Ex Parte Oddiraju et alDownload PDFPatent Trial and Appeal BoardSep 30, 201613257982 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/257,982 09/21/2011 22879 7590 10/04/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Chandar Kumar Oddiraju 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. 82837242 5086 EXAMINER KUMAR, SRILAKSHMI K ART UNIT PAPER NUMBER 2627 NOTIFICATION DATE DELIVERY MODE 10/04/2016 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 CHANDAR KUMAR ODDIRAJU, RAMY A VENKA TARAMU, and MARGUERITE LE TULLE 1 Appeal2015-001731 Application 13/257 ,982 Technology Center 2600 Before: HUNG H. BUI, JON M. JURGOV AN, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Hewlett-Packard Development Company LP as the real party in interest. App. Br. 1. Appeal2015-001731 Application 13/257,982 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1 and 3-23, which constitute all pending claims in the application. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION of claims 3-6, 17, and 21 pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED INVENTION The claimed invention is directed to a screen capture system. App. Br. 2-3; Spec. i-f 18. Claim 1, reproduced below with disputed limitations italicized, is illustrative of the claimed subject matter: 1. An apparatus comprising: a screen capture system configured to store in a memory at least portions of screenshots of output presented on a display screen by a source and to present the stored screenshots on the display screen when the source is not running, wherein the source comprises a computer operating system. Meldrum Lin REFERENCES 2002/0036663 Al 2008/0100606 Al REJECTIONS Mar. 28, 2002 May 1, 2008 (1) Claims 1, 3-15, and 17-23 stand rejected under 35 U.S.C. § 102( e) as anticipated by Lin. Final Act. 6-11. (2) Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Lin and Meldrum. Final Act. 11-12. 2 Appeal2015-001731 Application 13/257,982 Claims 1 and 7 ANALYSIS The Examiner finds that Lin discloses every limitation of claim 1. Final Act. 6. Appellants argue that Lin fails to disclose the disputed limitations of "a screen capture system configured ... to present the stored screenshots on the display screen when the source is not running, wherein the source comprises a computer operating system." App. Br. 6-9; Reply Br. 2--4. For the disputed limitations, the Examiner finds that Lin discloses a screen capture system configured to present stored screenshots on a display screen when the computer operating system is not running. Final Act. 6, citing Lin i-fi-125-29, 36-39, 42. In particular, the Examiner finds that Lin discloses these limitations by describing, inter alia, the presentation of screen shots when the computer is in an idle state. Final Act. 6; Ans. 3--4, citing Lin i-fi-f 18-19, 21, 37-38. Appellants argue that, when the computer is in an idle state, its operating system is still running and, therefore, the disputed limitations are not satisfied. App. Br. 6; Reply Br. 1-2. The Examiner finds that giving the term "not running" its broadest reasonable construction the disputed limitations are satisfied by the presentation of screen shots during the computer's idle state. Ans. 3--4. We agree with the Examiner. First, claim 1 does not require that the computer operating system not be running. Instead, claim 1 merely requires that the source is not running and that the source has a computer operating system. Second, the term "not running" as used in the Specification does not require the source to be not operating or shut down. The Specification 3 Appeal2015-001731 Application 13/257,982 makes clear that there are other ways a source can "not be running," describing a situation where "the source is not operating, is not powered or is otherwise not running." Spec. i-f 18 (emphasis added). Further, claim 21, which depends on claim 1, recites that "the computer operating system is shut down," which indicates that claim 1 itself does not require the operating system to be shut down. Accordingly, we agree with the Examiner that the broadest reasonable interpretation of "not running" includes the idle state of a computer. Ans. 3--4. Therefore, we sustain the rejection of claim 1 and of claim 7, not separately argued. App. Br. 6-27. Claims 3-6 The Examiner finds that snapshot module 424 is the second user input recited in claim 3. Ans. 5, citing Lin i-fi-125-26, 28, and 34. Appellants argue that snapshot module 424 is a software module that is not a user input. Reply Br. 4--5. Based on this record, we agree with Appellants that snapshot module 424 is not a user input and do not sustain the rejection of claim 3 or of claims 4--6 that incorporate through dependency the limitations of claim 3. We find, however, the terms "first user input for the computer operating system" and "second user input for the screen capture system" to be indefinite under 35 U.S.C. § 112, second paragraph. It is unclear whether those terms are satisfied by two inputs connected to the same device (e.g., Lin's disclosed keyboard and mouse) that can provide input to both the computer operating system and the screen capture system or whether those terms require, as Appellants suggest, that each input exclusively provide input for either the computer operating system or the screen capture system. 