Ex Parte Sheikh et al

Patent Trial and Appeal Board

Sep 29, 2016

12694222 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/694,222 01/26/2010
73576 7590
APPLE INC - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
10/03/2016
FIRST NAMED INVENTOR
Haroon Saleem Sheikh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P6930USX2
(APPL:Ol68/RAR)
5574
EXAMINER
HUR,ECE
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROON SALEEM SHEIKH and
JAMES ERIC TILTON
Appeal2015-004663
Application 12/694,222 1
Technology Center 2100
Before KRISTEN L. DROESCH, LARRY J. HUME, and JUSTIN BUSCH,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 7-13 and 22-26. Appellants have previously canceled
claims 1---6. Claims 14--21 have been withdrawn, and are not subject to this
Appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Apple Inc. App.
Br. 2.
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Application 12/694,222
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates generally to
transitioning between sequential screens of slideshow presentations." Spec.
i-f 2 ("Technical Field").
Exemplary Claims
Claims 7, 22, and 26, reproduced below, are representative of the
subject matter on appeal (emphases added to contested limitations):
7. A method for animating an object, comprising:
performing an object matching operation on an outgoing
slide and on an incoming slide, wherein the object matching
operation generates pairs of matched objects present on both the
outgoing slide and the incoming slide;
from among the pairs of matched objects, identifYing a
primary object that is present on the outgoing slide and on the
• • 1. ,:/ zncomzng sizue;
from among the pairs of matched objects, identifYing a
derivative object that is derived from the primary object and
that is present on the outgoing slide and on the incoming slide,
wherein the derivative object is matched by the object
matching operation based at least in part on being derived from
the primary object;
generating a first animation transitioning the primary
object from how it appears on the outgoing slide to how it
appears on the incoming slide;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 23, 2014); Reply Brief ("Reply Br.," filed Mar. 13, 2015); Examiner's
Answer ("Ans.," mailed Jan. 16, 2015); Final Office Action ("Final Act.,"
mailed May 15, 2014); and the original Specification ("Spec.," filed
Jan. 26, 2010).
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Application 12/694,222
generating a second animation transitioning the
derivative object from how it appears on the outgoing slide to
how it appears on the incoming slide;
displaying the first animation and the second animation
when transitioning between the outgoing slide and the incoming
slide.
22. The method of claim 7, wherein a strength of the
match for the derivative object is determined by differences in
the parameters of the derivative object as it appears in the
outgoing slide relative to how it appears in the incoming slide.
26. The method of claim 22, wherein the strength of
the match for the derivative object is a factor in the generation
of the second animation transitioning the derivative object from
how it appears on the outgoing slide to how it appears on the
incoming slide.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Sprogis US 2004/0093608 Al May 13, 2004
Pilu et al. ("Pilu") US 7,302,113 B2 Nov. 27, 2007
Boixel et al. ("Boixel") US 2009/0096812 Al Apr. 16, 2009
Davidson US 2009/0172549 Al July 2, 2009
Yu et al. ("Yu") US 7 ,898,542 B 1 Mar. 1, 2011
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Rejections on Appeal
RI. Claims 7-I I, I3, and 22-26 stand rejected under 35 U.S.C.
§ I03(a) as being obvious over the combination of Davidson, Yu, Pilu, and
Boixel. Final Act. 5-I5.3
R2. Claim I2 stands rejected under 35 U.S.C. § I03(a) as being
obvious over the combination of Davidson, Yu, Pilu, Boixel, and Sprogis.
Id. at I6-I 7.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5-I 7), we decide the
appeal of obviousness Rejection RI of claims 7-I I, and I3 on the basis of
representative claim 7; and we decide the appeal of obviousness Rejection
RI of claims 22-25 on the basis of representative claim 22. We decide the
appeal of obviousness Rejection RI of separately argued claim 26, infra.
