Ex Parte Maida

Board of Patent Appeals and Interferences

Sep 24, 2008

10390283 (B.P.A.I. Sep. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL ARMAND MAIDA
____________

Appeal 2008-3976
Application 10/390,283
Technology Center 2600
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Decided: September 24, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2008-3976
Application 10/390,283

Appellant’s invention relates to an interactive kiosk which permits a
user to create custom postcards with images from the user’s digital camera.
The user selects among images from the camera which are presented on a
display screen for printing on one or more postcards. (Spec. 2).
Claim 1 is illustrative of the invention and reads as follows:
1. An interactive kiosk for printing postcards with one or more
images obtained from a digital camera comprising, in combination,
an input data receiver for obtaining image data from said digital
camera,
a display screen for displaying said photographic images to a user,
selection means operable by said user for accepting a designation of
one or more of said photographic images to be printed on one or more
postcards,
a payment acceptor for receiving a designated monetary payment
from said user,
a supply of blank postcards, and
a printer responsive to said payment input selection means and said
payment acceptor for printing said one or more photographic images on one
or more of said blank postcards and for delivering printed postcards to said
user.

The Examiner relies on the following prior art references to show
unpatentability:
Brennan US 5,587,740 Dec. 24, 1996
Liebenow US 6,480,673 B2 Nov. 12, 2002
Fantone US 6,549,295 B1 Apr. 15, 2003
(filed Dec. 14, 1998)
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Crasnianski US 6,707,531 B2 Mar. 16, 2004
(filed Jan. 14, 2003
Crosby US 7,062,107 B1 Jun. 13, 2006
(filed Nov. 28, 2000)

Claims 1-3, 5-8, 12, 13, 15, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Crasnianski in view of Brennan.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crasnianski in view of Brennan and further in view of
Liebenow.
Claims 9-11 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crasnianski in view of Brennan and further in view of
Fantone.
Claims 14 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crasnianski in view of Brennan and further in view of
Crosby.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which 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)(1)(vii)].

ISSUES
(i) Under 35 U.S.C. § 103(a), with respect to appealed claims 1-3, 5-
8, 12, 13, 15, and 17, would one of ordinary skill in the art at the time of the
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invention have found it obvious to combine Crasnianski and Brennan to
render the claimed invention unpatentable?
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claim 4,
would one of ordinary skill in the art at the time of the invention have found
it obvious to modify the combination of Crasnianski and Brennan by adding
the teachings of Liebenow to render the claimed invention unpatentable?
(iii) Under 35 U.S.C. § 103(a), with respect to appealed claims 9-11
and 16, would one of ordinary skill in the art at the time of the invention
have found it obvious to modify the combination of Crasnianski and
Brennan by adding the teachings of Fantone to render the claimed invention
unpatentable?
(iv) Under 35 U.S.C. § 103(a), with respect to appealed claims 14 and
18, would one of ordinary skill in the art at the time of the invention have
found it obvious to modify the combination of Crasnianski and Brennan by
adding the teachings of Crosby to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
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reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739). “One of the ways in which a
patent's subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” KSR, 127 S. Ct. at 1742.

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claims 1 and 15 based on the combination of
Crasnianski and Brennan, Appellant’s arguments in response assert a failure
to set forth a prima facie case of obviousness since the Examiner has not
established a proper basis for the proposed combination of references.
According to Appellant (App. Br. 8-10; Reply Br. 2), Brennan suggests that
personal cameras are not suited as an image source for printing postcards
and, therefore, a skilled artisan would not have been motivated to substitute
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post card stock for the photographic paper in the kiosk of Crasnianski which
utilizes a personal camera image source.
We do not agree. Appellant’s arguments to the contrary
notwithstanding, we do not find that Brennan provides any discouragement
to the use of personal cameras to print on postcards, but, rather, Brennan
suggests (col. 1, ll. 16-23) only that users, such as traveling vacationers,
sometimes forget or do not wish to carry cameras.
Further, we do not agree with Appellant’s contention (App. Br. 9;
Reply Br. 4) that the Examiner has merely relied on hindsight reconstruction
of Appellant’s disclosed invention for the proposed combination of
Crasnianski and Brennan. We find that the Examiner has clearly stated
(Ans. 4) a rationale for the proposed modification of Crasnianski, i.e., the
ability to share photographs with friends by printing them on stock such as
postcards which lend themselves to mail delivery as specifically taught by
Brennan at column 8, lines 35-41.
We further find no basis on the record before us to support
Appellant’s conclusion (App. Br. 6 and 8; Reply Br. 2 and 4) that customers
who use Crasnianski’s self-service kiosk would want their pictures printed
only on photographic paper and not on any other medium such as postcard
stock. It is our view that the ordinarily skilled artisan would have
recognized and appreciated that the suggestion to print photographic images
on stock which would be suitable for mail delivery such as postcards as
suggested by Brennan would have served as an obvious enhancement to the
self-service photographic system of Crasnianski. According to Leapfrog,
when a combination of familiar elements according to methods known to the
skilled artisan achieves a predictable result, it is likely to be obvious.
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Accordingly, for all of the above reasons, since it is our opinion that
the Examiner’s prima facie case of obviousness has not been overcome by
any convincing arguments from Appellant, the Examiner’s 35 U.S.C.
§ 103(a) rejection, based on the combination of Crasnianski and Brennan, of
independent claims 1 and 15, as well as claims 2, 3, 5-8, 12, 13, and 17 not
separately argued by Appellant, is sustained.
We also sustain the Examiner’s obviousness rejections of dependent
claims 4, 9-11, 14, 16, and 18 in which the teachings of the secondary
references to Liebenow, Fantone, and Crosby are applied in various
combinations with the combined teachings of Crasnianski and Brennan.
Appellant has made no separate arguments as to the patentability of these
claims but, rather, has relied on arguments previously made with respect to
independent claims 1 and 15, which arguments we found to be unpersuasive
for all of the reasons discussed supra.

CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-18 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2006).

AFFIRMED

eld

CHARLES G. CALL
20 EAST GOETHE STREET
CH1
CHICAGO, IL 60610-2368
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