Ex Parte McMahan et al

Patent Trial and Appeal Board

Sep 15, 2014

12115605 (P.T.A.B. Sep. 15, 2014)

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.
12/115,605 05/06/2008 David Michael McMahan PU08 0017US1 5437
58342 7590 09/16/2014
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
BERHAN, AHMED A
ART UNIT PAPER NUMBER
2663
MAIL DATE DELIVERY MODE
09/16/2014 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 DAVID MICHAEL MCMAHAN and
L. SCOTT BLOEBAUM
____________

Appeal 2012–005908
Application 12/115,605
Technology Center 2600
____________

Before ROBERT E. NAPPI, MICHAEL J. STRAUSS, and
NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of Claims 1 through 9 and 14 through 20. Claims 10 through 13 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appeal 2012-005908
Application 12/115,605

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INVENTION
The invention is directed to the use of a camera to capture an image,
and a controller that uses pattern recognition to compare that image to stored
images to identify common subject matter, allowing a user to input
commands to manipulate the images. (Specification 2).
Claim 1 is illustrative of the invention and is reproduced below:
1. An electronic device comprising:
a camera assembly for capturing an image;
a controller configured to perform picture recognition on
the captured image to recognize at least one subject within the
captured image, and configured to compare the recognized
subject from the captured image to a plurality of stored images
to identify at least one stored image that contains the at least
one recognized subject from the captured image; and
an input interface configured to provide user access to the
at least one identified stored image and for receiving an input
command to manipulate at least one of the captured image or an
identified stored image, wherein the controller executes the
received manipulation command.

REJECTIONS AT ISSUE
The Examiner has rejected Claims 1 through 9 and 14 through 20
under 35 U.S.C. § 103(a) as being unpatentable over US Patent Application
Publication Number 2003/0184654 A1, pub. Oct. 2, 2003 by Kinjo
(“Kinjo”) and US Patent Application Publication Number 2005/0162523 A1,
pub. July 28, 2005 by Darrell et al. (hereinafter “Darrell”). Answer 4–8.
1

1
Throughout this opinion we refer to the Appeal Brief dated September 21,
2011 and the Examiner’s Answer mailed on December 6, 2011.
Appeal 2012-005908
Application 12/115,605

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The Examiner has also rejected Claims 1 through 9 and 14 through 20
under 35 U.S.C. § 102(b) as being anticipated by Darrell. Answer 9–12.
ISSUES
Appellants argue, on pages 6–7 of the Appeal Brief, that the
Examiner’s rejection of Claims 1 through 9 is in error, because those claims
all recite, in the preambles, an “electronic device” that comprises the
remaining elements of the claims, including the camera assembly, the
controller for performing the recognition analysis, and the input interface.
Appellants construe “electronic device” to require that all the claim elements
“are contained within a unitary electronic device.” Appeal Br. 6. In
contrast, argue Appellants, the Kinjo and Darrell references disclose systems
where the camera is separate from the other components, such as the
controller. Id.
Appellants further note that an amendment to independent Claim 14
was proposed, but not entered, that would have added the requirement of an
electronic device to the preamble of that claim. Appellants submit that if
that proposed amendment were entered (which is not the case), that claim
(and its associated dependent claims) would be patentable for the same
reasons as asserted for Claim 1 (and its associated dependent claims).
Appeal Br. 2–3, 5, 10. Appellants make no arguments with respect to
Claims 14 through 20 as currently presented.

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ANALYSIS
The Examiner has provided a comprehensive response to Appellants’
arguments. We have reviewed the Examiner’s response and agree with the
Examiner’s findings and conclusions. We add the following for emphasis.
We concur with the Examiner’s findings that Darrell anticipates
Claims 1 through 9 and 14 through 20. In addition, we concur with the
Examiner’s conclusion that those claims were obvious in light of Kinjo and
Darrell. Answer 4–12.
We do not agree with Appellants’ argument that the phrase “electronic
device” should be construed to require a “unitary electronic device.” The
Examiner correctly rejected this construction, and instead gave the term
“electronic device” it broadest reasonable interpretation, which does not
require the addition of the word “unitary” to the claims. Accordingly, there
is no patentable distinction between the illustrative embodiment of the
Specification, in which the camera optics and sensor, the controller, the
image storage and other required elements are enclosed in a the chassis of a
camera, versus the systems of Darrell and Kinjo, in which the camera is
connected via wireless protocols to the other components. Compare
Specification Fig. 1, with Darrell Fig. 1A, Kinjo Fig. 3.
Aside from the construction of the phrase “electronic device” per se,
the presence of that term in the preamble of the claims does not define terms
used in the body of the claims, nor does it give life and meaning to the
claim, and therefore does not constitute a claim limitation, Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also
MPEP § 2111.02(II). Therefore, Appellants have no basis for arguing that
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the presence of that term in the preamble meaningfully distinguishes the
cited art from the claimed subject matter.
Appellants also argue that the Examiner’s restriction requirement,
resulting in the withdrawal of Claims 10–13, which were directed to a server
communicating with a “portable electronic device,” implicitly supports
Appellants’ argument regarding a “unitary electronic device.” Appeal Br. 8.
The question of whether the restriction requirement was correctly made is
not before us on appeal, and in any event we do not consider it to be
dispositive as to the correct construction of “electronic device” (as distinct
from a “portable electronic device), nor does it provide grounds for
distinguishing the cited references.
Our agreement with the Examiner, that “electronic device” in the
preamble does not distinguish the cited art, disposes of all issues on appeal.
Accordingly, we sustain the Examiner’s rejection of Claims 1 through 9. As
discussed above, Appellants present no arguments as to Claims 14 through
20 as presented on appeal, and therefore any arguments are waived. See 37
C.F.R. § 41.37(c)(1)(vii)(2011).

DECISION
The decision of the Examiner to reject Claims 1 through 9 and 14
through 20 is affirmed.

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Application 12/115,605

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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)(1)(iv).

AFFIRMED

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