Remaining claim I2 in Rejection R2, not argued separately, stands or
falls with independent claim 7 from which it depends. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
3 We note the Examiner separately calls out the rejections of claims 7, 8,
9-I I, I3, and 22-26, but each of these claim groups stand rejected under
§ I03 over the combination of Davidson, Yu, Pilu, and Boixel.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/694,222
We disagree with Appellants' arguments with respect to claims 7-13
and 22-26, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 7,
22, and 26 for emphasis as follows.
1. § 103 Rejection RI of Claims 7-11, and 13
Issue 1
Appellants argue (App. Br. 5-14; Reply Br. 2---6) the Examiner's
rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious over the
combination of Davidson, Yu, Pilu, and Boixel is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method for animating an object that includes, inter alia, the
steps of "performing an object matching operation on an outgoing slide and
on an incoming slide," and "identifying a derivative object ... matched by
the object matching operation based at least in part on being derived from
the primary object," as recited in claim 7?
Analysis
Appellants generally state:
[They] are of the opinion that none of the cited references,
alone or in combination, disclose or suggest the recited:
(1) object matching operation, and (2) the matching of paired
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Application 12/694,222
derivative objects based at least in part on the derivative nature
of such objects. In short, Appellants position is that none of the
cited references alone or in combination disclose or suggest the
recited object matching operation, much less a matching
operation that takes into consideration the derivative nature of
certain of the objects being matched ....
App. Br. 7. "[T]he Examiner appears to rely solely on the Pilu reference as
disclosing the respective object matching and identification operations
recited in claim 7 ... [and] Appellants will herein only discuss the Pilu
reference as it relates to the recited object matching operations." App. Br. 8.
Appellants also contend:
[I]f none of the Davidson, Yu, or Boixel references teach "an
object matching operation on an outgoing slide and on an
incoming slide, wherein the object matching operation
generates pairs of matched objects present on both the outgoing
slide and incoming slide", as conceded by the Examiner at
pages 6-7 of the Final Office Action, then it cannot be
objectively argued that the references in questions could teach
the identification of primary and derivative objects from among
the paired results of such an absent operation. Thus, the weight
of all aspects of these teachings appears to fall fully on the Pilu
reference.
App. Br. 9.
Performing an Object Matching Operation
Claim 7 recites, "performing an object matching operation on an
outgoing slide and on an incoming slide," for which the Examiner cites the
Pilu reference, as discussed below.
With respect to the teachings and suggestions of Pilu, Appellants
contend:
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[T]he Pilu reference appears to teach that two static digital
images are analyzed for regions or objects that meet the desired
quantitative degree of visual similarity and a selected pair of
similar regions are used to perform a zoom in-transition-zoom
out step to transition between the static images . . . . The Pilu
reference describes various types of transitions that may be
employed to transition between the zoomed in views of the
selected similar regions.
App. Br. 10 (citing Pilu, Figs. 3, 4; col. 3, 1. 60- col. 4, 1. 61, col. 5, 11. 1-9).
Appellants argue, however, Pilu "does not appear to describe that objects are
matched and paired in the first and second digital images (2, 9) but instead
merely that a visually similar region is identified in both images for the
purpose of performing a rostrum camera operation," and "[t]hus, even read
in the most favorable light, the Pilu reference does not disclose identifying
multiple pairs of matched objects in the sequential images or slides." App.
Br. 11.
The Examiner cites Pilu as teaching the recited object matching
operation. Ans. 3 (citing Pilu Figs. 3 and 5; col. 2, 11. 15-18,5 28-33,6 51-
57;7 col. 5, 11. 47--498). We agree with the Examiner's findings regarding
object matching. See n.5-n.8.
5 "Suitably, the determination of an extent of similarity requires a
substantial match between an object in a first image part and an object in a
second image part before a transition is effected." Pilu, col. 2, 11. 15-18.
6 "Suitably, the determination of the extent of similarity [ ] uses image
matching." Pilu, col. 2, 11. 28-29.
7 "Suitably, the rostrum path of the first image and the rostrum path of the
second image are determined whereby the first image part finish is the most
similar image part determined in a comparison of the first image rostrum
path and the second image rostrum path and the second image part start is
the corresponding most similar image part of the second image." Pilu, col.
2, 11. 51-57.