4 Appeal2015-001731 Application 13/257,982 App. Br. 11. It is further unclear, if we were to accept Appellants' suggestion regarding exclusive input, whether the "second user input for the screen capture system" would require two exclusive user inputs for the screen capture system. "Second" could require a "first." Accordingly, pursuant to 37 C.F.R. § 41.50(b), we reject claims 3---6 under 35 U.S.C. § 112, second paragraph, for indefiniteness. Claim 8 We adopt the Examiner's findings and conclusions regarding the limitation added by claim 8 to base claim 1. Accordingly, we sustain the rejection of claim 8. Claims 9 and 22 Appellants argue the Examiner erred in construing the claim term "portion of an individual screenshot" in claims 9 and 22 to encompass an entire screen shot. App. Br. 18, 28-29; Reply Br. 9-10, 20. Appellants note that a Webster's dictionary defines "portion" as 'a part of larger amount, area etc." and the Specification discloses an embodiment in which less than a complete or whole portion is selected. App. Br. 18, 28-29; Reply Br. 9- 10, 20. We are not persuaded by these arguments because claim 23, which depends on claim 22, recites identifying "a less than complete portion of what is presently being displayed" and, as Appellants note, the Specification (at i-f 42) refers to "less than complete or less than whole portions of a screen shot .... " Spec. i-f 42, App. Br. 29. The use of the terms "complete portion" and "whole portion" indicates that the word "portion" can encompass the whole. Accordingly, we sustain the rejection of claims 9 and 22. 5 Appeal2015-001731 Application 13/257,982 Claim 10 We do not agree with the Examiner's finding that Lin's determination of whether capture is taken is based on the receipt or non-receipt of user inputs constitutes selection from a plurality of available capture criteria. Ans. 8, citing Lin i-fi-134, 36; Reply Br. 11. We agree with Appellants that the receipt of user or non-receipt of user inputs constitutes only one criterion. Reply Br. 11. Accordingly, we do not sustain the rejection of claim 10. Claim 11 Appellants argue that Lin does not disclose the limitation of claim 11 which recites "further comprising the memory, wherein the memory is a removable flash memory card." App. Br. 19--20; Reply Br. 12-13. The Examiner cites paragraphs 25 and 46 of Lin as disclosing the use of removable flash memory card. Ans. 8. Those paragraphs, however, do not discuss a removable flash memory card. Lin i-fi-125, 46. Accordingly, we do not sustain the Examiner's anticipation rejection of claim 11. The cited paragraphs, however, disclose the use of flash memory and the use of removable memory, such as a portable computer diskette and a portable CD ROM. See Lin i-f 46. These disclosures suggest the use of a removable flash memory card. Accordingly, pursuant to 37 C.F.R. § 41.50(b), we reject claim 11under35 U.S.C. § 103(a) as being unpatentable over Lin. Because Appellants argue that the memory in claim 12 must be used to store snapshots, we note that Lin discloses storing snapshots in its memory. App. Br. 20; Lin i-f 18. 6 Appeal2015-001731 Application 13/257,982 Accordingly, we do not sustain the Examiner's anticipation rejection of claim 11. Claims 12-14 Appellants argue that Lin does not disclose the limitation of claim 12 of "presenting the stored screenshots on the display screen when the source is not running in response to receiving a display request when the source is not running." App. Br. 20-21; Reply Br. 12-13. For this limitation, the Examiner refers to the disclosure in Lin illustrated by Lin's Figure 7 disclosure regarding snapshots. Final Act. 5; Ans. 8. Appellants argue that this disclosure in Lin does not describe the disputed limitation because the input that triggers the snapshot is received only when the computer is not in idle state. Reply Br. 12-13. We are not persuaded by this argument. Appellants do not address the input received in step 772, which is received when the computer is in an idle state and a screen shot is being displayed. Lin Fig. 7. The receipt of that input results in a subsequent display of a screen shot when the computer is again in an idle state. Lin Fig. 7, step 770. Accordingly, we sustain the rejection of claim 12 and of claims 13 and 14, for which Appellants present no separate substantive arguments. App. Br. 21-22. Claim 15 Appellants argue that the phrase "when the at least one processor is not running" in claim 15 excludes a computer in an idle state and therefore the Examiner's reliance on such a computer is erroneous. App. Br. 9-11. We disagree with this argument for the reasons set forth for claim 1. Accordingly, we sustain the rejection of claim 15. 