Ex Parte Nitta

Patent Trial and Appeal Board

May 11, 2017

13669974 (P.T.A.B. May. 11, 2017)

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.
13/669,974 11/06/2012 Masahiro NITTA MJS-723-3550 7254
27562 7590 05/15/2017
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CHIU, WESLEY JASON
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
05/15/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO NITTA
Appeal 2016-008430
Application 13/669,974
Technology Center 2600
Before JOSEPH L. DIXON, TERRENCE W. McMILLIN, and
ALEX S. YAP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008430
Application 13/669,974
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—5 and 7—25. Claim 6 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
The claims are directed to a computer-readable storage medium
storing an image capturing program, image capturing device, image
capturing system, and image display method. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A computer-readable non-transitory storage medium,
storing an image capturing program executable by a computer of
an image capturing device including an image capturing unit, a
finder for enabling a user to see an image capturing target of the
image capturing unit, and a storage, the program, when executed,
causing the computer to perform operations comprising:
storing in the storage a moving image captured by the
image capturing unit;
in response to a first user operation, stopping the storing
in the storage of the moving image captured by the image
capturing unit;
in response to a second user operation, after the first user
operation, resume storing in the storage the moving image
captured by the image capturing unit;
between the first user operation and the second user
operation, continuously displaying on the finder the image
capturing target of the image capturing unit and a predetermined
static image out of static images constituting the moving image
stored in the storage and captured immediately before stopping
the storing in the storage, the predetermined static image being
overlaid onto the displayed image capturing target of the image
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capturing unit such that the image capturing target is visible on
the finder; and
after the second user operation, displaying on the finder
the image capturing target of the image capturing unit without
the predetermined static image.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shimizu US 2002/0003943 Al Jan. 10, 2002
Tashiro et al. (“Tashiro”) US 2005/0140798 Al June 30, 2005
Hosoda US 2006/0077263 Al Apr. 13, 2006
Garcia Alonso US 2009/0015702 Al Jan. 15,2009
Tan US 2009/0175609 Al July 9, 2009
Kashiwagi US 2009/0195660 Al Aug. 6, 2009
McNamer et al. (“McNamer”) US 2011/0025829 Al Feb. 3,2011
Ito et al. (“Ito”) US 2012/0057051 Al Mar. 8, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 5, 7—13, 16, 17, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tashiro and Hosoda.
Claims 3 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tashiro, Hosoda, and McNamer.
Claims 4 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tashiro, Hosoda, and Garcia Alonso.
Claims 14 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tashiro, Hosoda, and Kashiwagi.
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Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tashiro, Hosoda, Tan and Ito.
Claims 23 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garcia Alonso, Tashiro, Hosoda, and Shimizu.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garcia Alonso, Tashiro, Hosoda, Shimizu, and McNamer.
ANALYSIS
Independent claims 1 and 8—10
With respect to independent claims 1 and 8—10, Appellant presents
arguments to the claims together. We find the claims contain similar
limitations. As a result, we select independent claim 1 as the representative
claim for the group and will address Appellant’s arguments thereto.
Claim Interpretation
The claims measure the invention. See SRI Int'l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (enbanc). “[T]he PTO gives
claims their ‘broadest reasonable interpretation.”’ In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). “Moreover, limitations are not to be read into the claims from
the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Where an explicit
definition is provided by the applicant for a term, the definition will control
interpretation of the term as it is used in the claim. Toro Co. v. White
Consolidated Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999).
Burden on Appeal
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985—86 (Fed. Cir.
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2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence ofprima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed.Cir. 1998)).
Appellant contends:
Claim 1 requires performing specific operations, in
response to a first user operation, in response to a second user
operation, between the first user operation and the second user
operation, and after the second user operation. Tashiro and
Hosoda, alone or in combination, fail to disclose such operations
being performed in the manner recited in independent claim 1.
