Ex Parte Levien et al

Patent Trial and Appeal Board

Dec 14, 2016

11640836 (P.T.A.B. Dec. 14, 2016)

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.
SE1-0350-US 5986
EXAMINER
TREHAN, AKSHAY
ART UNIT PAPER NUMBER
2663
MAIL DATE DELIVERY MODE
11/640,836 12/18/2006
80118 7590 12/14/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
Royce A. Levien
12/14/2016 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 ROYCE A. LEVIEN, ROBERT W. LORD, MARK
A. MALAMUD, and JOHN D. JR. RINALDO
Appeal 2016-000091
Application 11/640,836
Technology Center 2600
Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTAII, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 3, 6, 7, 14, 15, 19, 21, 23, 29, 31-33, 38—42, 46, 47, 55-58, 75, and
92-94. Claims 1, 2, 4, 5, 8-13, 16-18, 20, 22, 2A-28, 30, 34—37, 43, 45, 48-
54, 59-74, and 76—91 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000091
Application 11/640,836
STATEMENT OF THE INVENTION
According to Appellants, the claims are directed to a dual mode image
capture technique where selected captured data is transferred to a separate
storage location (Abstract). Claim 55, reproduced below, is representative
of the claimed subject matter:
55. A system comprising:
circuitry configured for obtaining one or more images from one
or more storage media;
circuitry configured for displaying the one or more images
obtained from the one or more storage media for viewing; and
circuitry configured for removing the one or more images from
the one or more storage media at least partly in response to at
least one preselected time lapsing relative to viewing of the one
or more images.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
REFERENCES
Greer et al.
Kuwano et al.
Murashita et al.
Ohnishi
Walker et al.
Kazami et al.
US 5,959,622
US 2008/0192129 Al
US 7,612,806 B2
US 2002/0015094 Al
US 2004/0201683 Al
US 7,257,317 B2
Sept. 28, 1999
Feb. 7, 2002
Oct. 14, 2004
Aug. 14, 2007
Aug. 14, 2008
Nov. 3, 2009
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Application 11/640,836
REJECTIONS
Claims 6, 7, 14, 15, 19, 21, 23, 29, 31-33, 38, 41, 44, 47, 55-57, 75,
and 92—94 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Walker, Murashita, and Kazami (Final Act. 2—11).
Claims 42 and 58 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker, Murashita, Kazami, and Kuwano (Final Act. 11—
13) .
Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker, Murashita, Kazami, and Greer (Final Act. 13—
14) .
Claims 3 and 46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker, Murashita, Kazami, and Ohnishi (Final Act. 14-
lb).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants 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) (2016).
ISSUES
35 U.S.C. § 103(a): Claims 6, 7, 14, 15, 19, 21, 23, 29, 31-33, 38, 41, 44,
47, 55-57, 75, and 92-94
Appellants contend their invention as recited in claims 6, 7, 14, 15,
19, 21, 23, 29, 31—33, 38, 41, 44, 47, 55—57, 75, and 92—94, is not obvious
over Walker, Murashita, and Kazami (App. Br. 2—11). The issues presented
by the contentions are:
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Application 11/640,836
Issue 1: Has the Examiner failed to show the combination of Walker,
Murashita, and Kazami teaches, suggests, or otherwise renders obvious
“circuitry configured for removing the one or more images from the one or
more storage media at least partly in response to at least one preselected time
lapsing relative to viewing of the one or more images,” as recited in claim
55?
Issue 2: Has the Examiner improperly combined the teachings and
suggestions of Walker, Murashita, and Kazami?
ANALYSIS
Upon review of the Final Action and Answer, we note the Examiner
has set forth with specificity how the relied upon combination of references
teaches, suggests, or otherwise renders obvious, the inventions as recited. In
their Appeal Brief, for the independent claims, Appellants quote the disputed
limitation, quote the relied upon teachings in the prior art, and assert the
direct quotations evidence the cited portions of the prior art and the disputed
limitations “are very different on their faces” (App. Br. 15) without
providing any explanation as to why. Additionally, Appellants assertions’
address the references individually while the Examiner is relying on the
combination of Murashita and Kazami to teach the disputed limitation. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F. 2d
413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F. 2d 1091, 1097 (Fed.
Cir. 1986).
We emphasize the following. Appellants first assert Murashita does
not teach “circuitry configured for removing the one or more images from
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Application 11/640,836
the one or more storage media at least partly in response to at least one
preselected time lapsing relative to viewing of the one or more images,” as
recited in claim 55 (App. Br. 13). Appellants quote the cited portions of
Murashita (Murashita, ^fl[ 97, 110, 203, Fig 3) and further quote Murashita as
teaching “[o]nce a piece of image data is downloaded ... the image data is
no longer required to be kept” (App. Br. 15 (citing Murashita 1203)
(emphasis omitted)).
We are not persuaded by Appellants’ contentions. As noted above,
Appellants merely recite the disputed limitation, and quote the relied-upon
reference (App. Br. 13—15). In contrast, the Examiner has set forth with
specificity where Murashita teaches the disputed limitation (Final Act. 4—5)
and provides further explanation in the Answer (Ans. 2—5). More
specifically, the Examiner finds, and we agree, Murashita teaches deleting
“image data from [the] image data storing unit [123] after elapse of a
predetermined period” (Ans. 4; Murashita 1203) and allowing a user a
window of time to preview and download desired images and deletes server