7 Appeal2015-001731 Application 13/257,982 Claim 16 Appellants argue that the rejection of claim 16 should be reversed for the same reasons presented against claim 1. App. Br. 30-31. Accordingly, we sustain the rejection of claim 16 for the reasons discussed above for claim 1. Claim 17 We find the disputed limitation in claim 1 7-"await confirmation that the captured screenshot being displayed is to be saved"-to be indefinite. It is unclear what "await confirmation that the captured screenshot being displayed is to be saved." It is unclear whether, as the Examiner suggests, mere delay would suffice to meet the limitation, or whether the recited screen capture system needs to specifically wait for such a confirmation. Ans. 9. No limitation in claim 17 requires that the screen capture system do anything once it receives such a confirmation. Accordingly, we do not sustain the rejection of claim 17 for anticipation. However, pursuant to 37 C.F.R. § 41.50(b), we newly reject the claim under 35 U.S.C. § 112, second paragraph, for indefiniteness for reasons discussed above. Claim 18 We sustain the rejection of claim 18 for the reasons discussed above for claim 12. Claim 19 We are not persuaded that the continuous transmission of screenshot C cited by the Examiner is the "plurality of captured screenshots from which a person is prompted to select for single presentations," as recited in claim 19. Ans. 10-11, citing Lin i-fi-137-38. Screenshot C appears to be just one screenshot that no one is prompted to select for single presentation. Reply 8 Appeal2015-001731 Application 13/257,982 Br. 15-17; Lin il 38. Accordingly, we do not sustain the rejection of claim 19. Claim 20 The Examiner finds the comparison of screenshots B and C in Lin as disclosing the limitation added by claim 20 to base claim 1. Ans. 11-12, citing Lin i-fi-136-39, Fig. 5. Reply Br. 18-19. Appellants argue that the cited disclosures do not describe comparing those screenshots. We are persuaded by Appellants that the cited disclosures in Lin does not expressly disclose that comparison, and we have no explanation of how Lin inherently discloses that comparison. Ans. 11-12. Accordingly, we do to not sustain the rejection of claim 20. Claim 21 Appellants argue that the Examiner essentially has rejected claim 21 for a lack of written description support without issuing a written description rejection. App. Br. 26-28. Appellants further argue that the cited descriptions in Lin do not disclose the limitation added by claim 21 added to base claim 1. Id. Additionally, Appellants argue that a written description rejection would not be appropriate because paragraph 20 of the Specification supports that limitation. Id. Regarding the Examiner's anticipation rejection, we are not persuaded that the cited portions of Lin support the limitation added by claim 21 to claim 1. Ans. 12, citing Lin i-fi-125-27, 37-39, Fig. 2. It is unclear how the cited portions describe actually shutting down the operating system when the screen shots are displayed. Id. Therefore, we do not sustain the Examiner's rejection. 9 Appeal2015-001731 Application 13/257,982 We find, however, that paragraph 20 of the Specification and the rest of the Specification do not support this limitation. The limitation requires that the screen operating system be configured so the operating system is shut down when stored screenshots are displayed on the screen: "the screen capture system is configured such that while the stored screenshots are presented on the display screen, the computer operating system is shut down so as to necessitate a reboot of the computer operating system." Claim Appendix (emphasis added). Nothing in paragraph 20 of the Specification or the rest of the Specification requires the operating system to be shut down when such a display is occurring. Spec. i-f 20. Accordingly, pursuant to 37 C.F.R. § 41.50(b), we newly reject claim 21under35 U.S.C. § 112, first paragraph, for a lack of written description support, for reasons discussed above. Claim 23 Appellants argue that the Examiner erred in rejecting claim 23 because the claim terms "presently being displayed" refers to what is being instantaneously being displayed and does not encompass the sequential video frames relied on by the Examiner. Ans. 13; Reply Br. 20-21. We are not persuaded by this argument because claim 23 does not recite "what is instantaneously being displayed." Lin displays video. Ans. 13, citing Lin i-fi-136-39. When a video is presently being displayed in Lin, a frame is less than the complete video. Id. Accordingly, we sustain the rejection of claim 23. 10 Appeal2015-001731 Application 13/257,982 DECISION We affirm the Examiner's anticipation rejection of claims 1, 7-9, 12- 15, 18, 22, and 23 and the Examiner's obviousness rejection of claim 16. We reverse the Examiner's anticipation rejection of claims 3---6, 10, 11, 17 and 19-21. Pursuant to 37 C.F.R. § 41.50(b), we newly reject ((1) claims 3-6 and 17 under 35 U.S.C. § 112, second paragraph, for indefiniteness; (2) claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Lin; and (3) claim 21 under 35 U.S.C. § 112, first paragraph, as lacking written description support. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the 11 Appeal2015-001731 Application 13/257,982 claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. 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-IN-PART; 37 C.F.R. § 41.50(b) 12 Copy with citationCopy as parenthetical citation