Ex Parte Robinson et al

Board of Patent Appeals and Interferences

Jul 13, 2010

09728785 (B.P.A.I. Jul. 13, 2010)

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.
09/728,785 11/30/2000 Rich Robinson P209/US 2704
49278 7590 07/13/2010
SCENERA RESEARCH, LLC
111 Corning Road
Suite 220
Cary, NC 27518
EXAMINER
VAUGHN, GREGORY J
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
07/13/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICH ROBINSON and ERIC C. ANDERSON
____________________

Appeal 2009-004585
Application 09/728,7851
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
JAMES R. HUGHES, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed November 30, 2000. The real party in interest is
FotoMedia Technologies, LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004585
Application 09/728,785

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 32 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejections.

Appellants’ invention relates to a method for customizing tags within
digital images captured with a camera. (See Spec. 4, ll. 7-8.) In the words
of Appellants:
By allowing multiple developers to store
metadata defining custom tags for different camera
applications on [a] gateway server, such that
images uploaded to the gateway server are
automatically recognized by the key IDs, the
metadata Internet platform eliminates the need for
developers to write their own web applications to
recognize the custom tags. In addition, the key
IDs give the same gateway server the ability to
recognize and extract custom data from a plurality
of different cameras and camera applications.
(Spec. 8, ll. 13-19).

Claim 1 is exemplary and is reproduced below:
1. A method for customizing tags in digital images captured
with an image capture device that stores the digital images in
image files, each image file including one or more images tags
each having a corresponding first pre-defined function, the
method comprising:

(a) storing a key ID and a definition on a server in a
network, the definition for altering the
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corresponding first pre-defined function of at least
one of the one or more image tags to create one or
more custom tags for one or more of the image
files, each custom tag having a second function
that is different from the corresponding first pre-
defined function;

(b) receiving a plurality of the image files at the server
over the network, wherein each of the image files
includes image data, the key ID, and the one or
more custom tags containing data; and

(c) automatically recognizing the image files by the
key ID and using the corresponding stored
definition to extract the data from the one or more
custom tags to make the data available to a user
along with the image data.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pavley US 6,445,460 B1 Sep. 03, 2002
(filed on Apr. 13, 1999)
Gao US 6,581,094 B1 Jun. 17, 2003
(filed on Nov. 02, 1999)
Manolis US 6,583,799 B1 Jun. 24, 2003
(filed on Nov. 29, 1999)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 7 to 10, 16, and 22 to 24 stand rejected under
35 U.S.C. § 102(e) for being anticipated by Pavley.
R2: Claims 2, 3, 11, 12, 17, 18 and 25 to 29 stand rejected under 35
U.S.C. § 103(a) for being obvious over Pavley in view of Gao.
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R3: Claims 4 to 6, 13 to 15, 19 to 21 and 30 to 32 stand rejected under
35 U.S.C. § 103(a) for being obvious over Pavley and Gao in view of
Manolis.

Appellants contend that Pavley does not anticipate the claimed subject
matter, and that Pavley in combination with Gao and Manolis do not render
the claimed subject matter unpatentable for failure of the references to teach
the claim limitation “storing a key ID and a definition on a server in a
network, the definition for altering the corresponding first pre-defined
function of at least one of the one more image tags to create one or more
custom tags for one or more of the image files, each custom tag having a
second function that is different from the corresponding first pre-defined
function” (claim 1) (Brief 18, top). The Examiner contends that each of the
claims is properly rejected (Ans. 14, top).
We have only considered those arguments that Appellants actually
raised in the Brief. Arguments that Appellants could have made but chose
not to make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a).
The issue turns on whether Pavley teaches “storing a key ID and a definition
on a server in a network, the definition for altering the corresponding first
pre-defined function of at least one of the one more image tags to create one
or more custom tags for one or more of the image files, each custom tag
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having a second function that is different from the corresponding first pre-
defined function,” as recited in exemplary claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method, medium, and system of storing a
customized tag within photos taken by a camera. (See claims 1, 10, 16, and
25; see also Spec. 4, ll. 7-8.) The claimed method includes storing a key ID
and a definition on a server in a network (claim 1). Appellants’ definition,
as claimed, is for altering the corresponding first pre-defined function of at
least one of the one or more image tags to create one or more custom tags
for one or more of the image files (id.). The claimed custom tag has a
second function that differs from the corresponding first pre-defined
function (id.). An example of a new function for customs tags, as recited in
claim 1, is providing new uses for the tags (Spec. 2, l. 5).
Pavley
2. The Pavley reference teaches storing a category tag within photos taken
by a camera (col. 5, ll. 14-24). Pavley’s method includes a key ID (see Fig.
3, “Image #314”) and a rule set (see col. 6, ll. 26-29) on a server in a
network. (See col. 5, l. 52.) The patent teaches three types of functions (i.e.,
an action that occurs based on a category tag): 1) detecting a person or
groups of persons according to characteristics, like substantial amounts of
flesh tones within the image; 2) detecting nature scenes from characteristics,
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such as substantial green content in an image combined with a relative lack
of hard edges; 3) and detecting categories such as city images, water images,
or indoor images (col. 5, ll. 16-24). One rule set may be for altering the
corresponding first pre-defined function (e.g., see col. 5, ll. 15-18, detecting
images containing a person or groups of people by recognizing substantial
amounts of flesh tones within the images) of at least one of the one or more
image tags to create one or more custom tags (e.g., see col. 5, ll. 18-21, for a
second rule set defining tags for detecting substantial green content in an
image combined with a relative lack of hard edges) for one or more of the
image files.
Gao
3. The Gao reference discloses a digital camera having a Uniform Device
Descriptor, or eXtensible Markup Language (XML) syntax, a computer
language describing the camera’s device characteristics, capabilities,
features, status, geographic information, and maintenance record. (See col.
4, ll. 45-53; col. 7, ll. 57-58.) A Uniform Device Descriptor file attaches to
camera image produced, and the file and image travel together across a
network from camera to printer (col. 1, ll. 58-60; col. 15, ll. 34-37).
Manolis
4. The Manolis reference discloses a method of storing and accessing
photos via a network (col. 3, ll. 24-29).

