Ex Parte Sawachi

Board of Patent Appeals and Interferences

Aug 13, 2010

10183148 (B.P.A.I. Aug. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YOUICHI SAWACHI
____________________

Appeal 2009-012762
Application 10/183,1481
Technology Center 2600
____________________

Before ROBERT E. NAPPI, MARC S. HOFF, and DEBRA K. STEPHENS,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Fujifilm Corporation.
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 2009-012762
Application 10/183,148

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, 4, 6, 8-10, 12, 14, 16-19, and 21-27.3 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
Appellant’s invention concerns a digital camera connectable to a
mobile electronic device capable of being driven by a battery. The digital
camera includes a first battery, a connecting unit that electrically connects to
the mobile electronic device, a power input terminal that receives power
from a second battery mounted in the mobile electronic device, and a power
supply selection device that operates to supply power from one of the first
battery and the second battery (Spec. 1).
Claims 1 and 19 are exemplary of the claims on appeal:
1. A digital camera connectable to a mobile
electronic communication device capable of being driven by a
battery, the digital camera comprising:
a first battery which provides a supply source of power
necessary to operate the digital camera;
a connecting unit which electrically connects to the
mobile electronic communication device;
a power input terminal which receives power supplied
from a second battery mounted in the mobile electronic
communication device connected via the connecting unit; and
a power supply selection device which selectively
switches a power supply such that power is supplied from one
of the first battery and the second battery.

3 Claims 3, 5, 7, 11, 13, 15, and 20 stand withdrawn from consideration as
being directed to a non-elected invention.
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19. A digital camera connectable to a mobile
electronic communication device capable of being driven by a
battery, the digital camera comprising:
a battery which provides a supply source of power
necessary to operate the digital camera;
a connecting unit which electrically connects to the
mobile electronic communication device; and
a power output terminal capable of supplying power from
the battery mounted in the digital camera to the mobile
electronic communication device connected via the connecting
unit,
wherein the mobile electronic communication device
comprises user-operable keys and is physically separately
located from the digital camera.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Kishimoto US 5,895,128 Apr. 20, 1999
Takashi JP 2000-338579 Dec. 8, 2000
Wang US 6,339,264 B1 Jan. 15, 2002
Schaeffer US 2002/0013161 A1 Jan. 31, 2002
Pappalardo US 6,369,561 B1 Apr. 9, 2002
Ishikawa US 2002/0158962 A1 Oct. 31, 2002
Takahashi US 6,580,460 B1 Jun. 17, 2003
Holberg US 6,720,999 B1 Apr. 13, 2004
Shimizu US 6,753,921 B1 Jun. 22, 2004
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimizu in view of Ishikawa.
Claims 1, 2, 4, 8-10, 12, and 16-18 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Takahashi in view of Ishikawa.
Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi in view of Ishikawa and Wang.
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Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takashi in view of Kishimoto.
Claims 21-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi in view of Ishikawa and Schaeffer.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi in view of Ishikawa, Schaeffer, and
Pappalardo.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takahashi in view of Ishikawa, Schaeffer, and Holberg.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed January 17, 2008), the Reply Brief (“Reply Br.,” filed
June 10, 2008), and the Examiner’s Answer (“Ans.,” mailed April 16, 2008)
for their respective details.

