Ex parte Mitsuhashi et al.

Board of Patent Appeals and Interferences

Aug 6, 1999

08484353 (B.P.A.I. Aug. 6, 1999)

Application for patent filed June 7, 1995. According to appellants, the1
application is a division of Application 08/144,809, filed October 28, 1993, now Patent
No. 5,497,193, granted March 5, 1996.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SYOJI MITSUHASHI,
and SATORU GOZU
_____________
Appeal No. 97-2582
Application 08/484,3531
______________
ON BRIEF
_______________
Before KRASS, FLEMING and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's rejection of claims 7, 8-10 and 15-18. No
claim has been allowed.
References relied on by the Examiner
Kinoshita et al. 5,170,262 Dec. 8, 1992
(Kinoshita)
Appeal No. 97-2582
Application 08/484,353
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Taguchi et al. 5,206,716 April 27,
1993
(Taguchi)
Ogawa 5,212,556 May 18, 1993
The Rejections on Appeal
Claims 7 and 15-18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kinoshita and Taguchi.
Claims 8-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kinoshita, Taguchi, and Ogawa.
The Invention
The invention is directed to an electronic still camera
with a two-level push button that controls first and second
switching operations, and to a picture processing method
making use of such a camera. Claims 7, 15 and 17 are the
independent claims and are reproduced below:
7. A method of processing picture data with a
camera having two-level push button, including the steps of:
forming image data of an object;
displaying said image data as a picture on a
display means;
recording said image data in a memory means in
response to a first switching operation performed by pushing
the push button all the way in; and
reproducing and displaying said image data
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recorded in said memory means on said display means in
response to a second switching operation performed by pushing
the push button partially in.
15. An electronic still camera comprising:
means for forming a data image of an object to
be photographed;
means for displaying said image data as a
picture on a display means;
a memory;
means for recording said image data in said
memory in response to a first switching operation;
means for reproducing and displaying said image
data recorded in said memory on said display means in response
to a second switching operation; and
a two-level push button wherein said second
switching operation is made when said push button is pushed
partially in and said first switching operation is made when
said push button is pushed all the way in.
17. An electronic still camera comprising;
a push button having a first, second, and third
operating positions;
means for forming a data image of an object to
be photographed;
means for displaying said image data as a
picture on a display means when said push button is in said
third operating position;
a memory;
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means for recording said image data in said
memory in response to said push button being in said second
operating position;
means for reproducing and displaying said image
data recorded in said memory on said display means in response
to said push button being in said first operating position.
Opinion
We reverse.
A reversal of the rejections on appeal should not be
construed as an affirmative indication that the appellants’
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
All independent claims require at least two operative
positions of a single push-button switch, one of which causes
the recording of image data into a memory means and the other
of which causes reproduction of the recorded image data.
Claim 17 requires a third operative position of the push-
button which simply displays the formed image data as a
picture on a display means.
In its first disclosed embodiment, Kinoshita discloses a
switch 15 which when depressed freezes a current image on
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Application 08/484,353
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display and records the same on a recording disk 20. When the
switch is depressed again, operation of the camera returns to
that of displaying on a monitor the new images formed.
(Column 4, lines 1-30). In column 3, lines 40-48, Kinoshita
describes:
An FM demodulator 24 demodulates an FM
reproduction signal supplied from the
recording/reproduction amplifier 22. An analog
image signal output from the FM demodulator 24 is
supplied to the camera signal processing circuit 5
of the image pickup section 1. Therefore, the
signal reproduced from the recording disk 20 can be
displayed on the monitor 10 in the same manner as an
image signal from the image pickup element 4.
(Emphasis added.)
Thus, it is evident that Kinoshita does contemplate the
reproduction of the recorded image on a monitor, even in the
case of its first disclosed embodiment. How reproduction of
the recorded image is triggered, however, is not specifically
discussed. It is not known which switch is acted on to
provide reproduction of the recorded image data, although it
is apparent that the recording/reproduction amplifier 22 is
involved. For instance, in column 3, lines 33-36, Kinoshita
states: “A recording/reproduction amplifier 22 is used to
amplify a signal when the signal is to be recorded on the
magnetic disk 20 or when a signal described later is
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reproduced.”
A second embodiment is disclosed in Kinoshita, which
involves the use of a switch 30. In column 5, lines 28-37, it
is stated:
A switch 30 controls the start of a
recording/reproduction amplifier 22. The switch 30
is used to determine whether an image in a frame
memory 7 of the image pickup section 1 is recorded
on a disk 23. When the switch 30 is lightly
depressed, a current image is not recorded on the
disk 23 but a next image in the frame memory 7 is
transferred. When the switch 30 is strongly
depressed, a current image on the frame memory 7 is
transferred, and both the frame memory 7 and a
