Ex Parte Walton et alDownload PDFPatent Trial and Appeal BoardNov 19, 201311261188 (P.T.A.B. Nov. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ANDREW CHRISTOPHER WALTON, BRYAN J. JACQUOT and STEVE LYLE __________ Appeal 2011-013586 Application 11/261,188 Technology Center 2600 __________ Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and ULRIKE W. JENKS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a device, a computer-implemented method, a computer system, and an article of manufacture. The Patent Examiner rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Hewlett Packard Co., LP. (See App. Br. 1.) Appeal 2011-013586 Application 11/261,188 2 STATEMENT OF THE CASE Claims 1-25 are on appeal. Claims 1 and 16 are representative and read as follows: 1. A device, comprising: a non-volatile memory storing i) a plurality of vector images illustrating different views of at least a portion of the device, and ii) one or more relationships specifying how to navigate between the vector images; and an interface to provide access to the vector images. 16. A computer-implemented method, comprising: retrieving at least a first image from a set of images stored in a device, the first image illustrating at least a portion of the device; causing the first image to be displayed to a user; and in response to the user’s interaction with the first image, causing a second image retrieved from the device to be displayed to the user. The Examiner rejected the claims as follows: • claims 16-25 under 35 U.S.C. § 102(e) as anticipated by Callaghan;2 • claims 1-7 and 9-15 under 35 U.S.C. § 103(a) as unpatentable over Callaghan and Misuhashi;3 and • claim 8 under 35 U.S.C. § 103(a) as unpatentable over Callaghan, Misuhashi, and Englefield.4 2 Patent Application Publication No. US 2005/0108364 A1 by David M. Callaghan et al., published May 19, 2005. 3 Patent No. US 6,369,905 B1 issued to Shunya Mitsuhashi et al., Apr. 9, 2002. 4 Patent No. US 6,335,738 B1 issued to Paul Jonathan Englefield et al., Jan. 1, 2002. Appeal 2011-013586 Application 11/261,188 3 ANTICIPATION The Examiner found that Callaghan disclosed the inventions of claims 16-25. Appellants contend that Callaghan does not teach the claimed inventions because “Appellants understand Callaghan to teach storing device-related information and graphics for a device in storage that is separate from the device,” rather than teaching “a set of images stored in a device, the first image illustrating at least a portion of the device,” as recited in independent claim 16. (App. Br. 8.) In particular, Appellants assert that in Callaghan the “storage component 240 with stored SVG [scalable vector graphics] files that are uploaded and/or downloaded from/to the device 230 is a storage device that is remotely located with respect to the device 230.” (Id. at 9)(referring to Callaghan [0043] and Fig. 2). We are not persuaded by Appellants’ argument. Callaghan Figure 2 is reproduced below: Figure 2 “illustrates an exemplary system that renders device-related information within a Web-based interface associated with a remote Web client, in accordance with an aspect of the [] invention.” (Callaghan [0017].) Regarding Figure 2, Callaghan teaches: [0044] The storage component 240 can be utilized to save device-related SVG files. The storage component 240 can be any known storage element. For example, it can be local Appeal 2011-013586 Application 11/261,188 4 memory. For example, it can include storage associated with a hard drive, RAM, ROM, a memory module, flash, CD, DVD, and the like. In addition, it can include shared, or common storage such [as] a networked server and/or database that is local to an associated network. Remote storage can include remote servers, databases and/or other devices. (Id. at [0044])(Emphasis added). According to Appellants, this teaching indicates that “local memory” means “local to an associated network.” (App. Br. 9; Reply Br. 2.) We disagree. We find that a person of ordinary skill in the art at the time of the invention would have understood Callaghan’s disclosure of “local memory” to be memory local to the device. We do not find that Callaghan exemplified the term “local memory” as including “shared or common storage such [as] a networked server and/or database that is local to an associated network.” Rather, by introducing the network storage option with the phrase “[i]n addition,” Callaghan expressly distinguished it from the preceding local memory option. Thus, Appellants have not established that Callaghan does not anticipate the claimed invention. Accordingly, we