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PRINCIPLES OF LAW
Appellants have 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. 2006).

“To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.
Cir. 1991).

“[L]imitations 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)).

ANALYSIS
Arguments with respect to the rejection
of claims 1, 7 to 10, 16, and 22 to 24
under 35 U.S.C. § 102(e)

Appellants’ first contention is that the Examiner erred in determining
that “the recited key ID reads on a ‘number of the image’ in Pavley[]” and
“the corresponding recited definition … reads on Pavley’s rule set” (Brief
15, bottom). According to Appellants, “Pavley does not reach the claimed
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invention, as the independent claims require that the definition and its
corresponding key ID be stored on the server.” (Brief 16, middle).
We disagree with Appellants for the following reasons. We find that
Appellants have invented a method, medium, and system of storing a
customized tag within photos taken by a camera (FF#1). The claimed
method includes storing a key ID and a definition on a server in a network
(id.). Appellants’ definition, as claimed, is for altering the corresponding
first pre-defined function of at least one of the one or more image tags to
create one or more custom tags for one or more of the image files (id.). The
claimed custom tag has a second function that differs from the
corresponding first pre-defined function (id.). An example of a new function
for customs tags, as recited in claim 1, is providing new uses for the tags
(id.).
In comparison, we find that the Pavley reference teaches storing a
category tag (Appellants’ claimed “custom tag”) within photos taken by a
camera (FF#2). The patent teaches three types of functions (i.e., an action
that occurs based on a category tag): 1) detecting a person or groups of
persons according to characteristics, like substantial amounts of flesh tones
within the image; 2) detecting nature scenes from characteristics, such as
substantial green content in an image combined with a relative lack of hard
edges; and 3) detecting categories such as city images, water images, or
indoor images (id.). Pavley’s method further includes a key ID (see Fig. 3,
“Image #314”) and a rule set (Appellants’ claimed “definition”) on a server
in a network (id.). One rule set may be for altering a corresponding first pre-
defined function (e.g., see col. 5, ll. 15-18, detecting images containing a
person or groups of people by recognizing substantial amounts of flesh tones
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within the images) of at least one of the one or more image tags to create one
or more custom tags (e.g., see col. 5, ll. 18-21, for a second rule set defining
tags for detecting substantial green content in an image combined with a
relative lack of hard edges) for one or more of the image files (id.).
A gap in the reference may be filled with recourse to extrinsic
evidence. (See Continental Can Co. USA Inc. v. Monsanto Co., cited above)
“Such evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.” (Id.).
We find that Pavley inherently teaches storing the Image ID #314 of
Fig. 3 and the rule set on a server in the Internet web server computer
processing system 1102. (See also col. 5, ll. 47-49; Fig. 6, element 1104.)
Image files are synchronized with “a photosystem environment, i.e., between
a digital camera and an externally connected computer system, as
represented in Fig. 6.” (Id.). The evidence in Pavley makes clear that when
Image ID #314 (Appellants’ claimed “key ID”) (see Fig. 3; see also Fig. 6,
element 1104) and the rule set (cited as Appellants’ claimed “definition”) are
on the network (see col. 6, ll. 27-29), they are inherently stored by the
network server. Accordingly, we find no error.
Appellants argue that Pavley does not “disclose a definition …
corresponding to the key ID” as required by the independent claims (Brief
17, middle). “Pavley’s selected rule set is applied to any image processed by
its server 1100, regardless of any information included in the image. There
is thus no correspondence between the Pavley’s selected rule set and a key
ID included in the processed image, as the independent claims require.”
(Id.).
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We find unconvincing Appellants’ argument that Pavley fails to teach
the claim limitation “a definition … corresponding to the key ID.” (Id.).
We read “corresponding to” as meaning “stored with.” There is no limit in
