Ex Parte McGarvey

Board of Patent Appeals and Interferences

Jan 29, 2008

09759475 (B.P.A.I. Jan. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES E. McGARVEY1
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Appeal 2007-3320
Application 09/759,475
Technology Center 2600
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Decided: January 29, 2008
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Before JAMESON LEE, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL 1
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A. Statement of the Case
This is a decision on appeal by an Applicant under 35 U.S.C. § 134(a)
from a final rejection of claims 1-4, 6, 9, 12-21, 27-30, and 32. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The real party in interest is Eastman Kodak Company.
Appeal 2007-3320
Application 09/759,475

References Relied on by the Examiner 1
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D’Luna US 5,008,739 Apr. 16, 1991
Suzuki US 5,691,772 Nov. 25, 1997
Thadani US 6,201,530 Mar. 13, 2001

Thorpe and Takeuchi The All-Digital Camcorder – The Arrival of Electronic
Cinematography, SMPTE Journal, Vol. 105, No. 1, 13-30 (1996)
(hereinafter “Thorpe”)

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The Rejections on Appeal

The Examiner rejected claims 1, 3, 4, 6, 9, 12, 15-20, 27-30, and 32
under 35 U.S.C. § 103(a) as unpatentable over Thorpe and Suzuki.
The Examiner rejected claims 2 and 14 under 5 U.S.C. § 103(a) as
unpatentable over Thorpe, Suzuki, and D’Luna.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Thorpe, Suzuki, and Thadani.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Thorpe and D’Luna.
B. Issues
Has the Applicant shown error in the rejection of claims 1-4, 6, 9, 12-
21, 27-30, and 32 under 35 U.S.C. § 103 as unpatentable over prior art?
C. Summary of the Decision
The Applicant has not shown error in the rejection of any claim under
35 U.S.C. § 103 as unpatentable over prior art.
D Findings of Fact (Referenced as FF. ¶ No.)
1. The Applicant’s invention is directed to a digital camera system
which stores in the camera white balance settings for different venues, with a
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respective associated file identifier for each venue. (Spec. Summary of the
Invention).
2. According to the Applicant, prior art systems only allow one
setting to be stored, and the saved setting is erased and cannot be recalled
once a new setting is stored. (Spec. 1:30 to 2:1).
3. Further according to the Applicant, photographers typically do
not want to determine the proper white balance setting for a venue each time
they want to take a picture at the venue. (Spec. 5:19-20).
4. That perceived problem, however, was already solved by the
system disclosed in Thorpe.
5. Thorpe discloses a camera system which includes multiple
removable electronic setup memory cards each one of which stores the
complete control settings for a particular “image look.” (Thorpe 22:1:17 to
23:3:5).
6. Thorpe states (Thorpe 24:1:7 to 24:3:10):
Rental houses and production facilities can prepare set-up
cards for a wide variety of such customized image-making
choices. Over a period of time involving various shooting
experiences, the particular look sought by a film
cinematographer or videographer can be readily supplied in the
form of an appropriately identified set-up card.

A major step in eliminating “video-tweaking” during
location shooting is provided by this unique electronic card
system, bringing the video camcorder a large step closer to the
adjustment-free operation of a film camera. Digital EC is thus
rendered more friendly to the skilled film cinematographer.

7. Independent claim 1 reads as follows:
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Claim 1. A white balance picture correction process
implemented in a digital camera having a processor, a memory
and a user interface, comprising the steps of:

determining a white balance digital camera processing
setting for a picture taking venue at a visit to the venue;

saving the setting for the venue; and

correcting pictures taken at a subsequent visit to the
venue with the saved setting;

the determining step further comprising capturing an
image utilizing the digital camera and processing the captured
image in the processor of the digital camera to determine the
white balance setting;

the saving step further comprising storing the white
balance setting in the memory of the digital camera in a file
having an identifier which allows a user of the digital camera to
correlate the identifier with the venue;

the memory being configurable to store the determined
white balance setting and at least one additional white balance
setting for another picture taking venue, the determined white
balance setting being selectable from the plurality of stored
white balance settings, for use in the correcting step, via the
user interface of the digital camera.

8. The Examiner determined that Thorpe discloses each and every
feature of claim 1 except the very last limitation of (See Ans. 3:7 to 4:4):2
the memory being configurable to store the determined
white balance setting and at least one additional white balance
setting for another picture taking venue, the determined white
balance setting being selectable from the plurality of stored

2 This finding of the Examiner is not challenged by the Applicant.
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white balance settings, for use in the correcting step, via the
user interface of the digital camera.

