Ex Parte Nakatsu et al

Board of Patent Appeals and Interferences

Jan 22, 2002

08610758 (B.P.A.I. Jan. 22, 2002)

1 Appellants waived oral hearing; see fax communication filed July 2, 2001.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YUTAKA NAKATSU, SHIN IIMA, KAYOKO OHYOSHI,
and TOMOMI NAKAMURA
____________
Appeal No. 1999-2345
Application No. 08/610,758
____________
ON BRIEF1
____________
Before RUGGIERO, LALL, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1-7, which are all the claims in the application.
We affirm.
Appeal No. 1999-2345
Application No. 08/610,758
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BACKGROUND
The invention is directed to a video printer having an operation system on the
housing which can control functions of an attached video camera. Representative
claim 1 is reproduced below.
1. A video printer for printing on a printing paper as a hard copy a video
picture selected from a plurality of video pictures recorded by a video camera as
continuous motion images, said printer comprising:
a video printer housing portion with a video camera attached thereto;
a signal input and output connection terminal disposed on said video
printer housing portion for electrically connecting said video camera attached to
said video printer housing portion to said video printer; and
an operation system disposed on said video printer housing portion for
operating said video camera.
The examiner relies on the following references:
Itoh et al. (Itoh) 4,935,763 Jun. 19, 1990
Finelli et al. (Finelli) 4,937,676 Jun. 26, 1990
Nagano 5,561,462 Oct. 1, 1996
(effectively filed May 24, 1990)
Beveridge et al. (Beveridge) 5,621,492 Apr. 15, 1997
(filed Jan. 25, 1995)
Claims 1, 3, and 5-7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Finelli and Beveridge.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Finelli, Beveridge, and Itoh.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Finelli, Beveridge, and Nagano.
Appeal No. 1999-2345
Application No. 08/610,758
-3-
We refer to the Final Rejection (mailed Nov. 9, 1998) and the Examiner's Answer
(mailed Apr. 16, 1999) for a statement of the examiner's position and to the Brief (filed
Mar. 19, 1999) and the Reply Brief (filed Jun. 14, 1999) for appellants' position with
respect to the claims which stand rejected.
OPINION
Appellants submitted an amendment on May 22, 1998, subsequent to the
examiner's Final Rejection, which was entered by the examiner. We note, however,
that appellants' Reply Brief contains a section referring to a "proposed amendment."
The examiner did not indicate consideration of the "proposed amendment" as
submission of an amendment after final action, as contemplated by 37 C.F.R. § 1.116.
The Reply Brief section was not marked as a proposed amendment under 37 C.F.R.
§ 1.116. Nor do the accompanying remarks indicate that the "proposed amendment"
was to be considered for entry prior to jurisdiction of the application passing to the
Board: "Alternatively, should the Board determine that the Examiner has properly
construed the teachings of Beveridge, Appellant [sic] proposes the following
amendment to the claims...." (Reply Brief at 4.) We therefore consider the claims
before us as amended by appellants' submission filed May 22, 1998, and consistent
with the Appendix of claims submitted with appellants' principal brief (filed Mar. 19,
1999).
Appeal No. 1999-2345
Application No. 08/610,758
-4-
The rejection of claims 1, 3, and 5-7 under section 103 as being unpatentable
over Finelli and Beveridge is set forth on pages 4 through 6 of the Answer. The
examiner turns to Beveridge to remedy a perceived deficiency of the Finelli reference.
According to the examiner, Finelli "does not explicitly show the use of a video camera
which is capable of capturing continuous motion images, so that one video picture from
a plurality of continuous video pictures can be selected." (Answer at 5.)
Appellants, for their part, contend (e.g., Brief at 6-7) that language in the
preamble of claim 1 distinguishes over the applied prior art. Claim 1, however, purports
a "video printer," rather than a video camera suitable for recording continuous motion
images. The claim, by its terms, appears to set forth a video printer for use with a video
camera suitable for recording continuous motion images. The preamble language thus
might be viewed as failing to further define or limit the invention. The preamble of a
claim does not limit the scope of the claim when it merely states a purpose or intended
use of the invention. In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). Perhaps appellants wish to claim the combination of a video printer and a
