and
SHARON PENICK, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 3, 4, and 7-14. Claims 2, 5, and 6 have been cancelled (App. Br.
10). Claims 15-21 have been withdrawn (App. Br. 12-13). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007309
Application 12/843,241
STATEMENT OF THE INVENTION
According to Appellant, the claims are directed to an automatic digital
camera photography mode selection (Abstract). Claim 1, reproduced below,
is representative of the claimed subject matter:
1. A digital camera having a plurality of photography modes,
compnsmg:
an 1magmg sensor;
an optical system for imaging a scene onto the imaging
sensor;
an image capture control for initiating an image capture
operation;
a photography mode user interface for selecting between a
plurality of photography modes, the photography modes
having associated image capture and image processing
settings; and
a power button for turning the digital camera on or off,
wherein when the camera is in an off state and the power
button is activated with a first activation pattern the digital
camera is turned on and set to operate in a default
photography mode and when the power button is activated
with a second activation pattern the digital camera is
turned on and set to operate in a previously selected
photography mode,
wherein the first and second activation patterns are
differentiated by a time duration that the power button is
pressed, by a number of times that the power button is
pressed or by a pressure that the power button is pressed.
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Appeal2014-007309
Application 12/843,241
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kitazawa
Tsai
Roderick et al.
Ronkainen
Hamamura et al.
Sander et al.
us 5,721,989
US 6,571,066 Bl
US 6,976,215 Bl
US 7,721,227 B2
US 2004/0072589 Al
US 2009/0180659 Al
REJECTIONS
Feb.24, 1998
May 27, 2003
Dec. 13, 2005
May 18, 2010
Apr. 15, 2004
July 16, 2009
Claims 1, 3, and 11-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kitazawa, Hamamura, and Tsai (Final Act. 7-12).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kitazawa, Hamamura, Tsai, and Roderick (Final Act. 12-
13).
Claims 7 and 8 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Kitazawa, Hamamura, Tsai, and Sander (Final Act. 13-
15).
Claims 9 and 10 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Kitazawa, Hamamura, Tsai, and Ronkainen (Final Act.
16-19).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments 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)(l)(iv) (2012).
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Appeal2014-007309
Application 12/843,241
ISSUES
35U.S.C.§103(a): Claims 1, 3, and 11-14
Appellant argues their invention is not obvious over Kitazawa,
Hamanmra, and Tsai (App. Br. 5-8). The issue presented by the arguments
1s:
Issue 1: Did the Examiner err in finding the combination of
Kitazawa, Hamamura, and Tsai discloses:
a power button for turning the digital camera on or off, wherein when
the camera is in an off state and the power button is activated with a
first activation pattern the digital camera is turned on and set to operate
in a default photography mode and when the power button is activated
with a second activation pattern the digital camera is turned on and set
to operate in a previously selected photography mode,
as recited in claim 1; and
Issue 2: Did the Examiner err by improperly combining the teachings
and suggestions of Kitazawa, Hamamura, and Tsai?
ANALYSIS
Appellant contends Kitazawa, Hamamura, and Tsai does not teach:
wherein when the camera is in an off state and the power button
is activated with a first activation pattern the digital camera is
turned on and set to operate in a default photography mode and
when the power button is activated with a second activation
pattern the digital camera is turned on and set to operate in a
previously selected photography mode,
as recited in claim 1 (App. Br. 5). Specifically, Appellant argues the
specified claim limitation recites "a power button having (at least) two
mutually exclusive activation patterns" (id.). Although Appellant concedes
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Application 12/843,241
"Kitazawa discloses two switch positions," Appellant argues the two switch
positions are not mutually exclusive because both switches "can be switched
on at the same time" (id. at 6). Appellant further argues Tsai's power
button, in contrast to Kitazawa's two switches, does not have a long and
short button press at the same time; therefore, Tsai "discloses a power button
having two mutually exclusive activation patterns" (id. at 7-8). Appellant
also argues Hamamura does not disclose the claimed power button (id. at 8).
