Ex Parte Quintana

Board of Patent Appeals and Interferences

Jan 31, 2008

10117543 (B.P.A.I. Jan. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANGELICA QUINTANA
____________

Appeal 2007-3047
Application 10/117,543
Technology Center 2600
____________

Decided: January 31, 2008
____________

Before ANITA PELLMAN GROSS, ROBERT E. NAPPI, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-6, 10-18, and 25-34.1 We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

1 A previous rejection of claim 1 under 35 U.S.C. § 112, second paragraph
has been withdrawn (Ans. 2, 13).
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Application 10/117,543

STATEMENT OF THE CASE
Appellant invented a system that enables a user to send pictures from
a digital camera to a recipient via an instant messaging service. In one
aspect of the invention, an image file is automatically transmitted from the
camera to the recipient when the recipient logs into the instant messaging
service.2 Claim 1 is illustrative:
1. An imaging system comprising:

a digital camera, the digital camera including an intent module,
wherein the intent module accepts user input through a user interface of said
camera, said user input including an intent specification to transmit a
particular file created by said digital camera via an electronic instant
messaging service, said intent specification specifying a recipient to which
said particular file created by the digital camera is to be sent via said
electronic instant messaging service, wherein said recipient is a registered
user of said instant messaging service;

wherein, after said digital camera is brought into communication with
a device with access to said instant messaging service and that has logged
into said instant messaging service, a determination is made as to whether
said recipient is also logged into said instant messaging service and said
particular image file is transmitted to said recipient automatically if said
recipient is logged into said instant messaging service.

The Examiner relies on the following prior art references to show
unpatentability:
Center, Jr. US 2002/0163572 A1 Nov. 7, 2002
(filed Nov. 13, 2001)
Bateman US 2002/0194414 A1 Dec. 19, 2002
(filed Jun. 15, 2001)
Parker US 6,677,976 B2 Jan. 13, 2004
(filed Feb. 28, 2002)

2 See generally Spec. 0009-0013.
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Ward US 6,784,924 B2 Aug. 31, 2004
(filed Jan. 7, 1998)
Bengtsson US 6,865,191 B1 Mar. 8, 2005
(filed Aug. 3, 2000)

1. Claims 25 and 26 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bengtsson.
2. Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bengtsson and Parker.
3. Claims 1-6, 11-17, 28-30, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ward and Parker.
4. Claims 10 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ward, Parker, and Center.
5. Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ward, Parker, and Bengtsson.
6. Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ward, Parker, and Bateman.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

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OPINION
The Anticipation Rejection
We first consider the Examiner’s rejection of claims 25 and 26 under
35 U.S.C. § 102(e) as being anticipated by Bengtsson. Anticipation is
established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Bengtsson (Ans. 3). Regarding
independent claim 25, Appellant argues that Bengtsson does not teach or
suggest that an instant messaging address is entered into the camera or
terminal of Bengtsson such that the file will be automatically transmitted
when the camera is subsequently connected to a system having the instant
messaging service as claimed. According to Appellant, Bengtsson does not
teach or suggest any activity that takes place on the terminal while it is not
connected to any system (App. Br. 9-10; Reply Br. 4-5).
The Examiner construes the recited supporting system to correspond
to the network in Bengtsson that uses Wireless Access Protocol (WAP).
According to the Examiner, the camera/terminal in Bengtsson is not
connected to this or any supporting system unless the network is accessed.
The Examiner adds that recipients’ addresses are entered into the camera via
a user interface before the camera/terminal is connected to the network (Ans.
14-15).
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The issue before us, then, is whether Bengtsson expressly or
inherently discloses entering an instant messaging address into the camera
when the camera is not connected to any supporting system as recited in
independent claim 25. For the following reasons, we find that Bengtsson
does not expressly or inherently disclose this limitation.
Bengtsson discloses a radio communication system which enables
users to attach files (e.g., image files) to standard Short Message Service
(SMS)3 messages (Bengtsson, col. 3, ll. 24-30; col. 5, ll. 4-7). To this end,
the user’s terminal can have a digital camera built into the terminal; the
camera can also be detachably associated with the terminal (col. 4, ll. 27-
57). Upon creating a conventional SMS message, the user can attach a file
either via system prompting, menu selections, or keypad entries. If the user
attaches a file, the attached file is sent to a special server 32 via the WAP
protocol. The text portion of the SMS message, however, is sent to a
different server, SMS server 36. From that server, the SMS message’s text
portion is then sent to the receiving party 34 (Bengtsson, col. 5, ll. 7-34;
Figs. 2 and 3).
Alternatively, the URL address of the attachment can be included in
the SMS text message. In this case, the receiving party can download the
image from server 32 to their terminal 34 via the WAP protocol (Bengtsson,
col. 5, ll. 40-54).
We find nothing in Bengtsson that expressly or inherently discloses
entering an instant messaging address into the camera when the camera is