(App. Br. 12—13). Appellant further contends:
In relying on Hosoda, the final Office Action asserts that
operating the mode switching button 8 in step V6 of Fig. 10
(while in the still image capturing mode) corresponds to the
claimed first user operation (see page 8 of the Final Office
Action). However, operating the mode switching button 8 in
step V6 of Fig. 10 does not correspond to the claimed “first user
operation” because operating the mode switching button 8 in step
V6 of Fig. 10 does not stop the storing in the storage of the
moving image captured by the image capturing unit, as required
in claim 1. In contrast, Hosoda discloses that operating the mode
switching button 8 in step V2 of Fig. 10 stops capturing of the
moving image in operations of step V4 or step V18.
Accordingly, the Office Action incorrectly relies on operating
the mode switching button 8 in step V6 of Fig. 10 as
corresponding to the claimed first user operation.
(App. Br. 14—15). Additionally, Appellant argues:
The final Office Action asserts that the claim language
does not recite that the predetermined static image is
immediately displayed after the first user operation is input (see
page 6 of final Office Action). However, the final Office Action
is ignoring the express language of the claims which requires,
between two specific user operations, continuously displaying on
the finder the image capturing target of the image capturing unit
and a predetermined static image. In making the broadest
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reasonable interpretation the Examiner cannot ignore the express
language of the claim and the specification.
(App. Br. 16).
With regards to the continuously displaying feature, the Examiner
additionally identifies paragraph 93 and Figure 11 of the Hosoda reference.
(Ans. 24). The Examiner additionally reasons that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the invention of
Tashiro with the method of displaying a last static image of a
previous video to assist in framing the capture of the moving
image when recording of the moving image is resumed (Hosoda,
Paragraph 0093). That is, to provide the predetermined static
image after the pause button is pressed (Tashiro, Fig. 5, Element
ST4) and remove the transfer image when the pause button is
pressed again (Tashiro, Fig. 5, Element ST6) to assist in framing.
The semi-transfer image (predetermined static image) of Hosoda
is used to assist in the framing of the image when restarting the
image capture of a video. Tashiro is an imaging device with the
ability to stop/pause and restart/resume image capture of a video.
Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to provide the semi­
transfer image while the image capture is paused to assist in
framing when the image capture is resumed. The process of
pausing and resuming image capture occurs between steps ST4
and ST6 of Tashiro as seen in Figure 5.
(Ans. 24). We agree with the Examiner and find that the Hosoda reference
teaches and fairly suggests continuously displaying after the pausing.
Additionally, Figure 11 of the Hosoda reference teaches simultaneously
displaying/superimposing to determine a correlation.
The Examiner further maintains:
Therefore, from the time the predetermined static image is
displayed on the display, it is continuously displayed until it is
erased. Claim language does not recite the predetermined static
image is immediately displayed after the first user operation is
input as it appears applicant's arguments suggest.
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Further, applicant’s own specification shows multiple
steps between the first user operation (Applicant’s Figure 5A,
Element SI8) and the displaying of the predetermined static
image (Applicant's Figure 5A, Element S12, Figure. 7, Element
SI23). For example, the steps S9-S10, S19-S21, and S121-122
in Applicant's Figures 5a, 5b and 7 are performed between the
first user operation S18 and displaying of the predetermined
static image SI23. Therefore, if steps between the first user
operation and the displaying of the static image is seen to not be
continuous, applicant’s own invention does not teach
continuously displaying the predetermined static image between
the first user operation and the second user operation.
(Ans. 26—27). We agree with the Examiner that Appellant’s Specification
includes additional steps and determinations after the first operation by the
user. Consequently, we agree with the Examiner’s finding that the broadest
reasonable interpretation, consistent with the Specification, of the claim
language does not require “immediately displayed after the first user
operation is input as it appears applicant's arguments suggest.” (Ans. 26).
Moreover, we find that the display of the superimposed images as described
and displayed in Figures 10 and 11 of the Hosoda reference teaches and
fairly suggests the claimed:
between the first user operation and the second user operation,
continuously displaying on the finder the image capturing target
of the image capturing unit and a predetermined static image out
of static images constituting the moving image stored in the
storage and captured immediately before stopping the storing in
the storage, the predetermined static image being overlaid onto
the displayed image capturing target of the image capturing unit
such that the image capturing target is visible on the finder.
(See Final Act. 8—9, Hosoda 1117.)
