Ex Parte Sato

Board of Patent Appeals and Interferences

Aug 8, 2007

09824248 (B.P.A.I. Aug. 8, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KOICHI SATO
____________________

Appeal 2007-1275
Application 09/824,2481
Technology Center 2600
____________________

Decided: August 8, 2007
____________________

Before HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD,
and SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 9, 10, and 12-16, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed April 3, 2001. The real party in interest is PENTAX
Corporation.

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STATEMENT OF THE CASE
Appellant's invention relates to an electronic still camera that
processes images which were obtained in a continual photographing
operation so as to reproduce and display the images in the same order and at
the same time interval as they were recorded. (Specification 1:5-9;
Abstract.)

Claim 9 is exemplary:
9. An electronic still camera comprising:

a memory that stores a discrete image
obtained in a still photographing operation, and
that stores, for each of a plurality of discrete
images sequentially obtained in a continual still
image photographing operation in which the
plurality of discrete images are taken at an interval
time set by an operator, a unique indicator that
indicates whether said discrete image was
sequentially recorded in the continual still image
photographing operation;

a determination processor that determines
whether the plurality of discrete images were
obtained in said continual still image
photographing operation; and

an image processor that continually
reproduces said plurality of discrete images, as a
common operation on said plurality of discrete
images, at a same interval as that of said continual
still image photographing operation, when it is
determined, using said unique indicator, that said
plurality of discrete images were obtained in said
continual still image photographing operation.
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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Anderson US 6,169,575 B1 Jan. 02, 2001
Shioji US 6,466,264 B1 Oct. 15, 2002

Claims 9, 10, and 12-16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Anderson and Shioji.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). That is, given the teachings
of the prior art, has Appellant shown that the differences between the claims
and the prior art are sufficient to render the claimed subject matter
unobvious to a person skilled in the art at the time the invention was made?

2 Except as will be noted in this opinion, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Anderson teaches a digital image data processing system that can be
used in a digital camera. (Col. 1, ll. 23-25.) Anderson describes
cameras that capture time lapse or burst images where a sequence of
images is captured over a set time period. (Col. 1, ll. 38-42.)
Anderson also explains that "[u]nfortunately, the related images are
not usually easily identified as belonging together" and that
"attempts[] to manipulate and access these related image as sets are
difficult." (Col. 1, ll. 47-51.)

2. Anderson "provides a method and system for allowing user-
specification of a time-based group of related images." (Col. 1, ll.
57-59.) Parameters, such as the length and the time between image
captures in an image capture session, are provided with a command to
initiate the image capture session. (Col. 1, ll. 60-65; col. 7, ll. 26-30
& 36-40.) Images captured in the image capture session are
automatically related so as to form a user-specified time-based group.
(Col. 1, l. 67 to col. 2, l. 2.)

3. Anderson teaches that individual image files are identified by image
tags. (Col. 6, ll. 10-11.) The image tags may provide indicators such
as the image's position within a sequence of images, as well as other
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information that would aid the post-processing of the images. (Col. 6,
ll. 12-15.)

4. Shioji describes a digital camera that reproduces images stored on
recording media from other digital cameras. (Col. 1, ll. 8-12; col. 2,
ll. 5-8.) The camera of Shioji can reproduce still images and motion
images. Shioji explains that when "dealing with motion image data, .
. . the quality of the frame rate parameter should be taken into
consideration." (Col. 1, ll. 30-33.)

5. Shioji teaches that "[f]or motion image data, in some cases 15 still
images constitute 1 second of motion image whereas in other cases 30
still images are required for 1 second of motion image." (Col. 1,
ll. 33-36.) In other words, the motion image taught by Shioji is a
series of a specified number of still images captured at a specified
frame rate. Shioji also teaches that "[f]or proper speed reproduction,
reproduction should be suited in [sic] frame rate." (Col. 1, ll. 36-37.)
In other words, Shioji teaches that the correct frame rate must be used
in order to properly reproduce the motion image.