recording disk 20 can record a new image.
It appears that although the amplifier 22 can be used for
either recording or reproduction, switch 30 only activates the
recording function of amplifier 22. To the extent that
amplifier 22 can be activated to reproduce information from
the disk 23, Kinoshita is silent as to what activates that
aspect of amplifier 22, similar to the case with the first
disclosed embodiment.
For the foregoing reasons, whether the second embodiment
is implemented on top of the first embodiment, consistent with
the examiner’s position, or is separate and independent of the
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first embodiment, as is argued by the appellants, is not
particularly relevant. Even if the examiner’s view is
presumed to be correct, there is inadequate basis for the
examiner to conclude that switch 30 somehow activates the
reproduction functions of the recording/reproduction amplifier
22. It is simply unclear how one triggers reproduction of the
data recorded on the disk 23.
In any event, we disagree with the examiner that the
second disclosed embodiment necessarily includes all features
of the first disclosed embodiment. The examiner correctly
points out that in column 5, lines 16-21, Kinoshita states:
Some necessary circuits shown in detail in FIG. 1
[first embodiment] are not shown in FIG.4 [second
embodiment]. However, an image pickup section 1 has
the same arrangement and operation as those of the
first embodiment.
The above-quoted text must be read in context. In our view,
the discussion means only that to the extent any detailed
circuits from the first embodiment illustrated in Figure 1 is
needed to carry out the operations according to the second
embodiment, the illustrations are omitted in Figure 4. Here,
operation of the second disclosed embodiment does not require
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the switch 15. As described, both switches are used to cause
recording of image data onto the disk 23. It would appear
that they are alternatives to each other.
Assuming for the moment that Kinoshita discloses a switch
15 for recording image data and a switch 30 for reproducing
image data, both in the same embodiment, we further disagree
with the examiner that in light of Taguchi’s multi-level push-
button it would have been obvious to one with ordinary skill
in the art to merge the functions of switch 15 and switch 30
into a single push-button. The appellants are correct that
the multiple functions activated by Taguchi’s single multi-
level push-button, i.e., (1) off, (2) supplying power to
applicable circuit elements to get them ready for operation,
and (3) start recording, are not of the same type of
combination required by the appellants’ claims. In our view,
Taguchi would not have reasonably motivated one with ordinary
skill in the art to merge the “recording” function and the
“reproduction” function onto a single control button. What is
missing is a teaching or suggestion about combining controls
for opposite flow of information on a single switch. The mere
fact that a switch can be used to control plural functions
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Application 08/484,353
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does not itself render obvious the merging of all types of
functions on a single control. We reject the examiner’s
position that any combination of functions to be merged on a
single control button would have been obvious, in light of the
existence of a multi-function control switch.
At some point, the inherent advantages of using one
switch instead of two is insufficient to overcome the
disparate nature of certain functions to be alone considered a
reasonable motivation to combine those functions on a single
control. In our view, that is the case here. Accordingly,
the examiner has failed to make out a case of prima facie
obviousness.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor. Para-Ordnance Mfg., Inc. v. SGS
Appeal No. 97-2582
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Importers Int’l., Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996).
For the foregoing reasons, the rejection of claims 7 and
15-18 under 35 U.S.C. § 103 as being unpatentable over
Kinoshita and Taguchi cannot be sustained.
Claims 8-10 were rejected under 35 U.S.C. § 103 as being
unpatentable over Kinoshita, Taguchi, and Ogawa. Claim 8
depends from claim 7 and further recites that the recording is
repeated in response to the first switching operation to
thereby continuously record successively image data in the
memory means. Claim 9 depends from claim 8 and claim 10
depends from claim 9. With regard to claim 8, the appellants
argue (Br. at 8):
While Ogawa discloses a camera that is capable of
continuous recordation or reproduction, the Ogawa
device must be switched into a recordation mode to
accomplish the continuous recordation, and switched
into a reproduction mode to accomplish the
continuous reproduction.
The feature added by claim 8, however, does not preclude
switching first between a recordation mode and a reproduction
mode. It appears that for claims 8-10 the appellants continue
to rely on the feature of putting both recording and
reproduction controls on the same push-button for patentable
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Application 08/484,353
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distinction over the prior art. With regard to that aspect of
the appellants’ claimed invention, Ogawa, as applied by the
examiner, does not make up for the above-discussed
deficiencies of Kinoshita and Taguchi. Accordingly, the
rejection of claims 8-10 cannot be sustained.
Conclusion
The rejection of claims 7 and 15-18 under 35 U.S.C. § 103
as being unpatentable over Kinoshita and Taguchi is reversed.
The rejection of claims 8-10 under 35 U.S.C. § 103 as
being unpatentable over Kinoshita, Taguchi, and Ogawa is
reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 97-2582
Application 08/484,353
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