Ex Parte Wasula et al

Board of Patent Appeals and Interferences

Mar 29, 2010

09990500 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN L. WASULA and ANTHONY L. TINTERA
____________

Appeal 2009-003811
Application 09/990,500
Technology Center 2600
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Decided: March 29, 2010
____________

Before JOSEPH F. RUGGIERO, THOMAS S. HAHN, and ELENI
MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-5, 8, 9, 11-25, and 27-32. Claims 6, 7, 10, and 26 have been
indicated by the Examiner (Ans. 17) to be allowable if rewritten in
independent form. We have jurisdiction under 35 U.S.C. § 6(b).
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We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed June 2, 2006) and the Answer (mailed
February 14, 2008) for the respective details. Only those arguments actually
made by Appellants have been considered in this decision. Arguments
which Appellants could have made but chose not to make in the Brief have
not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to a digital camera for capturing and
organizing digital images for subsequent transfer to an external device. The
digital camera includes a database having a plurality of user selectable
customized profiles with each customized profile including a plurality of
image utilization fields. (See generally Spec. 3:21-25, 5:18-28, and 6:24-29).

Claim 1 is illustrative of the invention and is reproduced as follows:
1. A digital camera for capturing digital images and organizing the
captured images for subsequent transfer from the digital camera to an
external device that utilizes the digital images, comprising:
(a) means for providing a database having a plurality of customized
profiles, wherein each customized profile contains a plurality of image
utilization fields, the image utilization fields identifying respective
instructions for utilization of one or more digital images by the external
device;
(b) means for selecting one of the plurality of customized profiles
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from the database;
(c) means for defining a plurality of profile indices respectively
corresponding to ones of the plurality of customized profiles;
(d) an image sensor for capturing images;
(e) means for associating a profile index with at least one captured
image to identify the corresponding selected customized profile; and
(f) storage means for receiving and storing the at least one captured
image and the corresponding profile index.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Kuba US 5,806,072 Sep. 8, 1998
(filed Dec. 21, 1992)
Safai (Safai ‘469) US 6,167,469 Dec. 26, 2000
(filed May 18, 1998)
Anderson US 6,177,956 B1 Jan. 23, 2001
(filed Oct. 23, 1996)
Steinberg US 6,433,818 B1 Aug. 13, 2002
(filed Jul. 15, 1999)
Roberts US 6,496,222 B1 Dec. 17, 2002
(eff. filed Feb. 19, 1999)
Safai (Safai ‘361) US 2003/0048361 A1 Mar. 13, 2003
(eff. filed May 29, 1998)

Claims 1-5, 8, 11, and 16-19 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Safai ‘469.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Safai ‘469 in view of Safai ‘361.
Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuba in view of Roberts.
Comment [k1]: Nov. 27, 2000
Comment [k2]: Jun. 19, 2002
Comment [jfr3]: The “effective’
filing date is needed to antedate
Appellants effective fiing date of
06/02/99.
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Claims 9 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Safai ‘469 in view of Steinberg.
Claims 21-24 and 27-32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Safai ‘469 in view of Kuba.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Safai ‘469 in view of Kuba and Roberts.

ISSUES
The pivotal issues before us are whether the Examiner erred in
determining that:
a) Safai ‘469 discloses
i) a digital camera with a database that includes selectable
customized profiles having image utilization fields along with a
corresponding profile index to identify a selected profile, and
ii) the customized profiles having image utilization fields
which identify instructions on how images are to be handled by an
external device;
b) Roberts discloses
i) the storing of a plurality of software application program
identifiers which identify programs that are resident on an external
device and which can be selected to be associated with a captured
image, and
ii) if so, the obviousness to the ordinarily skilled artisan of
combining Roberts with the digital camera teachings of Kuba and/or
Safai ‘469.
c) Steinberg discloses
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i) the selection of a user code for permitting access to
selected customized profiles, and
ii) if so, the obviousness to the ordinarily skilled artisan of
combining Steinberg with the digital camera teachings of Safai ‘469;
and
d) the obviousness to the ordinarily skilled artisan of combining
the memory card teachings of Kuba with Safai ‘469 and Roberts.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Safai ‘469 discloses (Figs. 1 and 2, col. 5, ll. 37-39, col. 8, ll.
61-67, and col. 12, ll. 36-49) a digital camera for capturing digital images
and transferring the images to an external device that utilizes the images.
2. Safai ‘469 further discloses (Fig. 4F, col. 12, ll. 37-60) the
organizing of captured images for transfer including a Send Message Screen
454 which includes an address field 466, a photo field 468, a voice message
check box 470, and a Store button 476.
3. The example depicted in the Figure 4F Message Screen
illustration of Safai ‘469 shows the association of selected photos in the
“Photo” field 468 with an e-mail address in the “To” address field 466, a
message in the checked “Voice Message” box 470, and the Delete Pictures
after Sending box 472.
4. When the Store button 476 is activated, Safai ‘469 discloses
(col. 12, l. 61-col. 13, l. 6) that photo, address, and message information is
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stored in an Out Box which contains a list of messages configured for
transmission to an external device.
5. Safai ‘361 discloses (¶ [0065]) a digital camera that utilizes a
memory card in the form of a flash EPROM.
6. Roberts discloses (Figs. 2A, 6, and 14A; col. 8, ll. 30-65 and
col. 12, ll. 9-41) a user activation of a format switch 17 to select proper
formatting, i.e., IBM or Apple, for images transferred to an external device.
7. Steinberg discloses (col. 2, ll. 39-43 and col. 9, ll. 14-17) the
requirement of an entered password to access a set of stored images in a
digital camera.
8. Kuba discloses (Fig. 2, col. 14, ll. 57-61) the storing of
customized image files in a removable memory card of a digital camera.