6. Shioji teaches that a first motion image signal is shot at a first frame
rate and a second motion image signal is shot at a different frame rate.
(Col. 3, ll. 29-35, 55-61.) The first and second motion image signals
each include frame rate information. (Col. 4, ll. 1-2, 58-62.) In
particular, frame rate information and other information such as file
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number are written in a header of the motion image file. (Col. 10,
ll. 51-61.) Figure 5 shows "exemplary qualities associated with
typical parameters of a reproduce [sic] system." (Col. 4, ll. 22-23). In
particular, Figure 5 shows two different frame rate parameters -- i.e.,
30 frames per second and 15 frames per second. (Fig. 5.)

7. In the camera of Shioji, a desired motion image signal is selected by a
selector (col. 3, ll. 49-50, 61-62), and the frame rate of the desired
motion image signal is detected by a detector (col. 3, ll. 50-51, 62-63;
col. 4, ll. 3-4). The desired motion image signal is reproduced by a
reproducer at the frame rate detected by the detector (col. 3, ll. 51-53,
63-67).

8. Figure 1 of Shioji shows an embodiment of a digital camera that
includes: a record/reproduce mode (R/P) select switch 20 and a
reproduce mode select switch 22; a system controller 26 connected to
switches 20 and 22; a CPU 19 connected to the system controller 26; a
video encoder 9 connected to a monitor 10 mounted on the camera
body; a memory control circuit 7 connected to a data storage area of
SDRAM 6; a disk control circuit 12 connected to a magneto-optical
disk 14; and a bus 8 connected to the CPU 19, memory control circuit
7, video encoder 9, and disk control circuit 12. (Col 5, l. 22 to col. 7,
l. 51.)

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9. Shioji explains that the R/P select switch 20 selects either a record
mode or a reproduce mode. (Col. 7, ll. 4-5.) The reproduce mode
select switch 22 selects either a still image reproduce mode or a
motion image reproduce mode. (Col. 7, ll. 8-9.) Shioji teaches that
"[w]hen a reproduce mode is selected by the R/P select switch 20, the
system controller 26 supplies the CPU 19 with a key state signal that
corresponds to a status of the reproduce select switch 22." (Col. 7,
ll. 20-23.) Referring to step S61 of Figure 10, Shioji explains that the
CPU 19 determines whether either a still image reproduce mode or a
motion image reproduce mode is selected when a reproduce mode is
selected. (Col. 11, ll. 3-10.)

10. Referring to Figures 13 and 14, Shioji teaches that, in a motion image
reproduce mode, an image file select process is performed at step
S101. (Col. 39-41.) Frame rate information contained in the motion
image file is detected at step S107. (Col. 12, ll. 49-51.) At step S119,
the CPU 19 starts up the video encoder 9 and sets a time period
corresponding to the detected frame rate information on to a timer 19a
in step S121. (Col. 13, ll. 6-9.) "By the process of steps S121-S133,
the compressed image data in each frame and sound data
corresponding to 1 frame are reproduced in the order according to a
time on the timer 19a. As a result, motion images are displayed
varying at normal speed." (Col. 13, ll. 52-57.)

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PRINCIPLES OF LAW
On appeal, all timely filed evidence and properly presented argument
is considered by the Board. See In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472,
223 USPQ at 788. When that burden is met, the burden then shifts to the
applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339, 1343-44, 74
USPQ2d 1951, 1954-55 (Fed. Cir. 2005) (finding rebuttal evidence
unpersuasive). If the applicant produces rebuttal evidence of adequate
weight, the prima facie case of unpatentability is dissipated. In re Piasecki,
745 F.2d at 1472, 223 USPQ at 788. Thereafter, patentability is determined
in view of the entire record. Id. However, on appeal to the Board it is an
appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred -- on appeal we will
not start with a presumption that the Examiner is wrong.
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, and (3) the level of skill in the art. Graham
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v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also
KSR, 127 S. Ct. at 1734, 82 USPQ2d at 1391 ("While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls."). The Court in Graham further
noted that evidence of secondary considerations, such as commercial
success, long felt but unsolved needs, failure of others, etc., "might be
utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented." 383 U.S. at 18, 148 USPQ at 467. "If
a court, or patent examiner, conducts this analysis and concludes the claimed
subject matter was obvious, the claim is invalid under § 103." KSR,
127 S. Ct. at 1734, 82 USPQ2d at 1391.
The mere existence of differences between the prior art and the claim
does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230,
189 USPQ 257, 261 (1976). The issue is "whether the difference between
the prior art and the subject matter in question 'is a difference sufficient to
render the claimed subject matter unobvious to one skilled in the applicable
art.'" Dann, 425 U.S. at 228-29, 189 USPQ at 261 (citation omitted). To be
nonobvious, an improvement must be "more than the predictable use of prior
art elements according to their established functions." KSR, 127 S. Ct. at
1740, 82 USPQ2d at 1396.
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious. In particular, the Supreme
Court emphasized that "the principles laid down in Graham reaffirmed the
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'functional approach' of Hotchkiss, 11 How. 248 [(1850)]." KSR, 127 S. Ct.
at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1,
12, 148 USPQ 459, 464 (1966) (emphasis added)), and reaffirmed principles
based on its precedent that "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." Id. The Court explained:
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.

