Ex Parte Mull et al

Patent Trial and Appeal Board

Jun 20, 2016

12607766 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/607,766 10/28/2009
22879 7590 06/22/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Russell Mull
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82259510 5160
EXAMINER
VARGA, WILSON V
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL MULL, PHIL MANIJAK,
MARC FREDERICK AYOTTE, and MICHAEL R. WILSON
Appeal2015-002121
Application 12/607,766
Technology Center 2100
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
ERIC B. CHEN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-18, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appeal2015-002121
Application 12/607,766
STATEMENT OF THE CASE
Appellants' invention relates to a product option selection method for
digital images. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A product option selection method, comprising:
identifYing a selected plurality of products each populated
with a selected plurality of digital images;
causing, in a frame of a user interface, a display of a first
option selector and a second option selector, the first option
selector corresponding to an additional product related to two
or more of the selected plurality of digital images, the second
option selector corresponding to a product option for an
individual one of the selected plurality of products; and
applying options to the plurality of products according to
a user's manipulation of the first and second option selectors.
Claims 1-18 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Jackson (US 7,136,837 B2; Nov. 14, 2006).
ANALYSIS
§ 112, First Paragraph, Rejection
We are persuaded by Appellants' arguments (App. Br. 7-8; see also
Reply Br. 2-3) that the claim limitations "identifying a selected plurality of
products each populated with a selected plurality of digital images" and "the
first option selector corresponding to an additional product related to two or
more of the selected plurality of digital images" comply with the written
description requirement under 35 U.S.C. § 112, first paragraph.
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Application 12/607,766
The Examiner found that the amended limitations "identifying a
selected plurality of products each populated with a selected plurality of
digital images" and "the first option selector corresponding to an additional
product related to two or more of the selected plurality of digital images" are
unsupported by Appellants' Specification. (Final Act. 3.) In particular, the
Examiner found that "any single-image product is excluded from the
claimed invention since a single-image product lacks a 'plurality of digital
images' by the plain meanings of plural and plurality (i.e.[,] more than
one)." (Id. (emphases omitted).) Furthermore, the Examiner found, "as
disclosed by the instant application at FIG. 11 with option selector 90, the
additional products selectable via a first option selector pertain solely to
additional products applicable to selected single-image products" and
because "a single-image product is not 'populated with a selected plurality
of digital images' [as claimed] ... the first option selector ... [from the
limitation 'the first option selector corresponding to an additional product
related to two or more of the selected plurality of digital images'] appears to
be impossible." (Id. (emphasis omitted).) We do not agree.
Appellants' Specification discloses the following:
For example, a user may select utilize a digital image [sic] to
produce single image prints of various sizes. The user may also
select that same digital image in a collage poser, a photo book,
and a calendar. Once selected, a user may desire to add options
to the selected products. Some options such as index prints and
photo CDs apply to multiple selected products. Other options
such as covers for photo books and frames for posters apply to
individual products.
(i-f l (emphases added).) According to Appellants' broader disclosure, a user
can select a collage poster, a photo book, or a calendar (i.e. the claimed "a
selected plurality of digital images") and purchase an additional product, for
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Application 12/607,766
example a photo CD of the collage poster, photo book, or calendar (i.e., the
claimed "the first option selector corresponding to an additional product
related to two or more of the selected plurality of digital images"). In other
words, the user can select multi-image products for a collage book, as
illustrated in Figure 5 (see i-f 18) and a photobook, as illustrated in Figure 6
(see i-f 19), followed by ordering a photo CD of such collage poster and
photobook, as illustrated in Figure 11 (see i-f 25).
Although Appellants' Specification discloses an embodiment in which
"a user has selected twelve digital images represented by thumbnails 3 8a
through 381 to populate eight different products-six single image products
and two multi-image products" (i-f 24 (emphasis added)) and that "[t]he user
has selected the index prints option selector 90 applicable to all single
image products selected by the user" (i-f 25 (emphasis added)), such
disclosure is only an exemplary embodiment (see i-fi-13, 13).
and
Accordingly, we are persuaded by Appellants' arguments that:
As seen in these figures and further described in the
specification, the plurality of selected products, here a collage
poster (Fig. 5, item 68) and photobook (Fig. 6, item 68), are each
populated by a selected plurality of digital images. . . . Each of
these figures show at least that the plurality of these selected
products is each populated with a selected plurality of digital
images
[ w ]ritten description support for the recited "first option
selector corresponding to an additional product related to two or
more of the selected plurality of digital images" ... may be found
at least in Figure 11 which shows, as an example, a set of index
prints (Fig. 11, item 90).
(App. Br. 8 (internal citations omitted); see also Reply Br. 2-3.)
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Application 12/607,766
Thus, we do not agree with the Examiner that the Specification fails to
provide written description support for the limitations "identifying a selected
plurality of products each populated with a selected plurality of digital
