Ex Parte Sayers et al

Board of Patent Appeals and Interferences

Nov 9, 2011

10192429 (B.P.A.I. Nov. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CRAIG P. SAYERS and
EVAN R. KIRSHENBAUM
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Appeal 2009-011713
Application 10/192,429
Technology Center 2600
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Before ROBERT E. NAPPI, THOMAS S. HAHN, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-30:
(1) Claims 1-4, 7, 18, 25, and 29-30 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Thompson (US 6,650,831 B1; issued Nov.
18, 2003) in view of Anderson et al. (US 6,567,122 B1; issued May
20, 2003), hereinafter Anderson ‘122.1
(2) Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as obvious
over Thompson in view of Anderson ‘122, Chiang (US 6,809,759 B1;
issued Oct. 26, 2004) and Narayanaswami et al. (US 7,084,903 B2;
issued Aug. 1, 2006).
(3) Claims 6 and 28 stand rejected under 35 U.S.C. § 103(a) as obvious
over Thompson in view of Chiang.
(4) Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson, Chiang, Watanabe et al. (US
2002/0039479 A1; published Apr. 4, 2002), and Mottur et al. (US
2002/0018124 A1; published Feb. 14, 2002).

1 The Examiner inconsistently states (Ans. 4) that these claims are rejected
under 35 U.S.C. § 102(e) and alternatively under 35 U.S.C. § 103(a). We
understand the assertion that the claims are rejected under 35 U.S.C.
§ 102(e) to be a clerical error (see Non-Final Rejection 3, mailed Mar. 13,
2006 (wherein the claims were rejected as anticipated by Thompson alone);
cf. Final Rejection 5, mailed Sep. 8, 2006 (wherein the rejection of the
amended claims was changed to be based on the combination of Thompson
and Anderson ‘122)).
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(5) Claims 8, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
obvious over Thompson in view of Anderson and Anderson (US
6,137,534; issued Oct. 24, 2000), hereinafter Anderson ‘534.
(6) Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson in view of Frey et al. (US 6,369,908
B1; issued Apr. 9, 2002).
(7) Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over Thompson in view of Frey.
(8) Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Frey, Dietz (US 6,591,068 B1; issued July 8,
2003, Alonso et al. (US 6,445,293 B1; issued Sep. 3, 2002) and
Taniguchi et al. (US 4,389,109; issued June 21, 1983).
(9) Claim 15 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Frey and Brennan (US 5,587,740; issued Dec.
24, 1996).
(10) Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson and Lambert (US 6,750,904 B1;
issued June 15, 2004).
(11) Claim 17 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson and Hirao et al. (US 4,621,292; issued
Nov. 4, 1986).
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(12) Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson and Miyazawa (US 6,816,190 B1;
issued Nov. 9, 2004).
(13) Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson and Windle (US 6,606,117 B1; issued
Aug. 12, 2003).
(14) Claim 23 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson, Bates et al. (US 2002/0080256 A1;
published Jun. 27, 2002) and Cohen et al. (US 6,963,358 B2; issued
Nov. 8, 2005).
(15) Claim 24 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Anderson, Bates, Cohen, and Steinberg et al.
(US 5,862,217; issued Jan. 19, 1999).
(16) Claim 26 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Chiang and Bolle et al. (US 6,301,440 B1;
issued Oct. 9, 2001).
(17) Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious over
Thompson in view of Chiang, Watanabe, and Mottur.
We affirm.

CONTENTIONS AND ANALYSIS
Appellants’ claims are directed to an Internet-enabled photographing
system that includes a photographing module, a code generator that
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associates a code with the image, an output module that provides the user
with the associated code, and a server that allows external access to the
image when presented the associated code (Abstract).
CLAIMS 1-5, 7-9, 18-23, 25, 26, 29, AND 30
Independent claim 1 is representative of the claims listed above:2
1. An Internet-enabled photographing system, comprising:
a photographing module that, when activated, records an
image;
a code generator that generates and associates an
identifying code with the image;
an output module that notifies a user of the
photographing system the identifying code;
a server that allows external access to the image with the
identifying code via the Internet; and
an enclosure containing the photographing module, code
generator, output module, and server.
Appellants set forth two theories for why the Examiner’s proposed
combination of Thompson and Anderson ‘122 is improper. Appellants
contend the proposed combination is lacking motivation (App. Br. 5-6), and

