10639288 (B.P.A.I. Jun. 25, 2010)

Ex Parte Mun

Board of Patent Appeals and InterferencesJun 25, 2010

10639288 (B.P.A.I. Jun. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte CHANG HO MUN ________________ Appeal 2009-012292 Application 10/639,288 Technology Center 2600 ________________ Decided: June 29, 2010 ________________ Before KENNETH W. HAIRSTON, THOMAS S. HAHN, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012292 Application 10/639,288 2 Appellant appeals under 35 U.S.C. §§ 6(b) and 134(a) from the Examiner’s final rejection of claims 43-69. Oral argument was held June 22, 2010. We REVERSE. STATEMENT OF THE CASE Appellant’s invention relates to a mobile communication terminal (e.g., a cell phone) that includes a digital camera. More specifically, Appellant’s invention addresses concerns relating to uses of such camera cell phones that infringe upon the privacy of others. Such privacy-infringing uses of the camera cell phone include (1) taking photographs of individuals without their knowledge or consent (e.g., video voyeurism); and (2) taking photographs of secret or restricted matters, such as can be found at industrial and military sites. See generally Spec. ¶¶ [0001]–[0010]. To address these concerns, Appellant has provided an alerting mechanism on the camera cell phone that indicates when the user is taking a photograph (Abstract). Examples of the alerting mechanism include an audible beep, a pre-recorded message, a lighting pattern, or a flash (Spec. ¶ [0013]). The Specification further states that the phone may include an “earphone,” or earplug and associated jack, but “when an input of the camera switch 100 is detected, the speaker 600 is operated regardless of connection of the earphone” (¶¶ [0032]-[0033]). Independent claim 43 is illustrative. It reads as follows with the dispositive portion of the disputed claim language italicized: Appeal 2009-012292 Application 10/639,288 3 43. An apparatus for controlling a digital camera in a mobile communication terminal, the apparatus comprising: a switch configured to initiate a photographing operation while in a camera mode that is activated in response to a menu selection; a photographing indication unit in the mobile communication terminal configured to generate an audible indication that the photographing operation is being performed; a photographing function unit configured to convert a photographed external image into digital image data; and a controller configured to control the photographing indication unit and the photographing function unit when the photographing operation is initiated such that the photographing indication unit generates the audible indication in conjunction with performing the photographing operation when the mobile communication terminal is in an operating mode that suppresses audio output. Claims 43-69 stand rejected under 35 U.S.C. § 103(a) as obvious over Aotake1 in view of Ozaki.2 More specifically, the Examiner relies upon Aotake for disclosing a camera cell phone that includes an earphone jack (Ans. 4-5) and relies on Ozaki for teaching a camera cell phone alerting mechanism that emits a warning sound when a photograph is being taken (Ans. 5-6, 23-24). The Examiner concludes that it would have been obvious to have included a photographing indication unit that always indicates audibly that a photograph has been taken as taught by Ozaki in [Aotake’s] mobile communication terminal . . . , for doing so would provide an audible indication to a person whose picture is being taken even in a state where the camera is being used improperly so that the person whose picture is being taken can cope with the situation where their privacy is being infringed. 1 US 6,819,942 B2, filed Mar. 22, 2002 and issued Nov. 16, 2004. 2 JP 10-031265, published Feb. 3, 1998. Appeal 2009-012292 Application 10/639,288 4 (Ans. 6-7). Appellant argues various reasons for why no motivation exists to combine the prior art in a manner that would result in a camera phone that “generates [an] audible indication in conjunction with performing the photographing operation when the mobile communication terminal is in an operating mode that suppresses audio output” as required by claim 43 (see App. Br. 11-16; Reply Br. 11-20). For example, Appellant argues (1) “Ozaki teaches a photographing device that produces a beep sound only when performing photography by remote control,” or at a distance from the camera phone (Reply Br. 18-19 (citing Ozaki, ¶¶ [0005], [0008])); (2) “[i]n Aotake, [though,] audio output is suppressed by inserting the earphone unit EU into the earphone jack 25 in order for the device’s user to privately make a call or reproduce audio data” (Reply Br. 19); and (3): [t]herefore, if the user is at [a] distance from the device to perform photography, there is no motivation for the user to concurrently insert the earphone unit EU into the earphone jack 25 because there is no need for the user to privately make a call or reproduce audio data when far away from the device. (id.). The Examiner, though, interprets Ozaki as teaching that the alerting mechanism produces an audible alarm when the camera phone is operated in the camera mode, irrespective of whether the user operates the camera in remote mode or by manual control (Ans. 23). That is, based upon the premise that Ozaki teaches a phone camera alerting mechanism that alarms when the user takes photographs manually, the Examiner concludes that it would have been obvious to modify Aotake’s camera phone with Ozaki’s alerting mechanism such that the resultant camera phone continues to emit audible signals upon pictures being taken manually, and it does so regardless Appeal 2009-012292 Application 10/639,288 5 of whether Aotake’s earphone is inserted into the earphone jack (Ans. 23- 24). ISSUE The issue before us, then, is not: In the course of combining the cited references, would it have been obvious to modify Ozaki’s disclosure (of a camera phone alerting mechanism that operates when photographs are taken in remote mode) such that this alerting mechanism additionally operates even when photographs are taken manually, and then further, even regardless of whether an earphone is plugged into an earphone jack? The Examiner did not base the rejection upon such a theory. Rather, the basis of the Examiner’s rejection presents us with an issue that is much narrower: Does Ozaki disclose that the camera phone alerting mechanism produces an audible alarm when the camera phone is operated in the camera mode, irrespective of whether the camera is operated in remote mode or by manual control? ANALYSIS Based upon the machine translation of Ozaki that was relied upon by Appellant and the Examiner, we are persuaded that Ozaki does not disclose that the camera phone alerting mechanism produces an audible alarm when the camera is operated manually. Ozaki only discloses that the alerting mechanism produces an audible alarm when operated in remote mode (Ozaki, ¶¶ [0001]-[0011]). For the foregoing reasons, then, Appellant has persuaded us of error in the Examiner’s obviousness rejection of independent claim 43 as well as of Appeal 2009-012292 Application 10/639,288 6 the other independent claims, claims 49, 55, and 61, which also set forth limitations similar to that of an audible indication used in conjunction with performing a photographing operation when in an operating mode that suppresses audio output. Accordingly, we do not sustain the Examiner’s rejection of any of the independent claims or of claims 44-48, 50-54, 56-60, and 62-69, which depend from the independent claims. The Examiner’s decision rejecting claims 43-69 is reversed. REVERSED babc LEE, HONG, DEGERMAN, KANG & WAIMEY 660 S. FIGUEROA STREET Suite 2300 LOS ANGELES, CA 90017