Ex Parte Oakeson et al

Board of Patent Appeals and Interferences

Mar 4, 2010

10340508 (B.P.A.I. Mar. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte KENNETH LEE OAKESON and 8
SHELL STERLING SIMPSON 9
___________ 10
11
Appeal 2009-005408 12
Application 10/340,508 13
Technology Center 3600 14
___________ 15
16
Decided: March 4, 2010 17
___________ 18
19
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
24
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STATEMENT OF THE CASE 1
Kenneth Lee Oakeson and Shell Sterling Simpson (Appellants) seek 2
review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-6, 8-9, 3
12-22, 24-36, and 38-45, the only claims pending in the application on 4
appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
SUMMARY OF DECISION1 8
We REVERSE and ENTER A NEW GROUND OF REJECTION 9
pursuant to 37 C.F.R §41.50(b). 10
THE INVENTION 11
The Appellants invented a system and method of offering photographs 12
for sale (Specification ¶ 0001). 13

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 28, 2008) and Reply Brief (“Reply Br.,” filed July 11,
2008), and the Examiner’s Answer (“Ans.,” mailed May 12, 2008), and
Final Rejection (“Final Rej.,” mailed October 26, 2007).
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An understanding of the invention can be derived from a reading of 1
exemplary claims 1, 5, 8, 14-16, 22, 24, 30, 34, 41, 42, and 44, which are 2
reproduced below [bracketed matter and some paragraphing added]. 3
1. A camera comprising: 4
[1] an imaging system configured to provide digital image 5
data of an image, wherein the image data is capable of being 6
utilized to produce a photograph of the image; 7
[2] processing circuitry coupled with the imaging system and 8
configured to associate purchase information comprising 9
information which is indicative of a monetary price for a sale of 10
the photograph with the image data and to address the image 11
data and the associated purchase information for 12
communication to a destination where the photograph is offered 13
for sale; 14
[3] an interface configured to output the image data and the 15
associated purchase information addressed to the destination; 16
and 17
[4] wherein the imaging system, the processing circuitry and 18
the interface are embodied within a common housing of a 19
single device comprising the camera. 20
21
5. The camera of claim 1 further comprising a location 22
determining device configured to provide a portion of the 23
purchase information comprising location information 24
regarding a location of the image in space. 25
26
8. The camera of claim 1 wherein the processing circuitry is 27
configured to communicate the image data and the purchase 28
information automatically after the association of the purchase 29
information with the image data and without user input. 30
31
14. The camera of claim 1 wherein the processing circuitry is 32
configured to bundle the purchase information with the image 33
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data in a common file to associate the purchase information 1
with the image data. 2
3
15. A camera comprising: 4
[1] means for providing digital image data of an image, 5
wherein the image data is capable of being utilized to produce a 6
photograph of the image; 7
[2] means for providing purchase information indicative of a 8
monetary price for a sale of the photograph; 9
[3] means for associating the purchase information with the 10
image data; and 11
[4] means for communicating the image data and the 12
purchase information to a destination after association of the 13
purchase information with the image data. 14
15
16. The camera of claim 15 wherein the means for providing 16
the digital image data and the purchase information, the means 17
for associating, and the means for communicating are embodied 18
within a common housing of the camera. 19
20
22. A system of offering photographs for sale, the system 21
comprising: 22
[1] a camera configured to provide digital image data of an 23
image and capable of being utilized to produce a photograph of 24
the image, to associate purchase information indicative of a 25
monetary price for a sale of the photograph with the digital 26
image data and to output the digital image data and the 27
respective purchase information externally of the camera after 28
the association of the purchase information with the digital 29
image data; and 30
[2] an image broker device configured to communicate with 31
the camera, to receive the image data and the purchase 32
information from the camera, to communicate information 33
regarding the availability of the image data for purchase, to 34
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communicate the purchase information, and to communicate the 1
image data to selected ones of a plurality of purchasers. 2
3
24. The system of claim 22 wherein the camera only comprises 4
a single device. 5
6
30. A method of offering photographs for sale comprising: 7
[1] providing digital image data of an image using a camera, 8
wherein the image data is capable of being utilized to produce a 9
photograph of the image; 10
[2] providing purchase information comprising information 11
indicative of a monetary price for a sale of the photograph 12
associating the purchase information with the image data using 13
the camera; 14
[3] addressing the image data and the purchase information 15
using the camera; and 16
[4] after the associating and the addressing, communicating 17