Id. at 1740, 82 USPQ2d at 1396. The operative question in this "functional
approach" is thus "whether the improvement is more than the predictable use
of prior art elements according to their established functions." Id. at 1740,
82 USPQ2d at 1396.
The Court noted that "[t]o facilitate review, this [obviousness]
analysis should be made explicit." Id. at 1741, 82 USPQ2d at 1396 (citing
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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obviousness")). However, "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. The Court cautioned that "[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning." Id.
at 1742, 82 USPQ2d at 1397.
The Court noted that "[i]n many fields it may be that there is little
discussion of obvious techniques or combinations, and it often may be the
case that market demand, rather than scientific literature, will drive design
trends." KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. "Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed." Id. at 1742, 82 USPQ2d at 1397. The
Court also noted that "[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle." Id. at 1742, 82 USPQ2d at 1397. "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id.
Furthermore, the Supreme Court explained that "[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp."
KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. "If this leads to the
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anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense," id. and, in such an instance "the fact that a
combination was obvious to try might show that it was obvious under § 103"
id.
The level of ordinary skill in the art may be evidenced by the prior art
references. In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121
(Fed. Cir. 1995) ("Although the Board did not make a specific finding on
skill level, it did conclude that the level of ordinary skill in the art . . . was
best determined by appeal to the references of record . . . . We do not
believe that the Board clearly erred in adopting this approach."); see also In
re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("the PTO
usually must evaluate both the scope and content of the prior art and the
level of ordinary skill solely on the cold words of the literature").
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on one reference alone without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67
(CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2
(CCPA 1966).
During examination of patent application, a claim is given its broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). "[T]he words of
a claim 'are generally given their ordinary and customary meaning.'"
Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321, 1326 (Fed.
Cir. 2005) (en banc) (internal citations omitted). The "ordinary and
customary meaning of a claim term is the meaning that the term would have
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to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313, 75
USPQ2d at 1326.