We are not persuaded by Appellant's arguments. The Examiner
correctly points out that claim 1 does not recite "a power button having (at
least) two mutually exclusive activation patterns" (Ans. 2-3). Nor, as noted
by the Examiner, does claim 1 restrict the first and second activation patterns
to an interpretation of being 'mutually exclusive' (id. at 3). Thus, Appellant
is arguing limitations not recited in the claim.
The Examiner finds Kitazawa discloses two "detected states of the
distinct switch positions" of switches SWl and SW2 produce a first and
second activation pattern for two modes of photography (id. at 5---6;
Kitazawa, 9:30-36, 19:12-20:40). Indeed, Kitazawa teaches when set
switch SWl is turned on, a first mode/function is used in photography and
when the power switch SW2 is turned on, a second mode/function is used in
photography (Kitazawa, 9:30-36). Tsai teaches a multimode power button
having activation patterns determined by duration of the press of a power
button (Final Act. 9-10; Tsai, Figs. 2, 4, 2:27-34). We agree with the
Examiner an ordinarily skilled artisan would have found it obvious to
combine Tsai' s power control button with Kitazawa and Hamamura to teach
the disputed limitation (Final Act. 9-11). Accordingly, we are not
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Application 12/843,241
persuaded the Examiner erred in finding Kitazawa, Hamamura, and Tsai
discloses the limitations recited in claim 1.
Appellant further argues combining the teachings of Tsai with
Kitazawa renders Kitazawa unsatisfactory for its intended purpose because
"the 'ON-ON' condition in Kitazawa" shown in Appellant's created table
would be prevented by incorporating Tsai's mutually exclusive multimode
power button (App. Br. 7-8).
We are not persuaded by Appellant's arguments.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F .2d 413, 425 (CCP A 1981) (citations omitted). Here,
Appellant is arguing physically combining the teachings, while the
Examiner has relied on what the teachings would have suggested to an
ordinarily skilled artisan. Indeed, we are not persuaded an ordinarily skilled
artisan would have found combining Tsai' s power control button having
different activation patterns with Kitazawa's teachings of different activation
patterns for different modes of photography, would have been "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citations omitted). Given
the Examiner's combination, we are not persuaded combining the teachings
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Application 12/843,241
of Tsai with Kitazawa would render Kitazawa unsatisfactory for its intended
purpose.
It follows we are not persuaded the Examiner improperly combined
the teachings and suggestions of Kitazawa, Hamamura, and Tsai.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Kitazawa, Hamamura, and Tsai discloses the limitations
recited in claim 1. Therefore, we sustain the rejection of claims 1, 3, and 14
under 35 U.S.C. § 103(a) as being obvious over Kitazawa, Hamamura, and
Tsai.
The remaining claims were not separately argued. Accordingly, we
are not persuaded the Examiner erred in finding the combinations of
Kitazawa, Hamamura, Tsai, and Roderick; Kitazawa, Hamamura, Tsai, and
Sander; and Kitazawa, Hamamura, Tsai, and Ronkainen teach or suggestthe
limitations as recited in claims 4, 7-8, and 9-10 respectively. Therefore, we
sustain the rejection of claims 4, 7-8, and 9-10 under 35 U.S.C. § 103(a) for
obviousness over Kitazawa, Hamamura, Tsai, and Roderick; Kitazawa,
Hamamura, Tsai, and Sander; and Kitazawa, Hamamura, Tsai, and
Ronkainen.
DECISION
The Examiner's rejection of claims 1, 3, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Kitazawa, Hamamura, and Tsai is
affirmed.
The Examiner's rejection of claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Kitazawa, Hamamura, Tsai, and Roderick is
affirmed.
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Application 12/843,241
The Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 103(a)
as being unpatentable over Kitazawa, Hamamura, Tsai, and Sander is
affirmed.
The Examiner's rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Kitazawa, Hamamura, Tsai, and Ronkainen 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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