the image data and the purchase information from the camera to 18
a destination where the photograph is offered for sale. 19
20
34. The method of claim 30 wherein the providing the purchase 21
information and the communicating comprise acts which are 22
performed using the camera. 23
24
41. The camera of claim 1 wherein the interface comprises a 25
communications interface, and further comprising a user 26
interface configured to provide the purchase information 27
responsive to input by a user. 28
29
42. The camera of claim 1 wherein the interface is configured to 30
receive the purchase information from externally of the camera 31
within the camera. 32
33
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44. The method of claim 43 wherein the receiving the purchase 1
information comprises downloading the purchase information 2
from a host device into the camera. 3
4
5
THE REJECTIONS 6
The Examiner relies upon the following prior art: 7
Steinberg US 5,862,218 January 19, 1999
Nozaki US 6,421,470 July 16, 2002
McIntyre US 2003/0009527 A1 January 9, 2003
8
Claims 1-6, 8-9, 12-22, 24-36, and 38-452 stand rejected under 35 U.S.C. 9
§ 102(e) as being anticipated by McIntyre. 10
11
ISSUES 12
The issue pertinent to this appeal is whether the Appellants have 13
sustained the burden of showing that the Examiner erred in rejecting claims 14
1-6, 8-9, 12-22, 24-36, and 38-45 under 35 U.S.C. § 102(e) as anticipated by 15
McIntyre. This pertinent issue turns on whether McIntyre describes the 16
limitation requiring a camera to perform the functionality to associate 17

2 The Examiner has only listed claims 1, 3, 5-6, 8-9, 13-18, 20, 22, 24-27,
29-30, 32, 34-36, and 39-45 as being rejected under 35 U.S.C. § 102(e).
Since the Appellants have not contested this, we assume this to be a
typographical error and understand that claims 1-6, 8-9, 12-22, 24-36, and
38-45 stand rejected under 35 U.S.C. 102(e) as being anticipated by
McIntyre.
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purchase information, comprising price information, to image data and to 1
communicate image data and purchase information to a destination. 2
3
FACTS PERTINENT TO THE ISSUES 4
The following enumerated Findings of Fact (FF) are believed to be 5
supported by a preponderance of the evidence. 6
Facts Related to the Prior Art 7
McIntyre 8
01. McIntyre is directed to automatically managing digital image 9
files over a communications network (McIntyre ¶ 0001). 10
02. McIntyre describes a system that includes a user computer 11
connected to a service provider via a communication network 12
(McIntyre ¶ 0101). The user computer is also connected to a 13
storage device and an electronic camera, such as a digital camera 14
or a digital motion camera (McIntyre ¶ 0101). 15
03. McIntyre describes a system where a user first establishes an 16
account with a service provider by providing information to the 17
provider (McIntyre ¶ 0111). The user then identifies or 18
establishes a high resolution media collection (McIntyre ¶ 0111). 19
The user maintains a media collection and can add images to the 20
media collection (McIntyre ¶ 0103). The service provider 21
maintains the low resolution images and associates each image 22
with the user (McIntyre ¶ 0103). The user can specify metadata to 23
be associated with the image data files (McIntyre ¶’s 0124 and 24
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0142). Low resolution files are created from the high resolution 1
files and are forwarded to a service provider and the service 2
provider verifies receipt of the files (McIntyre ¶ 0111). The 3
service provider then stores the low resolution files and associates 4
them to the user (McIntyre ¶ 0111). The user can then specify a 5
third party, such as a fulfillment provider that produces prints, to 6
receive or access the files from the service provider (McIntyre ¶ 7
0112). 8
04. The third party places an order for the image with the service 9
provider and provides a form of electronic payment such as a 10
credit card (McIntyre ¶ 0128). The service provider uses the 11
metadata associated with the low resolution file to determine the 12
user with the high resolution media file and automatically 13
retrieves the high resolution file to be communicated to the 14
purchaser (McIntyre ¶’s 0128-0129). The service provider can 15
then enable access to the third party to retrieve the file or can 16
alternatively send the file in an e-mail message (McIntyre ¶ 0129). 17
Facts Related To The Level Of Skill In The Art 18
05. Neither the Examiner nor the Appellants have addressed the 19
level of ordinary skill in the pertinent art of digital images 20
systems. We will therefore consider the cited prior art as 21
representative of the level of ordinary skill in the art. See Okajima 22
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 23
absence of specific findings on the level of skill in the art does not 24
give rise to reversible error ‘where the prior art itself reflects an 25
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appropriate level and a need for testimony is not shown’”) 1
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 2
F.2d 158, 163 (Fed. Cir. 1985). 3
Facts Related To Secondary Considerations 4
06. There is no evidence on record of secondary considerations of 5
non-obviousness for our consideration. 6
PRINCIPLES OF LAW 7
Anticipation 8
"A claim is anticipated only if each and every element as set forth in the 9
