Ex Parte van Rijn

Board of Patent Appeals and Interferences

Jul 14, 2011

10909247 (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/909,247 07/29/2004 Percy van Rijn PA2703REI 4608
22830 7590 07/14/2011
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
07/14/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PERCY VAN RIJN
____________

Appeal 2011-006511
Application 10/909,247
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006511
Application 10/909,247

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 25, 26, 28, 29, 31-34, 36, 37, 39-51 and 53-61.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for an Internet message
system. (Specification 1:10-11).
Claim 25, reproduced below, is representative of the subject matter on
appeal.

25. A system for composing a personalized message
comprising: memory configured to store personalized message
data; a user input interface; a personalized message module
executable by a central processing unit to control at least one
personalized message composition component coupled to the
personalized message module, the personalized message
composition component configured to generate personalized
message data, wherein one of the at least one personalized
message composition components comprises a camera
configured to generate image data, the personalized message
data comprising the image data generated by the camera, the
image data composed from a photograph, and wherein the
personalized message module is further executable to activate
the camera upon receiving a user selection corresponding to
generation of the at least one personalized message via the user
input interface;
a database coupled to the personalized module and storing
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audio and visual messages, wherein the personalized message
module is further executable to return to pre-recorded audio and
visual messages when the user selection is not received within a
specified time period;
a data management module executable by the central processing
unit to control data communications between the personalized
message composition component and the personalized message
module, the data management module further configured to
direct storage of personalized message data generated by the at
least one personalized message composition component in the
memory, the stored personalized message data representing a
personalized message, the personalized message comprising a
greeting to an intended recipient;
an operating system executable by the central processing unit to
manage at least the personalized message module, the data
management module, and the personalized message
composition component; and
a network interface coupled to the data management module,
the network interface configured to receive data from and to
transmit data to a wide-area network, wherein the wide-area
network comprises the Internet.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Williams US 4,417,527 Nov. 29, 1983
Morgenstern US 4,454,671 Jun. 19, 1984
Ferris US 4,497,261 Feb. 5, 1985
Tschappat US 4,557,352 Dec. 10, 1985
Berman US 4,558,650 Dec. 17, 1985
Vajk US 5,265,033 Nov. 23, 1993
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Wright US 5,426,594 Jun. 20, 1995
Hammer US 5,429,148 Jul. 4, 1995
Buckley US 5,561,604 Oct. 1, 1996
Davidson US 5,615,123 Mar. 25, 1997
Stolfo US 5,748,780 May 5, 1998
Williams US 6,081,205 Jun. 27, 2000
Garibian US 6,345,458 B1 Feb. 12, 2002