2 Appellants argue claims 1-4, 7, 18-19, 25-26, 29, and 30 together as a single
group (App. Br. 5-9). Appellants argue the following claims under separate
headings: dependent claims 5 and 9 (App. Br. 11); claims 8, 21, and 22
(App. Br. 13); claim 20 (App. Br. 16); and 23 (id.). However, Appellants
solely argue the patentability of these claims based upon the patentability of
claim 1 (App. Br. 11, 13, and 16). We therefore treat claim 1 as
representative of claims 1-5, 7-9, 18-23, 25, 26, 29, and 30. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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they contend the modification would significantly change Thompson’s
principle of operation (App. Br. 7-8).
The Examiner responds by finding that the combination provides
Thompson with an “inexpensive method for making remotely accessible
digital cameras widely available” (Ans. 23 (citing Anderson ‘122, col. 5, ll.
56-60)). The Examiner additionally finds that the principle of operation of
Thompson is not frustrated by the combination with Anderson ‘122.
Specifically, the combination would still capture images, provide access
information, and allow users to access the images over the Internet (Ans.
22). These functions are all core to the operation of the Thompson system
(Thompson; col. 2, ll. 13-22).
For the reasons above, Appellants’ arguments of a lack of motivation
and a changed principle of operation are not persuasive. Accordingly, we
will sustain the Examiner’s rejection of representative claim 1, as well as of
claims 2-5, 7-9, 18-23, 25-26, and 29-30, which are grouped with claim 1.
CLAIMS 6 AND 28
Appellants traverse the proposed combination of Thompson and
Chiang for lacking proper motivation (App. Br. 11-12). Appellants
additionally argue that “there is . . . no indication or suggestion that
[Chiang’s beacon] is able to use wireless communication technology to
communicate at least one of an identifying code of a captured image and an
address of a server that allows external access to the image,” as required by
claim 6 (App. Br. 12) (emphasis omitted).
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In response, The Examiner clarifies that the proposed combination is
the inclusion of Chiang’s wireless display with Thompson’s camera (Ans.
25). We understand the Examiner’s position to be (1) Thompson displays
the identifying code and server address via electronic displays; (2) Chiang
teaches that any information that is to be displayed may be communicated to
a wireless display via a wireless communication link; and (3) the Examiner
proposes that Chiang’s teachings be combined such that Thompson’s
information regarding the identifying code and server address is
communicated to, and displayed on, a wireless display, as taught by Chiang.
The Examiner provides a motivation of increased functionality in allowing
for remote control of camera operations (Ans. 7).
Appellants have not set forth any persuasive evidence for why this
position would be unreasonable. We will therefore sustain the rejection of
claim 6, as well as the rejection of dependent claim 28, which is not
separately argued.
CLAIMS 10, 11, 16, 17, 24, AND 27
In reaching the conclusion that claims 10, 11, 16, 17, 24, and 27 are
obvious, the Examiner initially relied on official notice of facts that are well
known (Final Rejection 5-18, mailed Sep. 8, 2006). Appellants contend the
rejections of these claims are improper because the Examiner never cited to
any objective evidence to support the taking of official notice (App. Br. 9-
10, 12-13, 16).
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This argument is not persuasive. During prosecution before the
Examiner, Appellants challenged the taking of official notice only with
respect to claims 16 and 17 (Reply to Office Action 15-16, filed June 16,
2006). In response to Appellants’ challenge, the Examiner cited references
to support those facts noticed within the challenged claims (Final Rejection
4). With respect to claims 10, 11, 24, and 27, Appellants challenged the
Examiner’s taking of official notice for the first time during the appeal (App.
Br. 12-13, 16-17). In response, the Examiner cited additional references to
support the further facts noticed within these other claims (Ans. 8-9, 11, 14-
16, 18-21). Appellants have not alleged that any of the cited references fails
to teach any of the facts maintained by the Examiner. As such, Appellants
have not persuaded us that the Examiner failed to establish a prima facie
case of obviousness for each of the listed claims. Accordingly, we will
sustain the Examiner’s rejections of claims 10-11, 16-17, 24, and 27.
CLAIMS 12-15
Similar to claim 1, independent claim 12 recites a photographing
module, a code generator, an output module, and a server. Claim 12
additionally recites an activation detector coupled to the photographing
module, the activation detector comprising a presence detector and a
countdown timer. We understand the Examiner’s position to be (1) Fry’s
credit card swipe sets in motion steps that result in a countdown timer being
started (Ans. 12-13, 26-27; see also, Frey, Fig. 2); and (2) Fry’s detection of
the credit card swipe, either alone or in combination with the other steps
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leading to the activation of the countdown timer, correspond to the claimed
activation detector.
Appellants do not dispute the Examiner’s finding that the combination
of Thompson and Frey meets the claim limitations (see App. Br. 14-15).
Rather, Appellants traverse the rejection on the grounds that there is no
proper motivation to include Frey’s credit card scanner and timer in
Thompson’s system (id.). The Examiner responds that the rationale for
including the credit card scanner is to enable payment collection and that the
motivation to include the timer is to indicate to the subject the time
remaining until the photo is taken (Ans. 27). As such, Appellants are
incorrect in asserting that the Examiner has failed to provide any rationale to
combine Frey’s teachings with Thompson’s teachings. Furthermore,
Appellants do not explain why this rationale is improper.
For the above reasons, we find the Appellants’ arguments
unpersuasive. We will therefore sustain the Examiner’s rejection of claim
12, as well as the rejections of dependent claims 13-15, which were not
separately argued.

DECISION
The Examiner’s decision rejecting claims 1-30 is affirmed.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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