3 SMS is a message function service within the GSM radio communication
standard that enables transmission of messages with up to 160 alphanumeric
characters to a subscriber at a mobile unit (Bengtsson, col. 1, ll. 17-27).
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not connected to any supporting system as recited in independent claim 25.
Bengtsson says nothing about exactly when a recipient’s address is entered
into the camera/terminal and therefore does not expressly disclose the
limitation.
Nor is this limitation inherent in Bengtsson. Even if we assume that
the recipient’s address is entered into the camera/terminal before it is
connected with the network using the WAP protocol, such an entry would
still not necessarily occur when the camera/terminal is not connected to any
supporting system as claimed -- an SMS system or otherwise. Although the
addresses could be entered in the camera/terminal prior to transmitting the
images to server 32, Bengtsson simply does not say exactly when these
entries are made with respect to connection to any “supporting system.”
That is, even if we consider the path between the camera/terminal 30 and
server 32 to be the recited “supporting system,” the camera/terminal 30
could still be connected to this “supporting system” (or other “supporting
systems”) during entry of the addresses and before transmitting image data
to the server 32.
Furthermore, even if the addresses are entered before connecting to
Bengtsson’s radio communication system, the addresses could be entered
when the camera is connected to another supporting system distinct from the
disclosed radio communication system. Claim 25 requires entering
addresses when the camera is not connected to “any” supporting system --
not just “a” supporting system. The Examiner has simply not shown that
this entry necessarily occurs when the camera is not connected with any
supporting system -- an essential requirement for anticipation by inherency.
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For the foregoing reasons, we will not sustain the Examiner’s
rejection of independent claim 25 or dependent claim 26 for similar reasons.

The Obviousness Rejections
Claim 27
We now consider the Examiner’s rejection of claim 27 under 35
U.S.C. § 103(a) as unpatentable over Bengtsson and Parker. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727
(2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
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another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 1741 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Regarding claim 27, although the Examiner adds the disclosure of
Parker to Bengtsson (Ans. 4), we find that Parker does not cure the
deficiencies of Bengtsson that we noted above with respect to claims 25 and
26. We therefore will not sustain the Examiner’s rejection of claim 27 for
the same reasons we discussed with respect to claims 25 and 26.

The Rejection of Claims 1-6, 11-17, 28-30, 32, and 33
Claims 1-6, 11, 32, and 33
We now consider the Examiner’s rejection of claims 1-6, 11-17, 28-
30, 32, and 33 under 35 U.S.C. § 103(a) as unpatentable over Ward and
Parker. The Examiner’s rejection essentially finds that Ward discloses all of
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the claimed subject matter except for (1) an instant messaging service; (2)
the recipient being a registered user of the instant messaging service; and (3)
determining whether the user is logged in to this service after the digital
camera is brought into communication with a device with access to the
instant messaging service. The Examiner cites Parker as teaching these
features and concludes that it would have been obvious to the skilled artisan
at the time of the invention to modify Ward’s camera to transmit a file to a
registered recipient via an electronic instant messaging service (Ans. 5-6;
15-17).
Regarding representative claim 1,4 Appellant argues that Ward does
not disclose transmitting a file created by the digital camera via an electronic
instant messaging service as claimed (App. Br. 11-12; Reply Br. 5).
Regarding Parker, Appellant adds that any image content captured by the
video camera in the reference is not transmitted by an instant messaging
service, but rather is transmitted using a separate video telephony server
application and corresponding client application (App. Br. 12; Reply Br. 6).
We will sustain the Examiner’s rejection of representative claim 1.
Ward discloses a digital camera 10 that interfaces with a host computer 12.
The camera includes a “send” button or icon that allows the user to transmit
selected images to a desired destination via a wired or wireless
communications interface. To this end, a network configuration file
containing instruction information for communicating with a selected
destination is generated at the computer and downloaded to the camera.

