Ex Parte Tretter et al

Board of Patent Appeals and Interferences

Jan 12, 2009

10328786 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL R. TRETTER and D. AMNON SILVERSTEIN
____________

Appeal 2009-0068
Application 10/328,786
Technology Center 2600
____________

Decided: January 12, 2009
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 6-11, and 14-18.1 We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

1 While no amendment appears in the record canceling claims 3-5, 12, 13,
19, and 20, both the Appellants (Br. 2) and the Examiner (Ans. 2) agree
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STATEMENT OF THE CASE
Appellants invented a camera and method of operating the camera.
The camera and method offer the user two modes of operation – still and
video image recording modes. A first sensor is used for recording video
images, and a second sensor is used for recording still images. The camera
and method also include an optical path exclusive to either the first or
second sensor depending on the selected mode.2 Independent claim 1 is
reproduced below:

1. A method of operating a camera comprising the steps
of:

a) selecting one of a still and a video image recording
mode; and

b) communicating an optical signal from a common
viewpoint to an exclusive selected one of a first sensor for
recording video and a second sensor for recording still images
in accordance with the selected recording mode.

The Examiner relies upon the following as evidence in support of the
rejection:
Kubo US 6,639,626 B1 Oct. 28, 2003
(filed Jun. 17, 1999)
Lee US 6,933,974 B2 Aug. 23, 2005
(filed Jun. 1, 2001)

these claims are canceled. Alternatively, these claims have been withdrawn
from consideration. See Office Action mailed May 1, 2006.
2 See generally Spec. 3:5-24, 5:25-6:2, and 8:26-9:7.
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1. Claims 1, 2, 6, 7, 9-11, 14, and 16-18 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Kubo (Ans. 3-4).
2. Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kubo and Lee (Ans. 5).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments, which Appellants could have made but did not
make in the Brief, have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ANTICIPATION REJECTION
Regarding representative independent claim 1,4 the Examiner finds
that Kubo discloses all the limitations in claim 1, including the step of
selecting one of a still and a video image recording mode (Ans. 3).
Appellants argue that: (1) Kubo has only a still image recording mode; (2)
Kubo’s preview mode is not a video image recording mode as it does not
record multiple images; and (3) Kubo does not disclose the optical signal is
exclusive to a first or second sensor in accordance with the selected
recording mode (Br. 5-10).

3 Throughout this opinion, we refer to (1) the most recent Appeal Brief filed
May 29, 2007 and (2) the Examiner’s Answer mailed August 30, 2007.
4 Appellants do not argue independent claims 10 and 17 separately from
claim 1. Appellants also have not particularly argued claims 2, 6, 7, 9, 11,
14, 16, and 18 (Br. 5-10). Accordingly, we select independent claim 1 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
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ISSUES
The following issues have been raised in the present appeal:
(1) Have Appellants shown the Examiner erred in finding Kubo discloses
“selecting one of a still and a video image recording mode” in rejecting
claim 1 under § 102?
(2) Have Appellants shown the Examiner erred in finding Kubo discloses
the optical signal communicates exclusively to one of a first sensor for
recording video images and a second sensor for recording still images in
accordance with the mode selected in rejecting claim 1 under § 102?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Kubo discloses a camera that permits the user to select from two
modes (Kubo, col. 1, ll. 11-12, col. 13, ll. 38-43, and col. 14, l. 22-
col. 15, l. 40; Figs. 8-10).
2. The first mode is a preview mode and is selected by the user
depressing the shutter button half way (Kubo, col. 14, l. 24 - col. 15, l.
16).
3. The second mode is a photographing mode and is selected by the user
depressing the shutter button fully (Kubo, col. 15, ll. 17-40).
4. Kubo discloses in preview mode the mirror M5 creates an optical path
that reflects the light toward sensor 63 to record the image (Kubo, col.
14, ll. 23-27 and 48-56; Figs. 9A, 9B, and 10).
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5. Kubo discloses in the photographing mode the mirror M5 retracts and
creates an optical path toward sensor 58 to record the image (Kubo,
col. 15, ll. 17-28; Figs. 9C, 9D, and 10).
6. Kubo discloses the image processor 80 takes the digitized image data
on second image sensor 63 and writes the image data to memory 91
(Kubo, col. 14, ll. 60-64; Fig. 10).
7. Kubo subsequently uses a video encoder 84 to format the processed
data from memory 91 into an NTSC/PAL format (Kubo, col. 14, ll. 6-
9 and col. 15, ll. 3-5; Fig. 10).
8. Kubo discloses the encoded image is updated at a frame period or
interval and displayed on panel 66 as motion pictures or a moving
image (Kubo, col. 2, ll. 6-8, col. 14, ll. 9-11, and col. 15, l. 5-10 and
13-16).
9. The Specification states that some video recorders can operate in a
“single shot” mode (Spec. 1:25-26).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros, Inc. v. Union Oil Co. of Calif., Inc., 814 F.2d
628, 631 (Fed. Cir. 1987). During examination of a patent application, a
claim is given its broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