PRINCIPLES OF LAW
ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
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finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

OBVIOUSNESS
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 (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 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal 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 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(e) REJECTION
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Appellants’ arguments initially focus on the contention that, in
contrast to the invention set forth in independent claims 1, 16, and 17, the
digital camera described by the Safai ‘469 reference does not include a
disclosure of a customized profile with a corresponding profile index and
which is selectable from a plurality of customized profiles. According to
Appellants (App. Br. 9-11), while Safai ‘469 discloses the storing of a list of
messages which are associated with photos and an e-mail address in an Out
Box, the messages have been finalized for transmission and cannot be
modified. In Appellants’ view, the procedure described by Safai ‘469 only
permits a user to resume the transport of a previously finalized message, but
does not allow a user to associate with the stored messages those images
captured subsequent to the generation of the messages.
We find, however, that Appellants’ arguments are not commensurate
with the scope of the language of independent claims 1, 16, and 17. To
whatever extent Appellants may be correct that a user in Safai ‘469 can not
associate subsequently taken images with a previously created profile or edit
a previously created profile, no such requirements appear in the claims. As
pointed out by the Examiner (Ans. 20), even if the list of messages stored in
the Out Box in Safai ‘469 are finalized messages, this does not preclude
them from being considered customized profiles as claimed.
With the above discussion in mind, we find no error in the Examiner’s
conclusion (Ans. 4-5) that the illustration in Figure 4F of Safai ‘469
represents a customized profile which associates particular photos 468 with
messages 470. (FF 2). Similarly, we find no error in the Examiner’s
conclusion (Ans. 7) that Safai ‘469 provides for the selection of particular
ones of the customized profiles for use with one or more stored images by,
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for example, providing for the selection of certain photos (Fig. 4F, photos 1,
4) for deletion after sending. (FF 3). We further agree with the Examiner’s
conclusion that Figure 4F of Safai ‘469 includes an index in the form of the
“To” address field 466 which references the message to be sent and is
associated with the “Photo” field 468 and, as such, corresponds to what is
claimed. (FF 3 and 4).
We further find unpersuasive Appellants’ contention that Safai ‘469
fails to disclose customized profiles in which the image utilization fields
identify instructions on how images are to be handled by an external device.
According to Appellants (App. Br. 9-12), the fields in the Send Message
Screen 454 of Safai ‘469 provide instructions to the digital camera and not to
any external device.
We agree with the Examiner’s conclusion, however, that the fields
466, 468, 470, and 472 depicted in the Figure 4 F illustration of Safai’ 469
represent instructions to an external device. (FF 3 and 4). For all of the
reasons explained by the Examiner (Ans. 19), we fail to see why instructions
as to what e-mail account images are to be stored (field 466) and to which
photo images an associated voice message is to be played (fields 468 and
470) would not be considered instructions to an external device as claimed.
In view of the above discussion, we find that the Examiner did not err
in concluding that all of the claimed limitations are present in the disclosure
of Safai ‘469. Accordingly, the Examiner’s 35 U.S.C. § 102(e) rejection of
independent claims 1, 16, and 17, as well as dependent claims 2-5, 8, 18, and
19 not separately argued by Appellants, is sustained.