images upon elapse of a predetermined time (Ans. 4; Murashita 1203,
Fig. 18). Appellants do not proffer sufficient evidence or argument to
persuade us the Examiner’s findings are in error.
Appellants next assert the cited portions of Kazami does not teach or
suggest “removing the one or more images from the one or more storage
media at least partly in response to at least one preselected time lapsing
relative to viewing of the one or more images,” as recited in claim 55
(emphasis added). Appellants again asserts the prior art fails to teach the
disputed limitation and quotes the relied upon teachings of the prior art
(App. Br. 15—17). Appellants then contend Kazami “deletes the
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Application 11/640,836
photographic image . . . when a delete operation is executed within a given
period of time” (id. at 17; Kazami, 36:52—54) (underlining omitted).
We are not persuaded by Appellants’ contentions and instead, agree
with the Examiner’s findings (Final Act. 4—5; Ans. 5). Specifically, we
agree with the Examiner that Kazami teaches reproducing a photographed
image for a certain period of time on a monitor and deleting the
photographed image data when a delete operation is executed within a given
period of time (Kazami, 36:49—54). Kazami further teaches this period of
time may be set (id. at 38:5—9). Thus, we agree with the Examiner that
Kazami teaches, or at least suggests, setting of a predetermined period (Final
Act. 4) and deleting an image “at least partly in response” to a preselected
time elapsing relative to viewing of the image (Ans. 5; Kazami, 36:52—54,
Fig. 24; see also Kazami, 3:4—20). Appellants have not proffered sufficient
evidence or argument to persuade us of error in the Examiner’s findings.
As a result, we are not persuaded the Examiner has failed to show the
combination of Walker, Murashita, and Kazami teaches, suggests, or renders
obvious “circuitry configured for removing the one or more images from the
one or more storage media at least partly in response to at least one
preselected time lapsing relative to viewing of the one or more images,” as
recited in claim 55.
Appellants additionally contend the Examiner has not articulated
reasoning with a rational underpinning as to why the combination of
teachings of Walker, Murashita, and Kazami would have been obvious to an
ordinarily skilled artisan (App. Br. 19—20). However, the Examiner has
articulated reasoning with some rational underpinning:
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Application 11/640,836
it would have been obvious to one having ordinary skill in the art
to combine Walker’s data management techniques WITH
Murashita’s data management techniques such as to maximize
storage capabilities, enhance storage versatility, and storage of
user-desirable image data in general to arrive at the Applicant's
claimed invention in the analogous art of digital cameras
it would have been obvious to one having ordinary skill in the art
to combine Walker’s and Murashita’s data storage techniques
and viewing capabilities in a communication network WITH
Kazami’s temporal-customized storage techniques relative to
displaying image data such as to maximize storage capabilities,
enhance storage versatility, and minimize storage of unwanted
image data in general to arrive at the Applicant’s claimed
invention in the analogous art of digital cameras.
(Final Act. 4—6). Appellants have not proffered sufficient evidence or
argument to persuade us the Examiner’s findings and conclusion are in error,
but instead, merely assert the Examiner’s findings and conclusion are not
rational without further explanation. Accordingly, we are not persuaded the
Examiner improperly combined the teachings and suggestions of Walker,
Murashita, and Kazami. Further, Appellants have not persuaded us the
Examiner failed to show the combination of Walker, Murashita, and Kazami
teaches, suggests, or otherwise renders obvious the limitations as recited in
independent claim 55.
Appellants present the same contentions for independent claims 32,
47, and 75 (App. Br. 21—43). For the reasons set forth above with respect to
claim 55, we are not persuaded by Appellants’ assertions. Appellants do not
proffer separate arguments for dependent claims 6, 7, 14, 15, 19, 21, 23, 29,
31, 33, 38, 41, 44, 56, 57, and 92—94, and thus, these claims fall with their
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Application 11/640,836
respective independent claims. Accordingly, we sustain the rejection of
claims 6, 7, 14, 15, 19, 21, 23, 29, 31-33, 38, 41, 44, 47, 55-57, 75 and 92-
94 under 35 U.S.C. § 103(a) for obviousness over Walker, Murashita, and
Kazami.
35 U.S.C. § 103(a): Claims 42 and 58; Claims 39 and 40; and Claims 3 and
46
Appellants do not proffer separate arguments for dependent claims 3,
39, 40, 42, 46, and 58. Therefore, these claims fall with their respective
independent claims. Accordingly, we sustain the rejection of claims 3, 39,
40, 42, 46, and 58 under 35 U.S.C. § 103(a) for obviousness.
DECISION
The Examiner’s rejection of claims 6, 7, 14, 15, 19, 21, 23, 29, 31—33,
38, 41, 44, 47, 55—57, 75 and 92—94 under 35 U.S.C. § 103(a) as being
unpatentable over Walker, Murashita, and Kazami is affirmed.
The Examiner’s rejection of claims 42 and 58 under 35 U.S.C.
§ 103(a) as being unpatentable over Walker, Murashita, Kazami, and
Kuwano is affirmed.
The Examiner’s rejection of claims 39 and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over Walker, Murashita, Kazami, and Greer
is affirmed.
The Examiner’s rejection of claims 3 and 46 under 35 U.S.C. § 103(a)
as being unpatentable over Walker, Murashita, Kazami, and Ohnishi is
affirmed.
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Application 11/640,836
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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