ANALYSIS
Appellant contends that Examiner erred in rejecting claims 9, 10, and
12-16 as being obvious over Anderson and Shioji. Reviewing the findings
of facts cited above, we do not agree that the Examiner erred in rejecting the
claims. In particular, we find that the Appellant has not shown that the
Examiner failed to make a prima facie showing of obviousness with respect
to claims 9, 10, and 12-16. Appellant failed to meet the burden of
overcoming that prima facie showing.
Regarding claim 9, Appellant argues that the combination of
Anderson and Shioji would not result in the recited combination of features.
(Br. 7; Reply Br. 3.) In particular, Appellant argues that Shioji does not
disclose or suggest either "a determination processor that determines
whether the plurality of discrete images were obtained in said continual still
image photographing operation" or "an image processor that continually
reproduces said plurality of discrete images, as a common operation on said
plurality of discrete images, at a same interval as that of said continual still
image photographing operation, when it is determined, using said unique
indicator, that said plurality of discrete images were obtained in said
continual still image photographing operation," as claimed. (Br. 6-7; Reply
Br. 2-3.) We do not agree.
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Instead, we agree with the Examiner that Shioji discloses the recited
"determination processor" and "image processor" limitations of claim 9.
(Answer 4-5, 8-10; FF 6-10.) Appellant contends that "SHIOJI does not
disclose the continual still image photographing operation as recited in
claim 9." (Reply Br. 3; see also Br. 7-10, Reply Br. 4-5.) However, as the
Examiner correctly found, the motion image of Shioji is "a series of captured
still images captured at a frame rate (interval)." (Answer 8; FF 5.)
Appellant also contends that "[t]here is no disclosure whatever in
SHIOJI that an operator would select a frame rate for any operation related
to obtaining still images." (Br. 9.) However, the Examiner correctly found
that Anderson teaches this limitation (Answer 9-10; FF 2) and that Shioji
also meets this limitation because it "discloses the ability to select a frame
rate for any operation related to obtaining still images by providing the user
the ability to select different frame rates (i.e. 30 fps or 15 fps)" (Answer 10;
FF 5-6).
Moreover, Appellant asserts that "SHIOJI does not disclose that a
unique indicator is used to determine whether a plurality of discrete images
were obtained in a continual still image photographing operation." (Reply
Br. 4.) However, the Examiner correctly found that "Anderson teaches the
ability to tag the images as a time lapse (continual still) and to specify the
interval at which they were captured" (Answer 10; FF 2-3) and that "one
would be motivated to reproduce the time-lapse image using the same speed
at which it was captured" (Answer 10; FF 4-5). In addition, the Examiner
correctly found that in Shioji "the CPU [19] determines a still image
reproduction mode or a motion image reproduction mode" (Answer 7; FF 9)
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and that "Shioji teaches a way of playing back a sequence of captured
images at a rate at which it was captured using the unique identifier (frame
rate setting stored with the image)" (Answer 10; FF 5-7, 10).
Finally, Appellant's pre-KSR briefs assert that there is no proper
motivation to combine Anderson and Shioji. (Br. 9-10; Reply Br. 5-6.) In
particular, Appellant argues that combining Shioji with Anderson would not
contribute to the objective of Anderson "to provide 'easily identifiable image
groups of related images.'" (Br. 9; see also Reply Br. 5.) KSR forecloses this
argument. Appellant also asserts that hindsight is the only motivation for
combining Anderson and Shioji (Br. 9-10; Reply Br. 6). However,
Appellant has not shown that the Examiner engaged in impermissible
hindsight.
Accordingly, we conclude that the Examiner did not err in rejecting
claim 9 under 35 U.S.C. § 103(a).
With respect to claim 13, Appellant again argues that the motion
image of Shioji is not a "plurality of discrete images" as claimed. (Br. 12.)
As discussed with respect to claim 9, we agree with the Examiner that the
motion image of Shioji meets the claimed "plurality of discrete images"
limitation. (Answer 10; FF 5.)
Accordingly, we conclude that the Examiner did not err in rejecting
claim 13 under 35 U.S.C. § 103(a).
Regarding claim 15, Appellant argues that the limitations of claim 15
are not disclosed or suggested for the same reasons discussed with respect to
claim 9. (Br. 13; Reply Br. 6-7.) We disagree, and as discussed above with
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respect to claim 9, we find that the Examiner properly found each of the
claimed limitations to be present in the prior art.
The issue of non-functional descriptive material was not raised by the
Appellant or the Examiner, and is not necessary for a resolution of the issue
in this appeal. However, we note that several limitations of claim 15 are
highly suggestive of that doctrine of law.
Accordingly, we conclude that the Examiner did not err in rejecting
claim 15 under 35 U.S.C. § 103(a).
Appellant argues that claims 10, 12, 14, and 16 are separately
patentable because neither Anderson nor Shioji teach the respective
limitations of these claims. (Br. 11, 13-14.) However, the Examiner found
that Shioji teaches the limitations of claims 10, 14, and 16, and took Official
Notice that the limitation of claim 12 was well known in the art. (Answer 5-
6, 8.) Appellant has provided no explanation of why the Examiner's findings
are in error, nor has Appellant pointed to any evidence to indicate that the
Examiner's findings were incorrect. Therefore, we are not persuaded that
the Examiner erred in rejecting claims 10, 12, 14, and 16.
Accordingly, we conclude that the Examiner did not err in rejecting
claim 10, 12, 14, and 16 under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 9, 10, and 12-16.

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DECISION
The rejection of claims 9, 10, and 12-16 for obviousness under
35 U.S.C. § 103 is affirmed.
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

KIS

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