4 Appellant argues claims 1-6, 11, 32, and 33 together as a group. See App.
Br. 11-13. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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When the user transmits selected images to a desired destination,
information pertaining to this transmission is read from the network
configuration file (e.g., communications port settings, user account specifics,
etc.) to simplify transfer of the images to different destinations and online
services (Ward, col. 1, ll. 25-67; col. 2, ll. 39-58; col. 3, ll. 14-65; Figs. 1, 2).
Parker discloses a system that integrates video telephony with chat
and internet messaging applications. To this end, a central server 13 runs (1)
a video telephony server application 50, (2) a chat server application 51, and
(3) an instant messaging server application 52. The server also maintains the
databases of registered users for each of these communication services
(video telephony, chat, and instant messaging) (Parker, col. 7, ll. 23-38; Fig.
7).
Users’ computers 10 and 11 communicate with the central server 13
via a public data network (e.g., the Internet). As shown in Figure 8, the user
interface includes a video camera 61 and a display monitor 60. Each client
application (i.e., video telephony, chat, and instant messaging) runs in a
respective program window (Parker, col. 7, ll. 40-53; Fig. 8).
To establish a video telephony call, a call request is sent from user #1
to the central server. The central server then forwards the request to user #2
who can then accept or decline the call by selecting the appropriate button
on the generated prompt. If the call is accepted, both computers launch a
respective video telephony client application and exchange live video signals
from their respective cameras (Parker, col. 8, l. 53 - col. 9, l. 2; Fig. 10).
In another implementation, Parker discloses a video telephony system
where one user dials another user’s telephone phone number. The dialed
number is captured by a computer and forwarded to the central server 13 as
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part of an access request. Central server then sends an initiation message to
user #2’s computer. If user #2 accepts, data messages can be exchanged
between application programs running on both users’ computers 10, 11. The
application programs can perform file transfers of various types of files,
video data or frames for video telephony, or other real-time data. Data
exchange can continue until either user deactivates their application program
(Parker, col. 4, l. 59 - col. 5, l. 14; col. 5, l. 53 - col. 6, l. 30; Figs. 2 and 3).
Based on this functionality, we find that the collective teachings of
Ward and Parker amply suggest the limitations of representative claim 1.
First, although a video telephony application is used in Parker for video data
communication as Appellant argues, we agree with the Examiner (Ans. 18)
that the video telephony service is but one of the instant messaging services
in Parker.
Nevertheless, even if we assume, without deciding, that video
telephony somehow cannot be considered “electronic instant messaging”
under the term’s broadest reasonable interpretation, the central server 13
nonetheless fully meets the recited “electronic instant messaging service”
since the server provides, among other things, instant messaging capability.
As shown in Figure 7 of Parker, data transferred from User #1’s computer to
User #2’s computer passes through the central server 13. Therefore, even if
all image data between users is handled by the server’s video telephony
application, the image data is nonetheless transmitted to the recipient
through “an electronic instant messaging service” 13.
We also agree with the Examiner (Ans. 17) the recipient’s ability to
accept or decline a video telephony call in Parker certainly suggests that the
recipient is logged into the system. Significantly, video telephony calls can
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be made after establishing a “supplemental communication” – an initial
contact between users that can be via instant messaging (Parker, col. 8, ll.
37-42; Fig. 9 (Step 84)). At a minimum, this initial “supplemental
communication” using instant messaging would establish whether the
recipient is logged into the system prior to transmitting image data to the
recipient.
Parker further teaches that commensurate video telephony
applications (e.g., the embodiment of Figures 2 and 3) can exchange not
only video data, but also files or other real-time data upon acceptance of a
call initiation message (Parker, col. 5, ll. 6-13). We agree with the Examiner
(Ans. 18) that this embodiment reasonably meets an “instant messaging
service” under the term’s broadest reasonable interpretation. Moreover, we
see no reason why this functionality (i.e., transferring data and files in real-
time in conjunction with a video telephony application) could not be applied
to the system shown in Figure 7. In addition, we see no reason why Parker’s
system would not be capable of transferring image files from a digital
camera, such as that disclosed in Ward. In this regard, we find the
references’ teachings reasonably combinable as both references pertain to
transmitting image data to remote online destinations.
For at least these reasons, we find that the collective teachings of
Parker and Ward amply suggest all recited limitations of representative
claim 1. Therefore, we will sustain the Examiner’s rejection of claim 1 and
claims 2-6, 11, 32, and 33 which fall with claim 1.

