Ex Parte Misawa

Board of Patent Appeals and Interferences

Jan 28, 2008

09663354 (B.P.A.I. Jan. 28, 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 ATSUSHI MISAWA
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Appeal 2007-3096
Application 09/663,354
Technology Center 2600
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Decided: January 28, 2008
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Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and JOHN A.
JEFFERY, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 6 to 15. We have jurisdiction under 35 U.S.C. § 6(b), and we heard
the appeal on January 22, 2008.
We will sustain the obviousness rejections.
Appellant has invented a digital camera with a built-in memory for
storing a plurality of images, and a detachable memory card with a larger
storage capacity than the built-in memory. When the detachable memory
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Application 09/663,354

card is inserted into an insertion slot in the digital camera, a memory control
in the digital camera automatically transfers the image data from the built-in
memory to the detachable memory card (Figures 1 and 2; Specification 3
and 7).
Claim 6 is illustrative of the claims on appeal, and it reads as follows:
6. A digital camera for capturing images, comprising:
a built-in memory for storing a plurality of images in the form of
image data, said built-in memory being provided in a camera body;
a detachable memory card for storing image data, said detachable
memory card having a larger storage capacity than said built-in memory;
an insertion slot for receiving said detachable memory card;
detecting means for detecting insertion of said detachable memory
card into said insertion slot; and
memory control means for automatically transferring the image data
from said built-in memory to said detachable memory card upon said
detecting means detecting said insertion.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Watanabe US 4,887,161 Dec. 12, 1989
Sasson US 5,016,107 May 14, 1991
Wakui US 5,648,816 Jul. 15, 1997
The Examiner rejected claims 6, 7, 9, and 13 to 15 under 35 U.S.C.
§ 103(a) based upon the teachings of Sasson and Wakui. The Examiner
rejected claims 8, 10, 11, and 12 under 35 U.S.C. § 103(a) based upon the
teachings of Sasson, Wakui, and Watanabe.
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Appellant contends that the applied references do not teach memory
control means that automatically transfers an image from a built-in digital
camera memory to a detachable memory card upon detecting that the
detachable memory card is inserted into the digital camera (Br. 13).
ISSUE
Do the applied references teach or would they have suggested to the
skilled artisan automatic transfer of image data from a built-in digital camera
memory to a detachable memory card upon insertion of the detachable
memory card into the digital camera?
FINDINGS OF FACT
Appellant and the Examiner agree that the digital camera described by
Sasson does not teach automatically transferring image data from the built-in
memory to the detachable memory upon the detecting means detecting
insertion of the detachable memory into the digital camera (Final Rejection
4; Br. 9).
Sasson describes a digital camera that transfers digital image signals
from a built-in memory 18 to a detachable memory card 24 after a certain
number of digital image signals are accumulated in the built-in memory
(Fig. 1A; col. 4, ll. 14 to 22).
Wakui describes a digital camera for capturing images that comprises
a built-in memory 20 in the camera body for storing a plurality of images in
the form of image data (col. 6, ll. 57 to 59). “An external memory, which is
detachably attached by a connector portion to the camera, may also be used
to store images taken by the image pickup device” (Abstract). The external
memory 31 has a storage capacity greater than the built-in memory 20, and
is “a card-type external memory which can be detachably attached to the still
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video camera 1” (col. 5, ll. 42 to 45). The detachable memory card 31 “is
manually inserted in the loading portion 17, by an operator, through an
insertion opening until the IC memory card reaches the innermost end
portion of the loading portion” of the camera 1 (col. 6, ll. 21 to 24). “The
still video camera 1 has a memory card detecting circuit (connection
detecting means) 16 which detects the loading of the IC memory card 31 in
the loading portion 17” of the camera 1 (col. 5, ll. 64 to 67). The digital
camera 1 has a memory control means for automatically transferring the
image data from the built-in memory 20 to the detachable memory card 31
upon the detecting means detecting insertion of the memory card 31 (col. 20,
ll. 54 to 67).
Watanabe was cited by the Examiner to demonstrate a digital camera
10 that has a detachable memory card 20 with an exposed portion “so that a
user can grasp the memory card by the exposed part with fingers to detach
said memory card from said camera body (col. 3 lines 42+)” (Final
Rejection 7).
PRINCIPLES OF LAW
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on less than the total amount of evidence relied on by the
Examiner without designating it as a new ground of rejection. In re Bush,
296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA
1966).
The claims on appeal should not be confined to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).
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During ex parte prosecution, claims must be interpreted as broadly as
their terms reasonably allow since Applicants have the power during the
administrative process to amend the claims to avoid the prior art. In re Zletz,
893 F.2d 319, 322 (Fed. Cir. 1989).
ANALYSIS
Based upon the teachings of Wakui, we find that the digital camera
described therein teaches or would have suggested to the skilled artisan all
of the digital camera structure set forth in claims 6, 9, and 13 to 15. The
teachings of Sasson are merely cumulative to teachings found in Wakui. As
indicated supra, Wakui teaches that the digital image signals stored in the
built-in memory are “automatically transferred to the memory card when the
memory card is correctly connected to the camera” (Br. 13).
With respect to claim 7, Wakui teaches that the built-in memory 20 is
erased/initialized when the image content therein is automatically sent to the
detachable memory card 31 (col. 20, ll. 53 to 61).
Turning lastly to claims 8 and 10 to 12, we agree with the Examiner
that it would have been manifestly obvious to the skilled artisan to provide
an exposed portion on the detachable memory card that extends from the
digital camera when it is inserted in the digital camera so that a user can
easily remove the detachable memory card from the digital camera (Final
Rejection 7). As taught by Watanabe, the length of the exposed portion on
the detachable memory card has to be long enough for the user to grasp the
detachable memory card and pull it out of the camera. Thus, it would have
been obvious to the skilled artisan to provide the specific detachable
memory card lengths set forth in claims 8 and 10 to 12.

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CONCLUSION OF LAW
As indicated supra, the obviousness of the claimed subject matter set
forth in claims 6, 7, 9, and 13 to 15 is demonstrated by the teachings of
Wakui1. The obviousness of the claimed subject matter set forth in claims 8
and 10 to 12 is demonstrated by the teachings of Wakui and Watanabe2.
ORDER
The obviousness rejections of claims 6 to 15 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

1 It follows that these claims would have been obvious over the combined
evidence provided by Sasson and Wakui.
2 It follows that these claims would have been obvious over the combined
evidence provided by Sasson, Wakui, and Watanabe.
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AFFIRMED

eld

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