9. Suzuki discloses a camera system with white balance
adjustment abilities, including (1) a memory table 108M which stores the
gain for fine weather, cloudy, and tungsten light sources, which is produced
when white balance adjustment is set in manual mode, and (2) a memory
table 108K which stores the gains for various fluorescent lamps used when
fluorescent lamp manual mode is selected. (Suzuki 4:54-65).
10. Suzuki discloses that the supporting memory circuitry can be a
random access memory or a read-only memory. (Suzuki 4:24-29).
E. Principles of Law
Obviousness is a legal determination made on the basis of underlying
factual inquiries including (1) the scope and content of the prior art; (2) the
differences between the claimed invention and the prior art; (3) the level of
ordinary skill in the art; and (4) any objective evidence of unobviousness,
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). One with ordinary skill
in the art is presumed to have skills apart from what the prior art references
explicitly say. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). A
person of ordinary skill in the art is also a person of ordinary creativity, not
an automaton. KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742
(2007).
In KSR International Co., 127 S.Ct. at 1742-43, with regard to
motivation to combine teachings, the Supreme Court stated: “Rigid
preventive rules that deny factfinders recourse to common sense, however,
are neither necessary under our case law nor consistent with it.” In an
obviousness analysis, it is not necessary to find precise teachings in the prior
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art directed to the specific subject matter claimed because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. See KSR International Co., 127 S.Ct. at 1741.
Also, motivation to combine teachings need not be expressly stated in
any prior art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006).
There need only be an articulated reasoning with rational underpinnings to
support a motivation to combine teachings. In re Kahn, 441 F.3d at 988.
The test for determining obviousness is not whether the features of
one reference may be bodily incorporated into the system disclosed in
another reference, but whether the collective teachings as viewed by one
with ordinary skill in the art would have rendered the claimed subject matter
obvious. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). A prior art
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir.), cert. denied, 474 U.S. 843 (1985). A reference must be evaluated for
all its teachings and is not limited to its specific embodiments. In re Bode,
550 F.2d 656, 661 (CCPA 1977).
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During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Icon Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). It is improper to read limitations
from examples given in the specification into the claims. Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988). The
name of the game is the claim. In re Hiniker Co., 150 F.3d 1367, 1369 (Fed.
Cir. 1998).
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F. Analysis
As in any appeal, the Applicant as appellant bears the burden of
demonstrating error in the rejections on appeal.
The independent claims are claims 1, 15, 21, 27, 28, 29, and 32. The
Applicant has not argued the merits of any dependent claim separate from
that of the independent claim from which it depends. The Applicant also has
not argued the merits of any independent claim separately from that of other
independent claims, except for claims 1 and 21. We discuss only claims 1
and 21. Note that simply stating the features of a claim does not constitute
an argument for separate patentability of that claim. Board Rule 37(c)(vii).
We focus our analysis on the contested limitations. Aero Prods. Int’l,
Inc. v. Intex Rec. Corp., 466 F.3d 1000, 1012 n.6 (Fed. Cir. 2006). First, the
Applicant argues that because Thorpe’s system requires use of a plug-in
setup card for each separate venue for picture taking, it not only fails to
teach the claim limitation of storing the respective settings of multiple
venues in the memory of the digital camera but teaches away from that
feature (Br. 9:25 to 10:2). The argument is rejected.
Simply disclosing something different is not a “teaching away” in the
sense of affirmatively advising not to take a certain approach or disclosing
that a particular scheme is unworkable. At most, Thorpe just discloses a
different scheme. In any event, we do not see why the three memory cards
of Thorpe as shown in Figure 16b cannot all be deemed a part of the
memory of the camera system if the user selects all of them for use with the
camera. Claim 1 nowhere requires the memory of the camera to be on a
single chip or a single memory card. During examination, claim terms are
given their broadest reasonable interpretation consistent with the
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specification. In re Icon Health & Fitness, Inc., 496 F.3d at 1379. Nothing
in Applicant’s specification defines camera memory as necessarily
implemented as only a single chip or card. Indeed, Applicant’s specification
even regards the combination of internal memory 36 and removable memory
card 32 collectively as the camera memory. In that regard, the specification
states (Spec. 5:23-27):
The white balance setting for each venue is determined and
stored in a file named by the user. The file can be
created/located in the camera white balance memory 36 and/or
in the removable memory card 32 and duplicated on a separate
computer 38, such as a desktop computer, available to the user.

