Ex Parte Simon

Board of Patent Appeals and Interferences

Feb 20, 2003

08971097 (B.P.A.I. Feb. 20, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD A. SIMON
____________
Appeal No. 2001-1008
Application No. 08/971,097
____________
ON BRIEF
____________
Before BARRETT, FLEMING, and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 13, all the claims pending in the present
application. Claims 14 and 15 have been canceled. We note that
proposed claims 16 through 18, filed by an amendment after final,
were not entered, and thereby are not present in the application.
The invention relates to a photobooth that produces special
artistic effects in an image using digital image processing. See
page 1 of Appellant's specification.
Appeal No. 2001-1008
Application No. 08/971,097
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The only independent claim present in the application, claim
1, is reproduced as follows:
1. A photobooth, comprising:
an electronic camera for capturing and producing a digital
image of a customer;
an image processing computer for processing the digital
image to apply a special effect to the image;
a display for displaying the processed digital image to the
customer;
a printer for printing the processed digital image; and
means for producing a motion image display simulating the
sequential production of the processed image and displaying the
motion image while the image is being processed and printed.
References
The references relied on by the Examiner are as follows:
Wolfe et al. (Wolfe) 5,446,515 Aug. 29, 1995
Bulman 5,623,587 Apr. 22, 1997
(filed Jun. 12, 1995)
Bishop 5,810,599 Sep. 22, 1998
(filed Jan. 26, 1994)
Nishimura GB 2 262 013 A Feb. 6, 1993
Rejections at Issue
Claims 1 through 3 and 7 through 12 stand rejected under
35 U.S.C. § 103 as being unpatentable over Wolfe and Nishimura.
Claims 4 through 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wolfe, Nishimura and Bulman.
Appeal No. 2001-1008
Application No. 08/971,097
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Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Wolfe, Nishimura and Bishop.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and answer for the
respective details thereof.
OPINION
With full consideration being given the subject matter on
appeal, the Examiner's rejection and the arguments of Appellant
and the Examiner, for the reasons stated infra, we reverse the
Examiner's rejection of claims 1 through 13 under 35 U.S.C.
§ 103.
We first will address the rejection of claims 1 through 3
and 7 through 12 under 35 U.S.C. § 103 as being unpatentable over
Wolfe and Nishimura. In rejecting claims under 35 U.S.C. § 103,
the Examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing that some objective
teaching in the prior art or knowledge generally available to one
of ordinary skill in the art suggests the claimed subject matter.
Appeal No. 2001-1008
Application No. 08/971,097
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In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and arguments." In re
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must
not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency's conclusion."
In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002). With these principles in mind, we commence review of the
pertinent evidence and arguments of Appellant and Examiner.
Appellant argues that there is no suggestion in either Wolfe
or Nishimura that teaches or suggest entertaining the customer
while their images are being printed. In particular, the
Appellant argues that they recognize a problem of boredom while
an image is being processed by a photobooth. The Appellant
Appeal No. 2001-1008
Application No. 08/971,097
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argues that the Examiner has used Appellant's own disclosure to
provide the motivation for the combination. The Appellant argues
that the Examiner is using classic hindsight reconstruction and
it is improper for making an obvious rejection.
When determining obviousness, "the [E]xaminer can satisfy
the burden of showing obviousness of the combination 'only by
showing some objective teaching in the prior art or individual to
combine the relevant teachings of the references.'" In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002),
citing In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). "Board conclusory statements regarding the
teaching of multiple references, standing alone, are not
'evidence.'" In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617. "Mere denials and conclusory statements, however, are not
sufficient to establish a genuine issue of material fact."
Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617, citing McElmurry
v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993).
In addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
Appeal No. 2001-1008
Application No. 08/971,097
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1614, 1617-19 (Fed. Cir. 1999). Our reviewing court states
further that the "factual question of motivation is material to
patentability, and could not be resolved on subjective belief and
unknown authority." In re Lee, 277 F.3d at 1344, 61 USPQ2d at
1434 (Fed. Cir. 2002). It is improper, in determining whether a
person of ordinary skill would have been led to this combination
of references, simply to "[use] that which the inventor taught
against its teacher." W.L. Gore v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983).
We fail to find that the Examiner has provided the required
evidentially findings to support the Examiner's combination of
the prior art references of Wolfe and Nishimura. The Examiner
has instead provided conclusory statements and has not
established genuine issues of material fact. We note in the
Examiner's answer, the Examiner has provided reasons for the
combination but those reasons are only a repeat of what the
Appellant's disclosure has stated. The Examiner has not shown
that these reasons are established in the prior art.
The Examiner responds to the Appellant's arguments by
stating that it is proper for the Examiner to take in account the
knowledge which is within the level of ordinary skill in the art
at the time the invention is made. When the Federal Circuit was
Appeal No. 2001-1008
Application No. 08/971,097
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presented a similar argument, the Court responded that there is
no precedence that holds that objective analysis, proper
authority, and reasoned findings can be omitted from Board
decisions. See In re Lee, 277 F.3d at 1344, 61 USPQ2d at 1435.
Therefore, we will not sustain the Examiner's rejection of claims
1 through 3, and 7 through 12 as being unpatentable under 35
U.S.C. § 103.
In regard to the rejection of claims 4 through 6 and 13
under 35 U.S.C. § 103, we note that the Examiner relies on the
same reason to combine Wolfe and Nishimura. Therefore, for the
same reasons as above, we will not sustain this rejection.
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Application No. 08/971,097
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In view of the foregoing, we have not sustained the
rejection of claims 1 through 13 under 35 U.S.C. § 103.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF/lbg
Appeal No. 2001-1008
Application No. 08/971,097
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THOMAS H CLOSE
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
ROCHESTER NY 14650-2201