video camera. Appellants describe, as at pages 4 through 6 of the instant specification,
and in instant Figure 2, a video printer 1 and a separate, attachable video camera 6.
In any event, appellants argue that Beveridge teaches "still image photography,"
and the combination of Finelli and Beveridge thus cannot teach "a video picture
selected from a plurality of video pictures recorded by a video camera as continuous
motion images," as recited in claim 1. The examiner responds (Answer at 9) that
Appeal No. 1999-2345
Application No. 08/610,758
-5-
Beveridge uses a "frame grabber" for selecting still images, but the still images are
selected from a plurality of video pictures recorded by a video camera as continuous
motion images. Appellants, in turn, respond that "[i]n the claimed invention, the image
is selected from recorded images for the purpose of printing, not for viewing,
reconstructing the image, photographing and then printing as in Beveridge." (Reply
Brief at 4.)
Appellants do not point out where the alleged distinguishing feature may be
found in the claims. Instant claim 1 does not exclude additional operations of viewing,
reconstructing, and photographing prior to printing. Moreover, appellants' arguments
are not responsive to the combined teachings of the references. Beveridge is relied
upon for the suggestion of using a video camera, recording a plurality of video pictures
as continuous motion images, for the purpose of facilitating selection of images that are
to be printed on a hard-copy medium. We agree with the examiner's finding that
Beveridge suggests the limitation; see especially column 2, lines 17 through 30 of the
reference.
We also fail to see how the language of claim 1 might exclude use of a strobe,
contrary to implications in the arguments presented on pages 11 and 12 of the Brief.
Nor do appellants point out language in the claim that is thought to exclude using a
strobe -- even assuming that the combined teachings of Finelli and Beveridge require
the use of a strobe.
Appeal No. 1999-2345
Application No. 08/610,758
-6-
Because we find appellants' arguments to be not commensurate with the scope
of claim 1, and appellants have not shown the examiner's findings with respect to the
teachings of the references to be in error, we sustain the rejection of claim 1 under 35
U.S.C. § 103 as being unpatentable over Finelli and Beveridge. Arguments not relied
upon are deemed waived. See 37 C.F.R. § 1.192(a) (“Any arguments or authorities
not included in the brief will be refused consideration by the Board of Patent Appeals
and Interferences, unless good cause is shown.”) Claims 3 and 5-7 fall with claim 1, as
appellants have chosen not to rely on the limitations of the dependent claims. See 37
C.F.R. § 1.192(c)(7).
We also sustain the rejection of claim 4 under section 103 as being unpatentable
over Finelli, Beveridge, and Itoh, and the rejection of claim 2 as being unpatentable
over Finelli, Beveridge, and Nagano. Appellants have not alleged error in the
examiner's finding that Itoh would have suggested the further limitations of claim 4,
drawn to well-known video camera operations. Nor have appellants alleged error in the
examiner's finding that Nagano would have suggested the LCD display monitor as
recited in instant claim 2.
We note that appellants' specification, at pages 1 through 2, and in instant
Figure 1, describes a prior art video printer system having a video printer 31 connected
to a video camera 32 and a video monitor 34. We further note that Finelli suggests,
especially at column 6, line 65 through column 7, line 3, controlling functions of an
associated electronic camera by means of switches in a printer control panel.
Appeal No. 1999-2345
Application No. 08/610,758
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We agree with the examiner's ultimate conclusion that the subject matter on
appeal is unpatentable under 35 U.S.C. § 103 in view of the references applied.
However, should appellants elect further prosecution of the instant subject matter, the
examiner should consider entry of a 35 U.S.C. § 103 rejection based on appellants'
admitted prior art in view of the teachings of Finelli against any claim of scope similar to
that of present claim 1.
CONCLUSION
The rejection of claims 1-7 is affirmed.
Appeal No. 1999-2345
Application No. 08/610,758
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-2345
Application No. 08/610,758
-9-
RONALD P KANANEN
RADER, FISHMAN & GRAUER P.L.L.C.
1233 20TH STREET, NW SUITE 501
WASHINGTON DC 20036