Appellant further contends that even if Tashiro and Hosoda are
combined, the combination would not teach or suggest the claimed
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invention, and Appellant generally contends that the references teach away
from the combination. (App. Br. 16). The Examiner has provided further
discussion of the combination. (Ans. 27—29). We disagree with Appellant’s
general contention and find Appellant has not established that Tashiro and
Hosoda teach away from the claimed invention and has not demonstrated
that “a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). As a result, Appellant’s argument
does not show error in the Examiner’s factual findings or conclusion of
obviousness, and we sustain the rejection of independent claim 1.
With respect to independent claim 10, Appellant relies upon the
arguments set forth with respect to independent claim 1. (App. Br. 17).
Because we found Appellant’s arguments to be unpersuasive of error with
respect to independent claim 1, we similarly find them unpersuasive with
respect to independent claim 10.
With respect to independent claim 8, Appellant repeats the language
of the claim and generally relies upon the arguments discussed with regards
to independent claim 1. (App. Br. 17—18). The Examiner explains the
correlation of the slightly varied claim language to the rejection as applied to
independent claim 1. (Ans. 29). Merely reciting the language of the claim is
insufficient. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”). Merely alleging that the references fail
to support the rejection is insufficient to persuade us of Examiner error.
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
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1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7—8
(BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.izov/web/oftices/dcom/bpai/its/fd09004693.pdf. As a
result, we find Appellant’s argument to be unpersuasive of error in the
Examiner’s factual findings and conclusion of obviousness of independent
claim 8. Appellant relies upon the same arguments for independent claim 9.
(App. Br. 18). Because we find Appellant’s arguments to be unpersuasive of
error with respect to independent claim 8, we similarly find them
unpersuasive with respect to independent claim 9.
Independent claim 17
With respect to independent claim 17, Appellant presents similar
arguments advanced with respect to independent claim 1 and repeats the
language of the claim, and contends that the Hosoda reference does not
disclose the claimed “when recording is stopped and until the recording is
re-started,” and “when recording is re-started.” (App. Br. 18; see also Reply
Br. 3).
Again, the Examiner has presented a similar line of reasoning with
respect to independent claim 17 as discussed above with respect to
independent claim 1. (Ans. 29—31). Consequently, Appellant’s argument is
not a specific argument for patentability which shows error in the
Examiner’s factual findings or conclusion of obviousness.
Dependent claims 2—5, 7, 11—16, and 18—22
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With respect to the dependent claims, Appellant generally contends
the additional references do not remedy the deficiency in the base
combination of the Tashiro and Hosoda references. (App. Br. 19 (“Other
references are applied in connection with aspects of the dependent claims.
Even assuming for the sake of argument that it could be shown that these
references are properly combinable with Tashiro and Hosoda, these
references do not remedy the above-noted deficiencies of Tashiro and
Hosoda.”)). Merely alleging that the references fail to support the rejection
is insufficient to persuade us of Examiner error in dependent claims 2—5, 7,
11-16, and 18-22.
Appellant further specifically contends, with respect to dependent
claim 16, that the Examiner ignores the claim limitation, which requires
“displaying only a background extracted from the predetermined static
image.” (App. Br. 19; see generally Reply Br. 3). We find no express
step/operation of “extracting” a background from a predetermined static
image; the claim merely requires “displaying” the data. Consequently,
Appellant’s argument does not show error in the factual findings, claim
interpretation, or conclusion of obviousness of dependent claim 16.
Claims 23—25
With respect to claims 23—25, Appellant maintains that the Shimizu
reference pertains to a sequence of still images rather than images of a video
recorded in memory. (App. Br. 20). The Examiner explains that
[a] video is nothing more than a series of images taken
continuously and sequentially. Therefore, the same method may
be applied to allow a user to select an image from a video by
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displaying individual frames of the video and providing an
interface to allow the user to choose the preferred frame.
(Ans. 32). We agree with the Examiner’s line of reasoning and what the
teachings would have suggested to one of ordinary skill in the art at the time
of the invention. Consequently, we find Appellant’s general argument does
not show error in the Examiner’s factual findings or conclusion of
obviousness.
CONCLUSION
The Examiner did not err in rejecting claims 1—5 and 7—25 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s obviousness
rejections of claims 1—5 and 7—25.
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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