the claims on what “corresponding” means, includes, or represents. We do
not read any limitations into claim 1 from the Specification. (See
In re Van Geuns, cited above.) We note that the Specification discloses the
claimed “definition” may be “any actions to be taken by the server, such as
performing calculations on the custom tags.” (Spec. 9, ll. 15-18.) Pavley’s
“rule set” is no different from Appellants’ claimed “definition” because
Pavley’s rule set is a routine “for achieving a particular goal for an image
file.” (Col. 5, ll. 62-63). The “definition” of claim 1 and Pavley’s “rule set”
are equal since the “actions” of Appellants’ “definition” operate the same as
the routine of Pavley’s rule set. Moreover, Pavley’s “Image #314” is the
same as Appellants’ claimed “key ID” since the term “Image” and number
“314” identify Pavley’s image. Since the claimed “definition” and the
claimed “key ID” are stored together, we find no error in this regard.
Appellants contend that “Pavley does not disclose storing a definition
that causes a tag to have a second pre-defined function, as independent
claims 1, 10, 16, and 25 require. Instead, Pavley merely describes the
conventional altering of values of a file attribute that has a single, fixed,
meaning or function.” (Brief 18, top).
We disagree. The claimed “custom tag” has a second function
(detecting substantial green content in an image combined with a relative
lack of hard edges) (FF#2) that differs from the corresponding first pre-
defined function (e.g., detecting images containing a person or groups of
people by recognizing substantial amounts of flesh tones within the images)
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(id.). An example of a new function for custom tags, as recited in claim 1, is
providing new uses for the tags (FF#1). Pavley teaches the same, in that the
new function (i.e., the second function) is detecting substantial green content
in an image combined with a relative lack of hard edges (col. 5, ll. 20-21).
Appellants argue that “Pavley fails to disclose altering a first pre-
defined function of any of the described attributes or image tags … as
required by the independent claims.” (Brief 18, bottom). According to
Appellants, Pavley merely “discloses associating attributes and image tags
(i.e., capture information tags, user tags, product tags, and automatic
category tags) with an image” and not “altering any of the functions … of its
attributes or image tags.” (Id.).
We disagree. We found above that an example of a “first pre-defined
function,” as recited in claim 1, is Pavley’s teaching of detecting images
containing a person or groups of people by recognizing substantial amounts
of flesh tones within the images (FF#2). Accordingly, we find no error.

Arguments with respect to the rejection
of claims 2 to 6, 11 to 15, 17 to 21, and 25 to 32
under 35 U.S.C. § 103(a) [R2 and R3]

Appellants argue that the claims cannot be held obvious over Pavley
in combination with Gao and Manolis because “Gao and Manolis (either
alone or in combination) fail to cure the defect of Pavley for failing to
disclose the recited key ID and corresponding definition stored on a server
for altering a first pre-defined function of an image tag.” (Brief 20, bottom
to 21, top).
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Contrary to Appellants’ above-stated argument, Pavley does indeed
teach “the recited key ID and corresponding definition stored on a server for
altering a first pre-defined function of an image tag.” (See supra.)
Accordingly, we find no error.
Also according to Appellants, “Gao and Manolis (either alone or in
combination) also fail to cure the defect of Pavley for failing to disclose
altering a first predefined function of an image tag to create a custom tag
having a second pre-defined function that is different from the first pre-
defined function.”
To the contrary, Pavley teaches altering a first predefined function of
an image tag to create a custom tag having a second pre-defined function
that is different from the first pre-defined function, as claimed. (See supra.)
Accordingly, we find no error in the Examiner’s obviousness rejections [R2
and R3].

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 32.

DECISION
We affirm the Examiner’s rejections [R1 to R3] of claims 1 to 32.

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
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peb

SCENERA RESEARCH, LLC
111 CORNING ROAD
SUITE 220
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