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Identifj;ing Primary and Derivative Objects
Claim 7 also recites "identifying a primary object that is present on
the outgoing slide and on the incoming slide; from among the pairs of
matched objects, identifying a derivative object that is derived from the
primary object and that is present on the outgoing slide and on the incoming
slide," in which "the derivative object is matched by the object matching
operation based at least in part on being derived from the primary object."
With respect to the teachings and suggestions of Pilu, Appellants
state, "per claim 7, the same primary object is identified as being present on
both the outgoing and incoming slide and the same derivative object is
identified as being present on both the outgoing and incoming slide." App.
Br. 13. Along these lines, Appellants contend, "the Pilu reference appears to
merely compare first and second parts of an image or images to find visually
similar image regions and to perform a transition between the two image
regions deemed most visually similar." Id. (citing Pilu, col. 1, 11. 58---67,
col. 2, 11. 1-11, 39--42, col. 3, 11. 60-65, col. 4, 11. 26-30, 41--45).
Appellants further argue:
The approach disclosed by the Pilu reference does not appear
to make any determination of equivalence, or even likely
equivalence, of the selected image regions, much less an actual
identification of the same primary object and the same
derivative object being present in the consecutive images ....
[N]o portion of the Pilu reference appears to indicate that it is a
goal or a feature of the Rostrum technique that the same object
will be selected in consecutive images, even if present in both.
Instead, selection of transition regions is based on finding the
8 "Embodiments of the present invention can, therefore, be used to produce
slide shows from a plurality of static digital images." Pilu, col. 5, 11. 4 7--49.
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Id.
most visually similar regions of the images, with no apparent
weight or consideration given to the actual identity of any
objects within the images.
In response, the Examiner notes Pilu was not relied upon for teaching
or suggesting the claimed derivative relationship, particularly a relationship
derived from the primary object. Ans. 3. Instead, the Examiner reiterates
that the rejection is for obviousness under § 103 in which the Boixel
reference, in Figures 13 through 15, particularly Figure 14, was relied upon
for teaching primary and derivative objects 1305 and 1405.9 Id. at 3--4.
Contrary to Appellants' contentions, the Examiner finds "Pilu discloses the
claimed aspect of comparison and matching, therefore [the] comparison
checks for differences and equivalency." Id. at 4; Pilu, Abstract; see n.5-
n.8, supra.
We agree with the Examiner's findings because, on this record,
Appellants have not pointed to any evidence of record that would persuade
us that the Examiner's interpretation is overly broad, unreasonable, or
inconsistent with Appellants' Specification. 10
9 Because the Examiner rejects the claims as obvious over the combined
teachings of Davidson, Yu, Pilu, and Boixel, the test for obviousness is not
what the references show individually but what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
10 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 7, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 7, and grouped
claims 8-11 and 13 which fall therewith. See Claim Grouping, supra. 11
2. § 103 Rejection RI of Claims 22-25
Issue 2
Appellants argue (App. Br. 14--15; Reply Br. 6) the Examiner's
rejection of claim 22 under 35 U.S.C. § 103(a) as being obvious over the
meaning; however, a patentee must clearly express that intent in the written
description.").
11 In the event of further prosecution of this application, we direct the
Examiner's attention to the question of whether the claims are patent-eligible
under 35 U.S.C. § 101. Although Appellants may have intended the
methods of claims 7-13 and 22-26 be carried out as computer-implemented
methods, there is not even a nominal recitation of a computer in any of the
claims on appeal, such that a question arises as to whether a person would
also be capable of performing the acts of the claimed method as mental
steps, or with the aid of pen and paper. See Cy her Source Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson."). Our
reviewing court further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373. We leave further
consideration of this § 101 issue to the Examiner. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) 1213.02.
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combination of Davidson, Yu, Pilu, and Boixel is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 7, "wherein a strength of the match for the
derivative object is determined by differences in the parameters of the
derivative object as it appears in the outgoing slide relative to how it appears
in the incoming slide," as recited in claim 22?