Even if the disclosed embodiment regards only a single memory card as the
camera memory, it is improper to read limitations from the specification into
the claims. Constant v. Advanced Micro-Devices, Inc., 848 F.2d at 1571.
The name of the game is the claim. In re Hiniker Co., 150 F.3d at 1369.
Accordingly, Applicant’s argument does not distinguish the invention
of claim 1 from the disclosed camera system of Thorpe. Thus, the Applicant
has not shown error in the rejection of claims 1-4, 6, 9, 12-20, 27-30, and 32.
We further discuss the issue, in the alternative, now assuming
arguendo that a camera memory cannot comprise more than a single
memory card. The Applicant correctly points out that Suzuki does not
disclose the storing of multiple white balance settings, one for each venue, in
a camera memory, but the storing of multiple generic and non-venue-
specific factors useful for providing white balance correction at the time of
taking a photograph. The Applicant also correctly points out that Suzuki
does not appear to pre-store a white balance setting for any particular venue,
but rather teaches that the white balance setting used to provide white
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balance correction is recomputed upon each visit to the venue based in part
on the stored generic factors selected by the photographer. But those
arguments are misplaced because the Examiner did not find Suzuki as
disclosing that the setting for multiple venues are concurrently stored in the
camera’s memory.
The Applicant is under a mistaken impression that every single feature
of a claimed invention must be found in one of the cited prior art references
in an obviousness rejection. There is no such requirement. While it is true
that in an anticipation rejection under 35 U.S.C. § 102 every claimed feature
must be found within the four corners of a single prior art reference, for an
obviousness rejection there is no corresponding rule that every claim feature
must be found specifically within a reference. That should not be surprising
because the issue is obviousness. That there are differences between the
claimed invention and the prior art is already presumed. The inquiry under
35 U.S.C. § 103 is whether the differences are such that the claimed
invention as a whole would have been obvious to one with ordinary skill.
The level of ordinary skill in the art is reflected in the prior art
references cited of record. In particular, Suzuki discloses that one with
ordinary skill in the art would have known that the memory in a digital
camera can be used to store a variety of setting control information useful
for computing the proper setting at the time of taking of a photograph. For
instance, Suzuki states (Suzuki 4:54-65):
A control table 108A for use in auto white balance is a
memory which in auto mode, along with processing the values
Rb/Gb and Bb/Gb as parameters, stores the gain of the variable
amplifier circuits 104R and 104B. A control table 108M for
use in manual white balance is a memory which stores the gain
for fine weather, cloudy, and tungsten light sources which is
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produced when white balance adjustment device is set in a
manual mode. A control table 108K for use in fluorescent lamp
white balance situations is a memory to store the gains for the
kind of fluorescent lamp used in situations wherein fluorescent
lamp manual mode is selected.

One with ordinary skill is presumed to be skilled, In re Sovish, 769
F.2d at 743, has ordinary creativity and is not an automaton. KSR
International Co., 127 S.Ct. at 1742. The Examiner reasoned (Ans. at 4)
that in light of Suzuki’s disclosure of storing a variety of white balance
setting variable values in one memory, one with ordinary skill would have
known or been led to storing the white balance setting of more than one
venue on one memory. The idea conveyed by Suzuki is that a camera
memory is useful for storing a variety of setting data. If the camera memory
is useful for storing values corresponding to different selectable factors for
computing the white balance at various venues when needed, why wouldn’t
it be useful for storing the setting of multiple venues if it is already known to
predetermine the white balance setting for each venue? From the
perspective of one with ordinary skill in the art, the answer is that of course
it would. That is the rationale articulated by the Examiner. It is logical and
reasonable. Motivation to combine teachings need not be expressly stated in
any prior art reference. In re Kahn, 441 F.3d at 989. There need only be an
articulated reasoning with rational underpinnings. In re Kahn, 441 F.3d at
988. Here, there is. Storing the contents of plural camera memory cards all
in one camera memory yields nothing more than a predictable result,
eliminating the need to carry multiple memory cards.
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Accordingly, on the above-stated alternative basis, the Applicant has
not shown error in the rejection of claims 1-4, 6, 9, 12-20, 27-30, and 32.
As for claim 21, the Applicant relies on the same argument as that
presented in connection with claim 1 and an additional argument, i.e., “that
the set-up card system of Thorpe does not involve such assignment of file
name identifiers via a user interface of a digital camera” (Br. 17:18-19).
The argument completely ignores this statement of the Examiner in the final
Office action specifically with regard to claim 21 (Final Rej. 20:1-2):
Official Notice is taken that a camera comprises a user
interface for assigning file name identifiers to the settings.

In the Answer, the Examiner again reiterated the official notice relied
upon for the rejection of claim 21 (Ans. 20:1-2). The Applicant filed
no reply. Applicant’s failure to challenge the above-noted official
notice taken by the Examiner renders unpersuasive the argument that
the feature is not disclosed by Thorpe or met by the combination of
Thorpe and D’Luna.
The Applicant has not shown error in the rejection of claim 21.
G. Conclusion
The rejection of claims 1, 3, 4, 6, 9, 12, 15-20, 27-30, and 32 under
35 U.S.C. § 103(a) as unpatentable over Thorpe and Suzuki is affirmed. 21
22 The rejection of claims 2 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Thorpe, Suzuki, and D’Luna is affirmed.23
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1 The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Thorpe, Suzuki, and Thadani is affirmed. 2
3 The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over Thorpe and D’Luna is affirmed. 4
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MAT

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Thomas H. Close
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester NY 14650-2201

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