claim is found, either expressly or inherently described, in a single prior art 10
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 11
631 (Fed. Cir. 1987). "When a claim covers several structures or 12
compositions, either generically or as alternatives, the claim is deemed 13
anticipated if any of the structures or compositions within the scope of the 14
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 15
Cir. 2001). "The identical invention must be shown in as complete detail as 16
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 17
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 18
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 19
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 20
Obviousness 21
A claimed invention is unpatentable if the differences between it and 22
the prior art are “such that the subject matter as a whole would have been 23
obvious at the time the invention was made to a person having ordinary skill 24
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in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 1
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2
In Graham, the Court held that that the obviousness analysis is 3
bottomed on several basic factual inquiries: “[(1)] the scope and content of 4
the prior art are to be determined; [(2)] differences between the prior art and 5
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 6
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 7
U.S. at 406. “The combination of familiar elements according to known 8
methods is likely to be obvious when it does no more than yield predictable 9
results.” KSR, 550 U.S. at 416. 10
ANALYSIS 11
Claims 1-6, 8-9, 12-22, 24-36, and 38-45 rejected under 35 U.S.C. 12
§ 102(e) as being anticipated by McIntyre 13
The Appellants first contend that (1) McIntyre fails to describe 14
limitations [2] - [4] of claim 1 and as incorporated by dependant claims 2-6, 15
8-9, 12-14, and 41-42. App. Br. 5-6 and Reply Br. 1-3. We agree with the 16
Appellants. Limitation [2] requires circuitry associating purchase 17
information, where the price of the photograph is associated with the image 18
data, and addressing associated purchase information to the destination of 19
the point of sale. Limitation [3] further requires an interface to output the 20
image data and purchase information to the destination. McIntyre describes 21
a computer connected to a camera, where the computer associates a sales 22
price for the photograph with the image file. FF 03-04. We agree with 23
Appellants’ argument that the claim language limits the purchase 24
information to require the price information and the Examiner’s broad 25
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reading of purchase information from the specification is incorrect since the 1
claim language is more limiting. However, McIntyre describe the purchase 2
and payment for images, which includes the price of the image. FF 04. The 3
Appellants specifically argue that this teaching of a camera is not the same 4
as the recited circuitry of claim 1. App. Br. 5-6 and Reply Br. 1-3. 5
However, a person with ordinary skill in the art would have known that a 6
digital camera and a digital motion camera consist of circuitry required to 7
capture images. McIntyre further describes an interface at the service 8
provider that can output an image file to the purchase destination. FF 03-04. 9
That is, McIntyre describes circuitry for associating a sale price with image 10
data and outputting the image file to the purchase destination as required by 11
limitations [2] and [3]. 12
However, McIntyre fails to describe limitation [4]. Limitation [4] 13
requires that these structures are embodied in a common housing of a single 14
device comprising the camera. McIntyre describes a camera connected to a 15
user computer. FF 02. The user computer and a service provider are 16
connected via a communications network. FF 02. The output device with 17
the price information as described supra resides with the service provider 18
and therefore cannot be in a common housing of a single device of the 19
camera. The Examiner argues that the output interface is the sound 20
recording device of a digital motion camera. Ans. 18. However, the sound 21
recording device cannot interpret as the interface because the sound 22
recording device does not output purchase information. The sound 23
recording device further does not output purchase information to the 24
destination of where the photograph is for sale. As such, the interface must 25
reside at the service provider where the image file is output to a third party 26
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and the output includes a price and the destination is to the third party 1
purchasing the file. The configuration of McIntyre requires that the 2
interface is not embodied in the same structure as the imaging system and 3
processing circuitry. As such, McIntyre fails to anticipate independent claim 4
1 and dependant claims 2-6, 8-9, 12-14, and 41-42. 5
The Appellants further contend (2) McIntyre fails to describe limitations 6
[2] – [4] of claim 15 and as incorporated by dependant claims 16-21 (App. 7
Br. 7-8 and Reply Br. 3-5), (3) McIntyre fails to describe limitation [1] of 8
claim 22 and the feature of “an image broker device configured to 9
communicate with the camera” of limitation [2] of claim 22 and as 10
incorporated by dependant claims 24-29 (App. Br. 8-9 and Reply Br. 5-6), 11