Pilu,
Analysis
Appellants contend, with respect to the teachings and suggestions of
[ o ]nee a "match" of two regions in the Pilu reference is
determined (i.e., once the most visually similar image regions
are identified), there is no indication that any estimation or
valuation of the "strength" of such a match is estimated
quantitatively or qualitatively ... there is no teaching in Pilu
that a separate strength of the match is separately determined
for these visually similar regions.
App. Br. 15.
In response, the Examiner finds, and we agree, Pilu's "extent of
similarities" teaches or at least suggests the claimed "strength of the match."
Ans. 4 (citing Pilu Abstract; col. 2, 11. 15-18, 28-33, 51-57; col. 5, 11. 47-
49; and Figs. 3 and 5 (illustrating comparison of first and second images)).
Again, Appellants have not pointed to any evidence of record that would
preclude the Examiner's broad but reasonable interpretation.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
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disputed limitation of claim 22, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of claim 22, and grouped claims 23-25
which fall therewith. See Claim Grouping, supra.
3. § 103 Rejection RI of Claim 26
Issue 3
Appellants argue (App. Br. 15-17; Reply Br. 7-8) the Examiner's
rejection of claim 26 under 35 U.S.C. § 103(a) as being obvious over the
combination of Davidson, Yu, Pilu, and Boixel is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 22, "wherein the strength of the match for
the derivative object is a factor in the generation of the second animation
transitioning the derivative object from how it appears on the outgoing slide
to how it appears on the incoming slide," as recited in claim 26?
Analysis
Appellants point out that claim 26 depends from claim 22, and repeat
their argument that Pilu does not disclose the strength of match of claim 22,
but additionally contend, with respect to claim 26:
[E]ven if the Pilu reference were found to disclose such a
determination of a strength of a match based on the extent to
which two regions are visually similar, the Pilu reference does
not teach or otherwise disclose that the transitional effect 32
employed is determined by the extent of similarity of the image
regions being transitioned between.
App. Br. 16.
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Appellants admit "similarity of two image regions [in Pilu] may
determine whether those regions are selected to implement the transition,"
but argue "the manner in which the transition is implemented (e.g., the
animation) is in no way affected or determined by the similarity of the two
regions." Id. "[T]his extent of image similarity appears to be only relevant
in selecting the image regions to which the transition effect will be applied."
App. Br. 16-17 (citations omitted).
In response, the Examiner finds, however, and we agree, "Pilu
discloses the claimed aspect of transition in FI Gs. 3, 5, wherein [a] first item
and second item [are] compared. Additionally, Pilu discloses the concept of
[a] slideshow as well." Ans. 5 (citing Pilu, col. 2, 11. 51-57, col. 5, 11. 47--49).
We agree because, for example, Pilu teaches,
[ s ]uitably, the rostrum path of the first image and the rostrum
path of the second image are determined whereby the first
image part finish is the most similar image part determined in a
comparison of the first image rostrum path and the second
image rostrum path and the second image part start is the
corresponding most similar image part of the second image.
Pilu, col. 2, 11. 51-57.
In further support of the Examiner's position, we find this disclosure
teaches or at least suggests the contested limitation of claim 26, i.e.,
"wherein the strength of the match for the derivative object is a factor" in
how the derivative object appears (emphasis added). We find Appellants
have chosen to use broad claim language, and have not pointed to any
evidence of record that would quantify or otherwise limit the claim language
with respect to the extent to which either the "strength" of or how much of "a
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factor" the match is "in the generation of the second animation transition[],"
as claimed. 12
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 26, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of claim 26.
3. § 103 Rejection R2 of Claim 12
In view of the lack of any substantive or separate arguments directed
to obviousness rejection R2 of claim 12 under§ 103 (see App. Br. 4 et seq.),
we sustain the Examiner's rejection of this claim. Arguments not made are
waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
12 Because the applicant has the opportunity to amend claims during
prosecution, giving a claim its broadest reasonable interpretation will reduce
the possibility that the claim, once issued, will be interpreted more broadly
than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) ("During patent examination the
pending claims must be interpreted as broadly as their terms reasonably
allow.").
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 7-13 and 22-26 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 7-13 and 22-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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