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ANALYSIS
Appellants first argue that Kubo has only one recording mode or a still
image recording mode (Br. 5-6). Kubo discloses a camera that permits the
user to select from two modes (FF 1). The first mode is a preview mode and
is selected by the user depressing the shutter button half way (FF 2). The
second mode is a photographing or still image mode and is selected by the
user depressing the shutter button fully (FF 3). Appellants contend that the
above-described first mode is not a “video image recording mode” as
claimed (Br. 5-6). We disagree.
Kubo discloses the image processor 80 takes the digitized image data
on second image sensor 63 and writes the image data to memory 91 (FF 6).
Kubo subsequently uses a video encoder 84 to format the processed data
from memory 91 into an NTSC/PAL format (FF 7). Finally, Kubo discloses
the encoded image is updated at a frame period or interval and displayed on
the panel 66 as motion pictures or a moving image (FF 8). Thus, not only
does Kubo disclose a recording mode for still image in the photographing
mode (FF 3), Kubo discusses a second mode for creating video images.
Appellants further argue that Kubo’s preview mode is not a recording
mode as recited in claim 1 (Br. 6-7). Merriam-Webster’s Online Dictionary5
defines “recording” as a “record” or “a function of an electronic device that
causes it to record.” The verb, “record,” is defined by Merriam-Webster’s

5 Merriam-Webster’s Online Dictionary, 11th ed., available at
http://www.merriam-webster.com/dictionary/record[4] (last visited
December 18, 2008).
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Online Dictionary6 as “to cause (as sound, visual images, or data) to be
registered on something (as a disc or magnetic tape) in reproducible form.”
Thus giving this term its broadest reasonable interpretation as instructed by
Am. Acad. Of Sci., 367 F.3d at 1364, recording involves an electronic device
that causes information to be registered on something in reproducible form.
As explained above, Kubo describes the processor 80 writes
information or records the image data recorded on sensor 63 to a storage
medium or memory 91 (FF 6) for subsequent reproduction of the recorded
signal at display 66 (FF 7 and 8). Kubo also explains the video encoder 84
encodes the data at the video encoder 84 into NTSC/PAL format (FF 7) or a
video signal for reproduction in the display 66 (FF 8). The converted data
stored in NTSC/PAL format must also be stored, at least temporarily, in the
video encoder 84. Otherwise, the information could not be displayed on
panel 66. Thus, Kubo discloses the image data is recorded for subsequent
reproduction on the display. Moreover, the above disclosure in Kubo (id.)
even meets Appellants’ own definition of “recording” (Br. 6) or encodes the
image signal into at least a semi-permanent storage medium for subsequent
reproduction of the recorded signal. Finally, Appellants admit the display of
the images is recorded by the sensor 63 (Br. 7). Similarly, writing data to
Kubo’s memory 91 is a recording. Thus, based on the above reasoning,
Kubo’s preview mode is a video image recording mode as recited in claim 1.
Appellants also contend that Kubo does not store multiple images
within memory (Br. 7-8) and, therefore, does not involve video recording.

6 Merriam-Webster’s Online Dictionary, 11th ed., available at
http://www.merriam-webster.com/dictionary/record[1] (last visited
December 18, 2008).
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Claim 1 recites a video image recording mode but this does not require the
recording mode to store multiple images. In fact, the Specification even
states that some video recorders can operate in a “single shot” mode (FF 9).
We, therefore, find the video image recording mode in claim 1 does not
require storing multiple images.
Lastly, Appellants argue that Kubo does not disclose the optical signal
communicates exclusively with the one of a first sensor or a second sensor in
accordance with the selected mode (Br. 9-10). In particular, Appellants
discuss Figures 15 through 17 and their corresponding disclosure that the
image data from the first and second sensors are combined and used
simultaneously to produce a composite image (id.) As the Examiner notes
(Ans. 8), Figures 15 through 17 of Kubo depict an alternative embodiment to
the one relied upon in the anticipation rejection. Thus, like the Examiner
(id.), we find the discussion of Figures 15 through 17 immaterial to the
presented rejection. Second, regarding the relied-upon Figures 8 through 10,
Kubo discloses in preview mode the mirror M5 creates an optical path that
reflects the light toward the first sensor 63 to record the image (FF 4), and in
the photographing mode the mirror M5 retracts creating an optical path
toward the second sensor 58 to record the image (FF 5). As these paths are
unique to one another, Kubo discloses “an optical signal from a common
viewpoint to an exclusive selected one of a first sensor for recording video
and a second sensor for recording still images in accordance with the
selected recording mode,” as recited in claim 1.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claim 1 as being anticipated by Kubo. Accordingly, we
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sustain the Examiner’s anticipation rejection of claim 1, and claims 2, 6, 7,
9-11, 14, and 16-18, which fall with claim 1.

OBVIOUSNESS REJECTION
Claims 8 and 15 recite at least one of the first or second sensor is a
complementary metal oxide semiconductor (CMOS) sensor. The Examiner
finds that the combination of Kubo and Lee teaches all the recited
limitations (Ans. 5). Appellants argue that Lee does not cure the purported
deficiencies of Kubo (Br. 10-11). We are not persuaded by these arguments,
however, for the reasons previously discussed in connection with claim 1
and Kubo. We also find such arguments fall well short of rebutting the
Examiner’s rejection under obviousness – a position that we find reasonable.
For the above reasons, Appellants have not shown the Examiner erred
in rejecting claims 8 and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Kubo and Lee.

CONCLUSION
(1) Appellants have not shown the Examiner erred in finding Kubo
discloses “selecting one of a still and a video image recording mode” in
rejecting claim 1 under § 102.
(2) Appellants have not shown the Examiner erred in finding Kubo
discloses the optical signal communicates exclusively to one of a first sensor
for recording video and a second sensor for recording still images in
accordance with the mode selected in rejecting claim 1 under § 102.
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(3) Appellants have not shown the Examiner erred in finding the
combination of Kubo and Lee teach one of the first or second sensor is a
CMOS sensor in rejecting claims 8 and 15 under § 103.

DECISION
The decision of the Examiner rejecting claims 1, 2, 6-11, and 14-18 is
affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

Eld

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