Ex Parte Tecu et al

Board of Patent Appeals and Interferences

Jun 25, 2007

10077500 (B.P.A.I. Jun. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte KIRK TECU and WILLIAM ROBERT HAAS
___________

Appeal 2007-0902
Application 10/077,500
Technology Center 2600
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Decided: June 25, 2007
___________

Before LEE E. BARRETT, JOSEPH L. DIXON, and JEAN R. HOMERE,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1-22. Claims 23 and 24 have been
indicated as allowed by the Examiner. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter a NEW GROUNDS OF REJECTION.

Appeal 2007-0902
Application 10/077,500

BACKGROUND
Appellants’ invention relates to a camera that uses flash illumination
to assist in a composition. An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below.
1. A camera comprising a strobe for supplying light to a scene, the
strobe flashing repeatedly throughout composition of a photograph.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Iwai US 5,198,855 Mar. 30, 1993
Umeda US 5,920,342 Jul. 6, 1999
Tanaka US 2001/0043277A1 Nov. 22, 2001
Matsui US 2002/0048457A1 Apr. 25, 2002
(filed Oct. 22, 2001)

REJECTIONS
Claims 1-3, 5-7, 11-13, and 15-19 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Tanaka in view of Matsui.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tanaka in view of Matsui and Iwai.
Claims 8-10 and 20-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tanaka in view of Matsui and Umeda.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejections, we refer
to the Examiner's Answer (mailed Aug. 28, 2006) for the reasoning in
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support of the rejections, and to Appellants’ Brief (filed Jul. 20, 2006) and
Reply Brief (filed Sep. 27, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this Appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals for the Federal
Circuit has also noted: “[w]hat the prior art teaches, whether it teaches away
from the claimed invention, and whether it motivates a combination of
teachings from different references are questions of fact.” In re Fulton, 391
F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir. 2004) (internal
citations omitted). In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness’ . . . . [H]owever, 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.” KSR Int’l v. Teleflex Inc.,
127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn,
441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006)).
Further, as pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the claim.” In
re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998). Therefore, we look to the limitations as recited and disputed in
independent claim 1. From our review of the Examiner’s rejection, we find
that the Examiner has set forth a proper initial showing, with respect to
independent claim 1, to shift the burden to Appellants. We note that the
claim limitations in independent claim 1 recite “a camera comprising a
strobe for supplying light to a scene, the strobe flashing repeatedly
throughout composition of a photograph.” Interpreting the claim in light of
Appellants’ Specification, we find that the Specification is replete with
alternative embodiments and the use of “may” thereby giving a wide range
of interpretation to the claim language. We note that the Specification at
page 4, lines 14-16, states that the “camera flashes the strobe (106) one or
more times during the time the photographer is composing a photograph,
thus providing additional light (107) to the scene.” Here, the Specification
states that one flash is sufficient, but the claim language recites “repeatedly”
which would entail at least two flashes. We interpret “repeatedly” to be
mean “on occasion” or “more than a single time” before a picture is taken.
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Appellants argue in the Reply Brief at page 2 that “composing” is
defined at page one of the Specification, yet we find the remainder of the
Specification uses “may” in describing the composing of a photograph
(Specification at pages 4 and 5). Therefore, we cannot agree that the
Specification defines or limits “composing” a photograph. Additionally, we
note that independent claim 1 does not recite that the photograph is taken.
Therefore, we find that repeated use of the flash for testing or fun by a
photographer or use of red-eye reduction flashing or infrared distance
measurements would be sufficient to meet the language of independent
claim 1 since no other steps or structure is recited in the claim language to
add context to the claimed invention.
Here, the Examiner has relied upon the teachings of Tanaka and the
use of pre-light emissions and use of the electronic view finder (EVF) for the
repeated flashing of the camera strobe. The Examiner maintains that Tanaka
shows two pre-light emissions in figure 12 (Answer 4). From our review of
figure 12, we find only one pre-light emission and one light emission
illustrated in the figure. While not expressly stated by Tanaka, we find that
it would have been obvious to one skilled in the art at the time of the
invention that if the first pre-light emission showed that the composition of
the desired image was not properly framed for the desired picture, then the
photographer would again depress the shutter button half way to get another
image on the EVF for the same desired image and continue the process until
the proper composition of the picture was achieved. Then the photographer
would depress the shutter button to the full depressed position and take the
final picture [Tanaka paragraphs 0168-0176].
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Appellants argue that there is only a single pre-light emission image
and a single flash image (Br. 5). We disagree with Appellants as discussed