The following rejections are before us for review.
The Examiner rejected Claims 25, 31-32, 34, 37, 39-40, 44-47, 50-51,
53, 55, 57-60 under 35 U.S.C. § 103(a) over Vajk and Stolfo further in view
of Buckley.
The Examiner rejected Claims 26, 28 and 29 under U.S.C. § 103(b) as
being unpatentable over Vajkin view of Stolfo, Buckley and Williams.
The Examiner rejected Claims 33 and 36 under 35 U.S.C. § 103(b) as
being unpatentable over Vajk in view of Stolfo, Buckley and Wright .
The Examiner rejected Claims 48, 49, 61 under 35 U.S.C. § 103(b) as
being unpatentable over Vajk in view of Stolfo, Buckley and Davidson.
The Examiner rejected Claim 54 under 35 U.S.C. § 103(b) as being
unpatentable over Vajk in view of Stolfo, Buckley and Morganstern ('671),
Hammer ('148) or Garibian ('458).
The Examiner rejected Claim 56 under 35 U.S.C. § 103(b) as being
unpatentable over Vajk in view of Stolfo further in view of Buckley and
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further in view of Williams ('527), Ferris et al ('261), Tschappat Jr ('352) or
Berman ('650).
The Examiner rejected claims 41-43 under 35 U.S.C. § 103(b) as
being unpatentable over Vajk in view of Stolfo, Buckley and further in view
of Official Notice.
ISSUE
Did the Examiner err in rejecting claims on appeal as being
unpatentable under 35 U.S.C. § 103(a) on the grounds that a person with
ordinary skill in the art would understand that image data represents
information which can be graphically represented or derived from an image.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
We adopt the Examiner’s findings as set forth in the Answer on pages
7-29.
ANALYSIS
We affirm the rejections of claims 25, 26, 28, 29, 31-34, 36, 37, 39-51
and 53-61.
Initially, we note that the Appellant argues independent claims 25 and
53 together as a group. Correspondingly, we select representative claim 25
to decide the appeal of these claims, remaining claims standing or falling
with claim 25.
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Appellant argues that “Vajk does not disclose ‘personalized message
data comprising the image data generated by the camera’ as required by each
of claims 25 and 53.” (Appeal Br. 16). According to Appellant this is
because in Vajk “[t]he image data itself, as captured by the camera 184, is
not part of the composed message. Rather, the OCR subsystem 170
performs optical character recognition (OCR) on the data captured by the
camera 184 to produce a plain text message.” (Appeal Br. 16)
We disagree with Appellant because Appellant’s arguments are not
based on limitations appearing in the claims which recite image data and not
“an image” alone. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). That is,
we interpret the phrase “personalized message data comprising the image
data generated by the camera” to mean that the image data includes the
information that is derived from the image data. As such, the image data
represents information which can be graphically represented or derived from
an image, e.g., via scanning. Thus, we find that the plain text message in
Vajk, because it derives from data generated by a camera, meets the claim
requirement of data “comprising the image data generated by the camera”.
Appellant next argues that “… Buckley does not disclose that the
graphics display includes an audio message.” (Appeal Br. 16).
The Examiner found that Buckley discloses "return[ing] to pre-
recorded audio and visual messages when the user selection is not received
within a specified time period" at column 11 lines 19 and 20. (Answer 9).
Here, Buckley discloses “[i]f he or she does not do so [(decide to purchase)]
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after a certain time interval the operation reverts to the start condition.” We
further find that Buckley discloses at column 11, lines 13 and 14, “upon
touching the screen 11 an explanatory video is generated with associated
sound ….” We read the explanatory video of Buckley as the start condition,
and hence find that the claim limitation is met by Buckley at these portions
of his disclosure.
Even if we were to alternatively read the invitation message in
Buckley as the start condition which invites the customer to touch the screen
to obtain more information as to the operation of the machine (col.11, ll. 9-
10), the Examiner has made a number of findings (Answer 26-28) showing
that sound and graphics are inextricably connected with one another in the
Buckley system such that the invitation message by inference would be
presented both visually and audibly. See KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). (In making the obviousness determination one “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.”)
Appellant next argues that “the Examiner has not provided a
reasonable basis to conclude that the person of ordinary skill would combine
the references relied upon in the Office Action.” (Appeal Br. 17)
We disagree with Appellant.
First, to the extent Appellant seeks an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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398, 418, 419 (2007).
Second, the Examiner found that it would be obvious to modify Vajk
to include an internet connection from Stolfo because “it would
advantageously provide the public with convenient and inexpensive access
to electronic mail communication ….” (Answer 29).
We find such reasoning to be rationally based relative to the already
electronically connected ATM/POS communication environment disclosed
by Vajek (Abstract).
Also, the Examiner found that all the “references belong to the same
field of endeavor and employ same elements.” (Answer 29). In addition, the
Examiner found that “Vajk, Stolfo and Buckley disclose a system
comprising a processor, a display and a memory configured to enable a
customer to generate a personalized messages/products. The only difference
is the type of software employed for certain operations.” (Answer 29).
Appellant does not challenge this finding.
Thus, left unchallenged these findings alone support our finding that
the references used in the combination under 35 U.S.C. § 103(a) are
analogous art. The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in order to
rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992).
As such, we find rationale support in the record for the combination
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under 35 U.S.C. § 103(a) because the Examiner reasoned that because the
references share the same field of endeavor, it would be reasonable to
combine them. Id. (“[I]t is necessary to consider ‘the reality of the
circumstances,’ -in other words, common sense-in deciding in which fields a
person of ordinary skill would reasonably be expected to look for a solution
to the problem facing the inventor.” Id. (quoting In re Wood, 599 F.2d 1032,
1036 (CCPA 1979))). In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 25, 26, 28,
29, 31-34, 36, 37, 39-51 and 53-61 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claim 25, 26, 28, 29, 31-34, 36,
37, 39-51 and 53-61 is AFFIRMED.

AFFIRMED.

MP