ISSUES
With respect to the § 103 rejection of claim 1 over Shimizu in view of
Ishikawa, Appellant argues that Shimizu does not teach a second battery
mounted in the mobile electronic device that supplies power to the input of
the camera (App. Br. 11), and that Ishikawa does not supply the teaching
missing from Shimizu, because Ishikawa’s battery does not supply power
externally (App. Br. 11-12).
With respect to the § 103 rejection over Takahashi in view of
Ishikawa, Appellant argues that Takahashi does not teach a second battery
mounted in a mobile electronic communications device that supplies power
to the input of the camera (App. Br. 13), and that Ishikawa does not make up
for the deficiency of Takahashi because Ishikawa’s printer battery does not
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supply power externally (App. Br. 14). Appellant further argues that there is
no likelihood of success of powering a printer from a camera, because
printers require more power than cameras (Reply Br. 3-4).
With respect to claim 2, Appellant argues that Takahashi teaches
power supply to the camera from the printer, but does not disclose that the
camera can supply power to an external device (App. Br. 14).
With respect to claim 19, Appellant argues that the combination of
Takashi and Kishimoto does not teach a power output terminal capable of
supplying power from the battery in the camera to the mobile electronic
communication device, because Takashi’s camera is capable of supplying
power but Kishimoto’s flash unit is not supplied with power from a camera
(App. Br. 16). Appellant further argues that the electronic flash of Kishimoto
is not a mobile electronic device (Reply Br. 4-5).
Appellant’s contentions present us with the following issues:
1. Does the combination of Shimizu and Ishikawa suggest a digital
camera having a power input terminal which receives power supplied from a
second battery mounted in a mobile electronic communication device?
2. Does the combination of Takahashi and Ishikawa suggest a digital
camera having a power input terminal which receives power supplied from a
second battery mounted in a mobile electronic communication device?
3. Does the combination of Takahashi and Ishikawa suggest a power
output terminal capable of supplying power from the first battery (in the
camera) to the mobile electronic communication device?
4. Does the combination of Takashi and Kishimoto suggest a power
output terminal capable of supplying power from a battery mounted in a
digital camera to a mobile electronic communication device?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Shimizu
1. Shimizu teaches a digital camera including communications
contact 43 capable of receiving power externally (Fig. 2; col. 5, ll. 62-65).
Takahashi
2. Takahashi teaches a printer 118 including power supply unit
113, which is connected to camera 117 through power management unit 119
(Fig. 1).
3. Power is supplied from printer 118 to camera 117 when the
power supply capacity from the printer is large enough to operate the camera
(col. 3, ll. 47-53).
4. Takahashi teaches that the power capacity supplied from printer
118 is measured, and if the power supply capacity is sufficient to operate
camera 117, camera power is switched from internal battery 109 to the
printer’s power supply (col. 3, ll. 43-59).
Ishikawa
5. Ishikawa teaches a mobile electronic communication device
(i.e., a printer) having a battery mounted therein (Fig. 1; ¶ 0028).
Takashi
6. Takashi teaches a power output terminal (Fig. 1: 13, 15)
capable of supplying power from the battery mounted in the digital camera
to the mobile electronic communication device (Fig. 1: flash 20).

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PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[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. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of invention a known problem for which there was
an obvious solution encompassed by the patent’s claims.” Id. at 419-20.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id.

ANALYSIS
§ 103 REJECTION OF CLAIM 1 OVER SHIMIZU IN VIEW OF ISHIKAWA
We are not persuaded by Appellant’s arguments supra that the
Examiner erred.
We agree with the Examiner’s finding that Shimizu teaches a digital
camera including communications contact 43 capable of receiving power
externally (FF 1). We further agree with the Examiner that Ishikawa teaches
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a mobile electronic communication device (i.e., a printer) having a battery
mounted therein (FF 5).
We conclude that it would have been obvious to modify Shimizu to
include connection to the battery taught by Ishikawa, to enable the supply of
power from the “second battery” in Ishikawa to the digital camera of
Shimizu, enabling the digital camera to continue operation even when its
own battery is discharged. Appellant’s argument that Ishikawa does not
teach external supply of power does not negate the Examiner’s conclusion of
obviousness, because one need not bodily incorporate the teachings of
Ishikawa into the system of Shimizu. Rather, Shimizu suggests that power
may be supplied to the camera through communications contact 43, and
Ishikawa suggests that a mobile electronic communication device may
contain the second battery from which power may be supplied.
Appellant has not established that the Examiner erred in rejecting
claim 1. Accordingly, we will sustain the Examiner’s § 103 rejection of
claim 1 over Shimizu in view of Ishikawa.
§ 103 REJECTION OF CLAIMS 1, 4, 8-10, 12, AND 16-18 OVER TAKAHASHI IN
VIEW OF ISHIKAWA
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s arguments, summarized supra, are not persuasive. While
Takahashi’s image output device (printer) 118 may not disclose a battery,
printer 118 includes power supply unit 113, which is connected to camera
117 through power management unit 119 (FF 2). Power is supplied from
printer 118 to camera 117 when the power supply capacity from the printer
is large enough to operate the camera (FF 3). The Examiner relies on
Ishikawa for its teaching of a mobile electronic communication device (a
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printer) containing a battery (FF 5). We concur with the Examiner’s
conclusion that it would have been obvious to modify Takahashi to replace
the power supply unit 113 of Takahashi with the printer battery taught by
Ishikawa, for the purpose of permitting a portable printer to print anywhere,
and avoid disrupting communication with a camera having low battery
power (Ans. 7).
Appellant’s likelihood of success argument has not been considered.
Appellant has not explained why, nor is it apparent that, these arguments
were necessitated by a new point in the Answer or any other circumstance
constituting “good cause” for its belated presentation. See Ex parte Borden,
93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”4) (absent a showing
of good cause, Board not required to address argument in Reply Brief that
could have been presented in the principal Brief).
Appellant has not shown error in the Examiner’s rejection of
representative claim 1. Thus, we will sustain the § 103 rejection of claims 1,
4, 8-10, 12, and 16-18.
§ 103 REJECTION OF CLAIM 2 OVER TAKAHASHI IN VIEW OF ISHIKAWA
Claim 2 requires a power output terminal capable of supplying power
from the first battery (in the camera) to the mobile electronic communication
device. The Examiner relies on Takahashi for a teaching of an IEEE1394
connection between the camera and the printer (Ans. 23). According to the
Examiner, Takahashi thus teaches supplying power from the camera to the
printer (id.).