above. Appellants maintain that Tanaka does not teach a strobe flashing
throughout the composition of a photograph (Br. 6). We disagree with
Appellants as discussed above. It appears that Appellants’ arguments imply
that there is a circuit which produces a sequence of strobe flashes upon an
actuation of an unclaimed element of the camera. We find arguments to
unclaimed elements to be unpersuasive.
Appellants argue that the number of flashes or pre-light emissions is
irrelevant and the independent claims are concerned with the behavior of the
flash (Reply Br. 2). We disagree with Appellants and find that the express
language of independent claim 1 merely recites that the strobe repeatedly
flashes without limitation on the number or nature of the flash so as to be
continual or in a set sequence.
Appellants argue that Matsui is concerned with pre-flash which occurs
after the composition of the photograph is complete (Br. 6). We disagree
with Appellants due to the non-specific definition of composing a
photograph and lack of any elements in the claim which would limit the
context of the limitation. We find that Examiner’s interpretation to be
reasonable. Therefore, Appellants' argument is not persuasive.
Appellants argue that the Examiner has not shown that the flash of
Tanaka is long enough for a photographer to evaluate even one live view
image (Reply Br. 2-3). We do not find this argument relevant to the claim as
recited in independent claim 1 since the length of the flash is not recited in
the claim and the evaluation by a photographer is variable and has no
relevance to the camera as recited in independent claim 1. Therefore,
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Appellants' argument is not persuasive. Since we find no argument
advanced by Appellants persuasive of an error in the Examiner’s initial
showing, we will sustain the rejection of independent claim 1, and dependent
claims 2, 3, and 5-7 which Appellants have not set forth separate arguments
for patentability.
With respect to independent claim 11, Appellants rely on the same
arguments advanced with respect to independent claim 1 which we did not
find persuasive (Br. 7). Similarly, we do not find these arguments
persuasive with respect to independent claim 11. Therefore, we will sustain
the rejection of independent claim 11 and dependent claims 11-13, and 15-
18 which Appellants have not set forth separate arguments for patentability.
With respect to independent claim 19, Appellants rely on the same
arguments advanced with respect to independent claim 1 which we did not
find persuasive (Br. 7). Similarly, we do not find these arguments
persuasive with respect to independent claim 19. Therefore, we will sustain
the rejection of independent claim 19.
With respect to dependent claims 4 and 14, 8-10, and 20-22,
Appellants rely on the arguments advanced with respect to independent
claim 1 and contend that the teachings of Iwai and Umeda do not remedy the
argued deficiencies in the base combination (Br. 8). Since we found no
deficiency in the base combination, we do not find this argument persuasive,
and we will sustain the rejection of dependent claims 4 and 14, 8-10, and 20-
22.
With this as a background, we additionally enter a New Grounds of
Rejection.
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NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we have sua
sponte set forth new grounds of rejection for claims 1, 11, and 19.
The following is a quotation of the appropriate paragraphs of
35 U.S.C. § 102 that form the basis for the rejections under this section made
in:
35 U.S.C. § 102.
A person shall be entitled to a patent unless -
(b) the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country, more
than one year prior to the date of application for patent in the United
States.
Claim 1, 11, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Szajewski (US Pat. 5,875,362).
Szajewski teaches a single use camera which uses its flash as an
emergency strobe or for continuous illumination which can be used to
illuminate something which is desired to take a flash picture in the dark.
(Szajewski claim 1, col. 1, ll. 61-63, col. 2, ll. 55-60, col. 4, ll. 7-11). From
our review of the teachings of Szajewski, we find that Szajewski teaches a
camera comprising a strobe for supplying light to a scene, the strobe flashing
repeatedly throughout composition of a photograph. Here, Szajewski
teaches the use of the light to frame a photograph with the continuous
illumination. We deem the use of the flashing to also be usable for framing
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the same photograph since this is just a desired use of the flash by the
photographer.
We leave it to the Examiner to consider the application of Szajewski
to the dependent claims and to the claims indicated as allowed by the
Examiner.
DECISION
In summary, we have sustained the Examiner’s rejection of all the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
1-22 is affirmed.
We have entered a new grounds of rejection against claims 1, 11, and
19 under 37 C.F.R. § 41.50(b).
As indicated supra, this decision contains a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b) (amended effective September 13, 2004, by
final rule notice 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat.
& Trademark Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b)
provides that “A new ground of rejection . . . shall not be considered final
for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
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proceeding will be remanded to the
examiner . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by
the Board upon the same record . . .

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
37 C.F.R. § 41.50(b)

rwk

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