affirm the Examiner’s anticipation rejection of claim 16. Appellants do not raise additional arguments for claims 17-25 (see App. Br. 9-10), therefore, these claims fall with claim 16. See 37 C.F.R. § 41.37(c)(1)(vii). OBVIOUSNESS I. Claims 1-7 and 9-15 The Examiner found that Callaghan disclosed a device comprising a non-volatile memory storing i) a plurality of vector images illustrating views of at least a portion of the device, e.g., the device’s faceplate, and ii) one or Appeal 2011-013586 Application 11/261,188 5 more relationships specifying how to navigate between the vector images, and an interface to provide access to the vector images. (Ans. 7-8.) However, the Examiner found that Callaghan did not expressly disclose vector images illustrating different views of the device. (Id. at 8.) The Examiner found that Mitsuhashi disclosed information processing wherein images illustrating different views of a device are accessed. (Id.) According to the Examiner, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have modified Callaghan to include images illustrating different views of the device, as disclosed by Mitsuhashi “allowing [a] user to view only a desired portion of the device instead of a default main image of the device.” (Id. at 9.) Appellants contend that the combined art does not teach or suggest the claimed invention because Callaghan does not teach a device comprising a non-volatile memory storing a plurality of vector images illustrating different views of at least a portion of the device, as required by independent claim 1. (App. Br. 11.) According to Appellants, Callaghan instead “teaches storing device-related information and graphics for a device 230 in storage 240 that is separate from the device 230.” (Id. at 12.) Further, Appellants assert that Mitsuhashi does not cure this alleged deficiency of Callaghan. Moreover, Appellants assert that [S]ince Mitsuhashi teaches storing virtual printer image data in storage that resides on a host computer instead of in non- volatile memory of Misuhashi’s printer …, both Callaghan and Mitsuhashi teach away from “A device, comprising: a non- volatile memory storing i) a plurality of vector images illustrating different views of at least a portion of the device…,” as recited by Claim 1. Appeal 2011-013586 Application 11/261,188 6 (Id. at 12-13.) Therefore, according to Appellants, “there is no motivation to combine [Callaghan with Mitsuhashi] because both Callaghan and Mitsuhashi teach away from the suggested modification.” (Id. at 12.) We are not persuaded by Appellants’ arguments. As discussed regarding the anticipation rejection, we found that Callaghan disclosed storing device-related SVG files in the local memory of the device. Thus, Callaghan does not teach away from this element of claim 1. Further, the Examiner relied on Mitsuhashi for its teaching to store vector images illustrating different views of at least a portion of the device, and not as teaching or suggesting the location for the storage of such different views. As the Examiner explained, the proposed combination of the references involved merely including images illustrating different views of the device, instead of only a main image of the device. (Ans. 9, 16.) We agree with the Examiner (id.) that a person of ordinary skill in the art at the time the invention was made would have been motivated to do so to allow a user to view only a desired, i.e., selected, portion of the device, instead of a default main image of the device, and that such modification would have predictably yielded the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Accordingly, we affirm the obviousness rejection of independent claim 1. Appellants do not separately argue dependent claims 2-7 and 9-15. (App. Br. 13.) Therefore, these claims fall with independent claim 1. II. Claim 8 Appellants assert that Englefield does not remedy the alleged “deficiencies in the Callaghan Mitsuhashi combination.” (App. Br. 15.) Appeal 2011-013586 Application 11/261,188 7 According to Appellants, “Claim 8 is patentable over the Callaghan Mitsuhashi Englefield [sic] combination for at least the reasons that Claim 1 is patentable over the Callaghan Mitsuhashi Englefield [sic] combination.” (Id. at 16.) As we have found that Appellants have not established deficiencies in the combination of Callaghan and Mitsuhashi, we affirm the rejection of claim 8. SUMMARY We affirm each of the Examiner’s anticipation and obviousness rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc Copy with citationCopy as parenthetical citation