and (4) McIntyre fails to describe limitations [2] – [3] of claim 30 and as 12
incorporated by dependant claims 31-36, 38-40, and 43-45 (App. Br. 10-11 13
and Reply Br. 5-7). The Appellants specifically argue that McIntyre fails to 14
describe a camera that associates purchase information, comprising price 15
information, to image data and communicating the purchase information and 16
image data, subsequent to the association, using an interface as required by 17
independent claims 15, 22, and 30. As discussed supra, McIntyre describes 18
associating a purchase price to an image so that third party users can place 19
orders and payment for images. FF 04. McIntyre further describes an 20
interface that provides purchasers access to the images or communicates e-21
mail messages with images files to purchasers. FF 03-04. However, 22
McIntyre fails to describe that the association of purchase information, 23
including price information, to image data and the communication of image 24
data and purchase information to a destination be performed by a camera. 25
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As such, McIntyre fails to anticipate independent claims 15, 22, and 30 and 1
dependant claims 16-21, 24-29, and 31-36, 38-40, and 43-45 for this reason. 2
The Appellants have sustained the burden of showing that the Examiner 3
erred in rejecting claims 1-6, 8-9, 12-22, 24-36, and 38-45 under 35 U.S.C. 4
§ 102(e) as anticipated by McIntyre. 5
6
NEW GROUND OF REJECTION 7
The following new ground of rejection is entered pursuant to 37 C.F.R. 8
§ 41.50(b). Claims 1, 15, 22, and 30 are rejected under 35 U.S.C. § 103(a) 9
as unpatentable over McIntyre. 10
As discussed supra, McIntyre describes all of the limitations of 11
independent claims 1, 15, 22, and 30 except for the limitation requiring a 12
camera to perform the functionality to associate purchase information, 13
comprising price information, to image data and to communicate image data 14
and purchase information to a destination. As also discussed supra, 15
McIntyre does describe the association of price information, as purchase 16
information, to an image such that third party users can purchase and 17
provide payment for the images and communicating the purchased images to 18
the purchaser by either allowing the purchaser access to the image file or 19
sending the image to the purchaser in an e-mail message. FF 04. McIntyre 20
further describes the use of a camera, a user computer, and a service 21
provider and these devices are connected by a communication network. FF 22
02. All of these devices perform the claimed functionality. Since all of 23
these devices are capable of processing image information and are 24
connected, McIntyre suggests that any single one of these devices can 25
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perform the described functionality. A person with ordinary skill in the art 1
would have recognized the benefit of consolidating the functionality to a 2
single device capable of performing the imaging functionality in order to 3
reduce the costs associated with additional devices. As such, a person with 4
ordinary skill in the art would have found it obvious to consolidate the 5
described functionality to a single device and would have been motivated to 6
do so in order to reduce the costs associated with additional devices. As the 7
claim does not limit the size of the device, it would have been with the level 8
of ordinary skill to simply encapsulate all of the recited components within a 9
single camera device. 10
CONCLUSIONS OF LAW 11
The Appellants have sustained the burden of showing that the Examiner 12
erred in rejecting claims 1-6, 8-9, 12-22, 24-36, and 38-45 under 35 U.S.C. 13
§ 102(e) as anticipated by McIntyre. 14
A new ground of rejection is entered 37 C.F.R. § 41.50(b) in which 15
claims 1, 15, 22, and 30 are rejected under 35 U.S.C. § 103(a) as 16
unpatentable over McIntyre. 17
18
DECISION 19
To summarize, our decision is as follows. 20
• The rejection of claims 1-6, 8-9, 12-22, 24-36, and 38-45 under 35 21
U.S.C. § 102(e) as anticipated by McIntyre is not sustained. 22
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 23
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o Claims 1, 15, 22, and 30 are rejected under 35 U.S.C. § 103(a) 1
as unpatentable over McIntyre. 2
3
This decision contains new grounds of rejection pursuant to 37 CFR 4
§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection 5
pursuant to this paragraph shall not be considered final for judicial review.” 6
7
37 CFR § 41.50 (b) also provides that the Appellants, WITHIN TWO 8
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 9
the following two options with respect to the new ground of rejection to 10
avoid termination of the appeal as to the rejected claims: 11
(1) Reopen prosecution. Submit an appropriate amendment 12
of the claims so rejected or new evidence relating to the claims 13
so rejected, or both, and have the matter reconsidered by the 14
examiner, in which event the proceeding will be remanded to 15
the examiner …. 16
(2) Request rehearing. Request that the proceeding be 17
reheard under § 41.52 by the Board upon the same record …. 18
19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21
22
REVERSED 23
41.50(b) 24
25
26
27
28
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mev 1
2
Address 3
HEWLETT-PACKARD COMPANY 4
INTELLECTUAL PROPERTY ADMINISTRATION 5
3404 E. HARMONY ROAD 6
MAIL STOP 35 7
FORT COLLINS CO 80528 8