Ex Parte Muchnick et al

Patent Trial and Appeal Board

Feb 28, 2018

14026766 (P.T.A.B. Feb. 28, 2018)

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.
14/026,766 09/13/2013 Abraham Moshe Muchnick P2003-US 2008
108982 7590
Wolfe-SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
CHOWDHURY, AFROZA Y
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
03/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABRAHAM MOSHE MUCHNICK and ISRAEL DERDIK
Appeal 2017-008527
Application 14/026,766
Technology Center 2600
Before BARBARA A. BENOIT, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 25—48, which are all the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Applicant, Adobe Systems, Inc., as the real party in
interest. App. Br. 2.
Appeal 2017-008527
Application 14/026,766
Introduction
Appellants describe their invention as relating “to multimedia
editing.” Spec. 12. Appellants identify that an often experienced problem
with the image editing process “is the number of disjointed steps involved in
customizing a digital image, often involving downloading an image,
customizing it one software app, then uploading it to its final destination.”
Id. 13.
Claim 25 is illustrative of Appellants’ claimed invention—
25. A method, comprising:
displaying an image in a software application running on
a computing device;
responsive to receiving a user input to edit the image,
replacing the displayed image in a same location as the
displayed image, by the computing device, with an image editor
specific to the image comprising a lower resolution
representation of the image displayed in the image editor along
with one or more editing tools;
responsive to receiving a user input specifying an editing
operation, modifying the lower resolution representation of the
image displayed in the image editor, by the computing device,
according to the editing operation and displaying the modified
lower resolution representation of the image in the image
editor;
causing a separate modification of the image, by the
computing device, according to the editing operation performed
on the displayed lower resolution representation of the image;
and
responsive to a user input to leave the image editor,
replacing the image editor in a same location as the image
editor, by the computing device, with a display of the modified
image.
App. Br. 19 (Claims App’x).
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Application 14/026,766
Rejections
Claims 25, 26, 28—31, 34—38, 40-43, and 46-48 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Li (US 2009/0070675 Al, pub.
Mar. 12, 2009) and Agronik (2008/0209311 Al, pub. Aug. 28, 2008). Final
Act. 3-22.
Claims 27 and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Agronik, and Tsue (US 7,586,524 B2, iss. Sept. 8,
2009). Final Act. 22-23.
Claims 32 and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Agronik, and Yokomizo (US 2002/0067500 Al, pub.
June 6, 2002). Final Act. 23—24.
Claims 33 and 45 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Li, Agronik, Yokomizo, and Darden (US 2013/0085811
Al, pub. Apr. 4, 2013). Final Act. 24—25.
ANALYSIS
In rejecting claim 25, the Examiner finds that Li teaches or suggests
the disputed limitation of “responsive to receiving a user input to edit the
image, replacing the displayed image . . . with an image editor specific to the
image comprising a lower resolution representation of the image displayed
in the image editor.” Final Act. 3—5 (citing Li || 40, 43, 52, 64, 67, 79, Figs.
5, 10). Appellants argue the Examiner errs in this finding because Li’s
relied-upon disclosure teaches replacing a thumbnail image with an image
editor that presents a user with “the full size of [the] selected image.” App.
Br. 7 (quoting Li 179). We agree with Appellants.
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Appeal 2017-008527
Application 14/026,766
The Examiner answers by reiterating the findings from the rejection,
and specifically finding that Li’s disclosure of the capability of Li’s image
editor to adjust the resolution of a displayed image teaches or suggests the
disputed limitation. Ans. 4—5. We disagree with the Examiner. The
disputed limitation requires the display of “a lower resolution representation
of the image” in an image editor to occur responsive to the input that causes
the image editor to replace the display of the higher resolution image. In Li,
however, responsive to receiving the user input that causes replacing the
image with the image editor, a full-size (i.e., higher resolution) image is
displayed in the image editor to replace the thumbnail image. In other
words, whereas the disputed limitation requires replacing the display of a
higher resolution image with a lower resolution image, the teaching of Li
upon which the Examiner relies discloses replacing the display of a lower
resolution (thumbnail) image with a higher resolution (full-size) image.
While certainly Li discloses image editor technology that provides the
ability for an image editor to adjust the resolution of displayed images, the
Examiner does not adequately explain why Li’s teaching of image resolution
adjustment technology suggests the disputed limitation. Thus, in view of the
above-discussed difference between Li’s disclosure and the disputed
limitation, the Examiner does not provide an “articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 L.3d 977, 988 (Led. Cir. 2006).
Accordingly, we do not sustain the Examiner’s § 103 rejection of
claim 1. We also, accordingly, do not sustain the rejection of independent
claims 37 and 48, both of which include a similar disputed limitation (see
App. Br. 22, 25 (Claims App’x)) for which the Examiner’s rejections rely
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Application 14/026,766
upon the same findings (see Final Act. 15, 17—19). Because there is no
finding in the rejection of any dependent claim that cures this deficiency (see
Final Act. 8—16, 22—25), we also, therefore, do not sustain the rejections of
claims 26—36 and 38-47. Because we reverse the Examiner’s rejections
based on the disputed limitation, we do not address Appellants’ other
arguments.
DECISION
For the above reasons, we reverse the rejections of claims 25—48.
REVERSED
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