images" and "the first option selector corresponding to an additional product
related to two or more of the selected plurality of digital images."
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 112, first paragraph. Claims 2---6 depend from claim 1.
Therefore, we do not sustain the rejection of claims 2---6 under 35 U.S.C.
§ 112, first paragraph, for the same reasons discussed with respect to
independent claim 1.
Independent claims 7 and 13 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 7 and 13, as well as dependent claims 8-12 and 14--18,
for the same reasons discussed with respect to claim 1.
§ 102 Rejection-Jackson
Claims 1, 3-7, 9-13, and 15-18
We are unpersuaded by Appellants' arguments (App. Br. 11-13; see
also Reply Br. 3--4) that Jackson does not describe the limitation "additional
products," as recited in independent claim 1.
The Examiner found that the photo products (e.g., prints) of Jackson
correspond to the limitation "products" and that the customized photo
products (e.g., framing or a photo album) of Jackson correspond to the
limitation "additional products." (Final Act. 4.) In particular, the Examiner
found that "the additional products of JACKSON (e.g.[,] FIG. 3 #160 Matte,
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Application 12/607,766
#170 Frame, FIG. 4 #200 Album, and #230 Album type at the least) are
additional to the initial products, the prints (JACKSON FIG. 3 #150)."
(Ans. 12 (emphases omitted).) We agree with the Examiner.
Jackson relates to a "method for a user to make payment for ordered
services related to stored images by a service provider." (Col. 1, 11. 12-14.)
Figure 2 of Jackson illustrates "a flow diagram of a typical method for
effectively transferring images from a user to a service provider to produce
photo products 66, such as prints, albums, PictureCDs, etc." (Col. 5, 11. 21-
24.) Figure 2B of Jackson includes block 118, in which a customer can
purchase customizable features for a photo product (e.g., framed hardcopy
prints, customized photo albums, or PictureCD) in addition to standard
service prints (col. 7, 11. 13-15) and block 120, in which "[a] user selects the
images to be used to produce the photo products" (col. 8, 11. 49-50).
Although the customizable features for the photo product of Jackson (i.e.,
block 118 from Figure 2B) are purchased before the photo product of
Jackson is selected (i.e., block 120 from Figure 2B), such customizable
features for the photo product of Jackson corresponds to the claimed
"additional features" for the photo product because the purchase of the
framed hardcopy prints, customized photo albums, or PictureCD also
requires the purchase of an underlying photo product.
Appellants argue that "[t]he use of the term 'additional product' in the
specification ... indicate[s] a product that is additional to the initially
identified products 'each populated with a selected plurality of images."'
(App. Br. 11-12.) Accordingly, Appellants argue, "[a] PictureCD cannot be
'additional' by itself, nor could the selection of both prints and a frame as
Examiner appears to argue" because "[e]ach of these products are initial
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Application 12/607,766
selections of products, rather than additional products as disclosed in the
present specification." (Id. at 13.) However, as discussed previously, the
customizable features for a photo product of Jackson (e.g., framed hardcopy
prints, customized photo albums, or PictureCD) correspond to the claimed
"additional features" for the photo product because the purchase of a framed
hardcopy prints, customized photo albums, or PictureCD also requires the
purchase of an underlying photo product.
Appellants also argue "after the initial presentation of products and
prices the user selects, for the first and only time in the process, the products,
and types of products desired" and "[ w ]hether these initial products include
prints or frames does not change the fact that the initial selection does not
later have additional products added which correspond to the initial
selections." (App. Br. 12.) Contrary to Appellants' arguments, Jackson
explains that in block 118 of Figure 2B, a customer can purchase
customizable features for a photo product (e.g., framed hardcopy prints,
customized photo albums, or PictureCD) in addition to standard service
prints. (Col. 7, 11. 13-15.)
Therefore, we agree with the Examiner that Jackson describes the
limitation "additional products."
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 102(b). Claims 3---6 depend from independent claim 1, and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 3---6 under 35
U.S.C. § 102(b) for the same reasons discussed with respect to independent
claim 1.
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Independent claims 7 and 13 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any substantive arguments with respect to these claims. We
sustain the rejection of claims 7 and 13, as well as dependent claims 9-12
and 15-18, for the same reasons discussed with respect to claim 1.
Claims 2, 8, and 14
Although Appellants nominally argue the rejection of dependent
claims 2, 8, and 14 separately (App. Br. 13-14), the arguments presented do
not point out with particularity or explain why the limitations of these
dependent claims are separately patentable. Instead, Appellants provide a
conclusory statement that "[n]othing in Jackson indicates that each user
manipulation of an option selector will be detected" (id.) and "[i]nstead, in
Jackson, only a final combination of selected product option appears to be
used to generate a preview image for the final selected combination of
selected options" (id. at 14). Thus, Appellants have not presented any
substantive arguments with respect to these claims. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art."). We are not persuaded by these
arguments for the reasons discussed with respect to claims 1, 7 and 13, from
which claims 2, 8, and 14 depend. Accordingly, we sustain this rejection.
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Application 12/607,766
DECISION
The Examiner's decision rejecting claims 1-18 under 35 U.S.C.
§ 112, first paragraph is reversed.
The Examiner's decision rejecting claims 1-18 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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