4 The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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We do not agree with the Examiner’s finding. Takahashi’s description
of power management unit 108 teaches that the power capacity supplied
from printer 118 is measured, and if the power supply capacity is sufficient
to operate camera 117, camera power is switched from internal battery 109
to the printer’s power supply (FF 4). Contrary to the Examiner’s finding,
however, Takahashi never discloses the ability to supply power from the
camera to the printer.
Because the combination of Takahashi and Ishikawa fails to teach all
the limitations of claim 2, we will not sustain the Examiner’s § 103 rejection
of claim 2.
§ 103 REJECTION OF CLAIMS 6 AND 14 OVER TAKAHASHI IN VIEW OF WANG
Appellant does not present separate argument for the patentability of
these claims, stating only that Wang does not cure the deficiencies of the
combination of Takahashi and Ishikawa that were asserted with respect to
parent claim 1. Because we sustain supra the obviousness of claim 1 over
the combination of Takahashi and Ishikawa, however, we will also sustain
the § 103 rejection of claims 6 and 14 over the combination of Takahashi
and Wang, for the same reasons.
§ 103 REJECTION OF CLAIM 19 OVER TAKASHI IN VIEW OF KISHIMOTO
We are not persuaded by Appellant’s arguments, which are outlined
supra. The Examiner relied on Takashi, rather than Kishimoto, to teach that
power is received by the mobile electronic communication device from the
camera (Ans. 12, 25). The Examiner relied on Kishimoto to teach only the
recited user-operable keys and physical separation from the camera (id.). We
agree with the Examiner’s finding that Takashi teaches a power output
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terminal capable of supplying power from the battery mounted in the digital
camera to the mobile electronic communication device (FF 6).
Appellant’s argument that Kishimoto’s flash is not a mobile electronic
device is not entitled to consideration because the argument was not first
presented until the Reply Brief. See Borden, 93 USPQ2d at 1473-74.
Appellant has not demonstrated that the Examiner erred in rejecting
claim 19 over the combination of Takashi and Kishimoto. Accordingly, we
will sustain the § 103 rejection of claim 19.
§ 103 REJECTIONS OF CLAIMS 21-27 OVER TAKAHASHI IN VIEW OF
COMBINATIONS OF ISHIKAWA, SCHAEFFER, PAPPALARDO, AND HOLBERG
Appellant does not present separate argument for the patentability of
these claims, stating only that one or more of Schaeffer, Pappalardo, and
Holberg do not cure the deficiencies of the combination of Takahashi and
Ishikawa that were asserted with respect to claim 1. Because we sustain
supra the obviousness of claim 1 over the combination of Takahashi and
Ishikawa, however, we will also sustain the § 103 rejection of claims 21-27
over the combination of Takahashi, Ishikawa, and one or more of Schaeffer,
Pappalardo, and Holberg, for the same reasons.

CONCLUSIONS
1. The combination of Shimizu and Ishikawa suggests a digital
camera having a power input terminal which receives power supplied from a
second battery mounted in a mobile electronic communication device.
2. The combination of Takahashi and Ishikawa suggests a digital
camera having a power input terminal which receives power supplied from a
second battery mounted in a mobile electronic communication device.
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3. The combination of Takahashi and Ishikawa does not suggest a
power output terminal capable of supplying power from the first battery (in
the camera) to the mobile electronic communication device.
4. The combination of Takashi and Kishimoto suggests a power
output terminal capable of supplying power from a battery mounted in a
digital camera to a mobile electronic communication device.

ORDER
The Examiner’s rejection of claims 1, 4, 6, 8-10, 12, 14, 16-19, and
21-27 is affirmed. The Examiner’s rejection of claim 2 is reversed.
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

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