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Claims 12-15 and 28-30
We will also sustain the Examiner’s rejection of representative claim
12 calling for, in pertinent part, entering an address for an instant messaging
recipient through a user interface of the digital camera, and automatically
sending a selected image file to the recipient via an instant messaging
service. As we discussed previously in connection with claim 1, we find the
collective teachings of Ward and Parker amply suggest these limitations,
particularly with respect to the instant messaging service. Our previous
discussion of Parker and Ward applies equally here and we incorporate that
discussion by reference.5 We also agree with the Examiner (Ans. 17) that
Ward reasonably suggests entering data into the camera via a user interface.
Accordingly, we will sustain the Examiner’s rejection of representative
claim 12 as well as claims 13-15 and 28-30 which fall with claim 12.

Claims 16 and 17
We will also sustain the Examiner’s rejection of claims 16 and 17 for
the same reasons as we indicated previously and we incorporate that
discussion by reference.6 Regarding the recited pre-defined text message,
we note that not only does Parker teach transferring data messages in
conjunction with transfers of files or other real-time data (Parker, col. 5,
ll. 9-14), but also ordinarily skilled artisans would readily recognize that the
file name itself would constitute a pre-defined text message as claimed. We
will therefore sustain the Examiner’s rejection of representative claim 16
and claim 17 which falls with claim 16.

5 See p. 9-11, supra, of this opinion.
6 See id.
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The Obviousness Rejections of Claims 10, 18, 31, and 34
Regarding the Examiner’ rejections under 35 U.S.C. § 103(a) of (1)
claims 10 and 18 over Ward, Parker, and Center; (2) claim 31 over Ward,
Parker, and Bengtsson; and (3) claim 34 over Ward, Parker, and Bateman,
we find that the Examiner has established at least a prima facie case of
obviousness of those claims that Appellant has not persuasively rebutted.
Specifically, the Examiner has (1) pointed out the teachings of Ward and
Parker, (2) noted the perceived differences between these references and the
claimed invention, and (3) reasonably indicated how and why these
references would have been modified in view of the cited secondary
references to arrive at the claimed invention (Ans. 10-13). Once the
Examiner has satisfied the burden of presenting a prima facie case of
obviousness, the burden then shifts to Appellant to present evidence or
arguments that persuasively rebut the Examiner's prima facie case.
Appellant did not persuasively rebut the Examiner's prima facie case of
obviousness, but merely noted that claims 10, 18, 31, and 34 are patentable
by virtue of their dependence from patentable independent claims (App. Br.
16-17; Reply Br. 8). Since we have found the independent claims to be
unpatentable, the rejections of claims 10, 18, 31, and 34 are therefore
sustained.

DECISION
We have sustained the Examiner's rejections with respect to claims 1-
6, 10-18, and 28-34. We have not, however, sustained the Examiner’s
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rejection of claims 25-27. Therefore, the Examiner’s decision rejecting
claims 1-6, 10-18, and 25-34 is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

tdl

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