Ex Parte MacAskill et al

Patent Trial and Appeal Board

Aug 31, 2016

13027099 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/027,099 02/14/2011
107819 7590 09/02/2016
Patterson & Sheridan, LLP - SmugMug
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Don MacAskill
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.
SMUG/0018US
(2011.054555)
CONFIRMATION NO.
6149
EXAMINER
HOANG,SONT
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
PSDocketing@pattersonsheridan.com
Pair_eOfficeAction@pattersonsheridan.com
sversteeg@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DON MACASKILL, CHRIS MACASKILL and BRIAN STRONG
Appeal2015-005906
Application 13/027 ,099
Technology Center 2100
Before JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and
JOYCE CRAIG, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, 6, 10, 18, 19, 22, and 24. Claims 3-5, 7-9,
11-17, 20, 21, 23 and 25 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention generally relates to "[s]ystems, devices, and
methods are disclosed for sharing disparate galleries of files among a
plurality of users without duplicating the files in a file storage device."
Abstract.
Appeal2015-005906
Application 13/027 ,099
Claim 1 is illustrative of the claimed invention and reads as follows
with the disputed limitation emphasized:
1. A system comprising:
a server;
a database having information that can be used to locate a
plurality of photograph files, each photograph file having a
record in the database and being associated with a gallery;
a back-end; and
a front end;
wherein an owner of a first gallery can collect pointers to
photograph files from a second gallery and be able to view the
photograph files from the second gallery in the first gallery if and
only if:
the photograph files in the second gallery are public; and
the photograph files in the second gallery are marked
collectable;
wherein the owner can either manually collect the pointers
to the photograph files or have the pointers to the photograph
files automatically collected based on at least one rule defined by
the owner, wherein the collected pointers appear identically in
the front end of the first gallery to the content of the second
gallery photograph files corresponding to the collected pointers,
and wherein the photograph files corresponding to the collected
pointers remain in the second gallery.
THE REJECTIONS
The Examiner rejected claims 1, 6, 10, 18, 22, and 24 under 35 U.S.C.
§ 103(a) as anticipated by Mallinson (US 2011/0246495 Al; filed Apr. 1,
2010); Wang et al. (US 2006/0095514 Al; pub. May 4, 2006); and Lindhorst
et al. (US 7,380,202; pub. May 27, 2008). Final Act. 4--10. 1
1 Throughout this opinion, we also refer to (1) the Final Action mailed June
27, 2014 ("Final Act."); (2) the Appeal Brief filed November 19, 2014
("App. Br."); (3) the Examiner's Answer mailed March 26, 2015 ("Ans.");
and (4) the Reply Brief filed May 26, 2015 ("Reply Br.").
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Appeal2015-005906
Application 13/027 ,099
The Examiner rejected claims 2 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Mallinson, Wang, Lindhorst, and Heere et al. (US
200510148849 Al; pub. July 7, 2005). Final Act. 10.
ANALYSIS
THE OBVIOUSNESS REJECTION BASED ON MALLINSON, WANG, AND
LINDHORST
Claims 1, 6, 10, 18, 22, and 24
Based on the record before us, we are not persuaded the Examiner
erred in rejecting claims 1, 6, 10, 18, 22, and 24 as unpatentable over
Mallinson, Wang, and Lindhorst.
Appellants contend that the combination of Mallinson, Wang, and
Lindhorst does not teach or suggest collected pointers appearing identically
in the front end of the first gallery to the content of the second gallery
photograph files corresponding to the collected pointers, and wherein the
photograph files corresponding to the collected pointers remain in the
second gallery. App. Br. 8-9. In particular, Appellants allege that
Lindhorst's pointers, i.e. thumbnail images, "merely represent the webs
parts, and do not appear identically to the content of the web parts." App.
Br. 9.
According to Appellants, Lindhorst merely uses generic thumbnail
icons. For example, for the web part 1911 pointing to contacts,
"[Lindhorst's] pointer in the form of a thumbnail image does not appear
identically to the content of the contact files, such as an image of all of the
contacts located in the file." App. Br. 9.
The Examiner, however, finds that Lindhorst expressly contemplates
using a thumbnail for a web parts image. Ans. 3. The Examiner explains
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Appeal2015-005906
Application 13/027 ,099
that "[a]s is well known in the art, a thumbnail of a picture file (.JPEG or
.JGP format) is a miniature version of the picture file which appears
identically to content of the picture file." Ans. 3. This is consistent with
Lindhorst's teaching that "a user can browse through catalogs of web parts
from various sources and select from thumbnail views of the web parts that
can be 'dragged and dropped' into a content manipulation zone of the page."
Lindhorst, col. 23, 11. 32-36 (emphasis added); see also Ans. 3.
As the Examiner additionally points out, claim 1 merely requires the
pointer to appear identically to the content of the second photograph.
Ans. 2; see also App. Br. 11 (admitting that a thumbnail would include the
same content as the corresponding image). As such, we are not persuaded
that Lindhorst's thumbnail, which a skilled artisan would understand to be a
miniaturized identical copy of the web part image, fails to satisfy the recited
limitation.
Appellants also assert that the Examiner erred in relying on Ahn for
,1 1 r- •,• {',1 1 •1 r1 A.. T""t. "1f\ -1 -1 ~ 1 T""t. I"\ Al T tne aenmnon or tnumonau. .)ee, e.g., App. tlf. l u---11; Kep1y tlf. L--4. in
particular, Appellants maintain that Ahn's thumbnail is not identical to the
main image. App. Br. 11; Reply Br. 2--4. The Examiner, however, does not
rely on Ahn as teaching the limitations of the claim and instead merely relies
on Ahn to demonstrate it was well known at the time of the invention that a
thumbnail of an image is a miniaturized main image. See Ans. 4 (quoting
paragraph 48 of Ahn that "[a] thumbnail image is a miniaturized main
image, such as an image used for a preview."). As such, we find Appellants'
arguments with respect to Ahn unpersuasive.
Accordingly, for the reasons discussed above and by the Examiner,
we sustain the rejection of claim 1, as well as claims 6, 10, 18, 22, and 24.
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Appeal2015-005906
Application 13/027 ,099
THE OBVIOUSNESS REJECTION MALLINSON, WANG, LINDHORST, AND HEERE
Claims 2 and 19
Appellants do not separately argue patentability for dependent claims
2 and 19 and, instead, rely on the arguments presented for claim 1. See App.
Br. 14; Reply Br. 4. For the reasons discussed above, we find these
arguments unpersuasive. Accordingly, we sustain the rejection of claims 2
and 19.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 6, 10, 18, 19, 22,
and 24 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 6, 10, 18, 19,
I"\ I"\ 1 I"\ A
LL, ana L<+.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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