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35 U.S.C. § 103(a) REJECTIONS
Dependent claim 12
The Examiner’s obviousness rejection of dependent claim 12 based on
the combination of Safai ‘469 and Safai ‘361 is sustained as well. We find
no error in the Examiner’s application (Ans. 9) of the flash EPROM memory
card teachings (FF 5) of Safai ‘361 to the digital camera system disclosed by
Safai ‘469. Appellants’ arguments (App. Br. 19) rely on the arguments
asserted previously against independent claims 1, 16, and 17, which
arguments we have found to be unpersuasive for all of the previously
discussed reasons.
Claims 13-15
We also sustain the Examiner’s obviousness rejection, based on the
combination of Kuba and Roberts, of claims 13-15. Appellants’ arguments
attack the Examiner’s reliance on Roberts as providing a teaching of storing
a plurality of software application program identifiers which identify
programs that are resident on an external device and which can be selected
to be associated with a captured image. According to Appellants (App. Br.
17) the codes in the format field 57 of the data diskette 50 of Roberts
identify different computer architectures, i.e., IBM or Apple, not software
application programs.
We agree with the Examiner (Ans. 11 and 21), however, that Roberts’
disclosure (FF 6) of user activation of a format switch 17 to select proper
formatting, i.e., IBM or Apple, for an external device corresponds to the
claimed selection of a plurality of software program identifiers that are
associated with a captured image. We also agree with the Examiner that an
ordinarily skilled artisan would have recognized and appreciated that each of
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the IBM and Apple computer architectures contains a plurality of software
application programs so that the activation of the format switch 17 in
Roberts will identify a plurality of these programs as claimed. Lastly,
Appellants’ arguments to the contrary notwithstanding, we find that the
Examiner (Ans. 11) has set forth a valid articulated line of reasoning with a
rational underpinning to support the legal conclusion of obviousness for
combining the teachings of Kuba and Roberts.
Claims 9 and 20
Appellants’ arguments focus on the alleged deficiency of Steinberg in
disclosing the selection of a user code for permitting access to selected
customized profiles. According to Appellants (App. Br. 18-19), Steinberg’s
code entering procedures for authorizing access apply to granting access to
the entire camera, and not to a particular selected custom profile as claimed.
We agree with the Examiner (Ans. 21-22), however, that Appellants’
arguments unpersuasively attack the individual differences between
Steinberg and the claimed invention when the rejection is based on the
combination of Safai ‘469 and Steinberg. As explained by the Examiner
(Ans. 12-14), the teaching of providing user selection of one of a plurality
particular customized profiles from a database is provided by Safai ‘469.
Steinberg is relied upon only for a teaching (FF 7) of requiring an entered
password to access a set of stored images in a digital camera.
Further, contrary to Appellants’ related argument (App. Br. 19), the
Examiner (Ans. 13-14) has provided an articulated line of reasoning with a
rational underpinning to support the conclusion that the addition of a
password authorization feature to access the selected customized profiles
would have served as an obvious enhancement to the system of Safai ‘469.
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Accordingly, the Examiner’s obviousness rejection of claims 9 and 20,
based on the combination of Safai ‘469 and Steinberg is sustained.

Claims 21-24 and 27-32
We also sustain the Examiner’s obviousness rejection, based on the
combination of Safai’ 469 and Kuba, of claims 21-24 and 27-32. We find
no error in the Examiner’s conclusion (Ans. 14) that images transferred to
the external device in Safai ‘469 would be modified by having an attached
voice message, and would be located in a directory defined by an e-mail
address entered in the “To” address field 468 as illustrated in Figure 4F.
Further, with respect to Appellants’ particular remarks (App. Br. 20-21)
regarding claim 23, we agree with the Examiner that the claim language
does not require that editing of the customized profile be performed by the
external device. Rather, the claim language requires only that editing is, or
has been, performed on the customized profile which has been transferred to
the external device, a feature taught by Safai ‘469 as previously discussed.
We further find no error in the Examiner’s conclusion (Ans. 15) that
an ordinarily skilled artisan would have recognized and appreciated that
Kuba’s teaching (FF 8) of storing customized image files in a removable
memory card would have obvious application to the device of Safai ‘469 for,
inter alia, enabling a user to display images on another camera or external
device if a user’s original camera becomes inoperative.

Claim 25
The Examiner’s obviousness rejection, based on the combination of
Safai ‘469, Kuba, and Roberts is also sustained. We find no error in the
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Examiner’s application (Ans. 17) of the software application identifier
feature of Roberts to the system of ‘469 as modified by Kuba. Appellants
reiterate their arguments (App. Br. 21-22) made with respect to previously
discussed claims 13-15 regarding the alleged deficiency of Roberts in
disclosing the claimed software application identification feature, which
arguments we have found to be unpersuasive.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-5, 8, 11, and 16-19 for
anticipation under 35 U.S.C. § 102(e), nor in rejecting claims 9, 12-15, 20-
25, and 27-32 for obviousness under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s decision rejecting claims 1-5, 8, 11, and 16-19 under
35 U.S.C. § 102(e) and claims 9, 12-15, 20-25, and 27-32 under 35 U.S.C.
§ 103(a) is affirmed.
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) (2007).

AFFIRMED

ke

Thomas H. Close
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester NY 14650-2201