Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardMay 29, 201411947917 (P.T.A.B. May. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte XI ZHANG, ALBERT L. SCHMIDT, STEPHEN D. MORRISON, and CHRISTOPHER M. MARTIN ____________ Appeal 2012-002098 Application1 11/947,917 Technology Center 2100 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to capturing and uploading images from a mobile device. The Examiner has rejected the claims as lacking written descriptive support, anticipation, and for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm- in-part. 1 Appellants identify Verizon Communications Inc. and its subsidiary companies as the Real Party in Interest (App. Br. 1). Appeal 2012-002098 Application 11/947,917 2 STATEMENT OF THE CASE Claims 1-10, 12-17, and 20-24 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows (emphasis added): 1. A method comprising: capturing an image by a mobile device configured to establish a voice call over a wireless network; presenting a menu of options to a user for sharing the image with other users, wherein one of the options includes uploading the image to a remote platform configured to store the image in a folder among a plurality of folders; and generating without user intervention, in response to selection of the one option, a text message according to a messaging protocol for transmitting the image over the wireless network to a gateway coupled to the remote platform, wherein the text message includes information specifying one of the folders for storing the image, at least one of the folders being identified to indicate how the image is to be shared. Grounds of Rejection The Examiner has rejected the claims as follows: I. claims 1-10, 12-17, and 20-24 under 35 U.S.C. § 112, first paragraph as introducing new matter, and thereby failing to comply with the written description requirement; II. claims 1, 2, 4-10, 12-17, and 20-24 under 35 U.S.C. § 102(e) as being anticipated by Klassen;2 and III. claim 3 under 35 U.S.C. § 103(a) as unpatentable over Klassen in view of Hass.3 2 Klassen et al., US 2008/0299997 A1, published Dec. 4, 2008. 3 Haas et al., US 2007/0105528 A1, published May 10, 2007. Appeal 2012-002098 Application 11/947,917 3 I. The Issue: Written Description Does the preponderance of the evidence of record support the Examiner’s conclusion that the Specification fails to adequately support the limitation “without user intervention” as claimed? Findings of Fact FF1. The Specification provides the use of soft keys: The “soft keys” can be presented to the user via a display 127. In addition to a graphical user interface (GUI) implementation, the image sharing interface 123 can be combined and/or exclusively be deployed with physical controls, such as a keypad, touch pad, etc. The wireless devices l03a-l03n also includes a processor 129 and a memory 131 configured to store and execute instructions for supporting the imaging sharing and management service, as well as other communication functions. (Spec. 4: ¶ 0015.) FF2. The Specification provides an image sharing interface on a wireless device: The user can then input a command for uploading the image, as in step 205, to the image server 107. The image sharing interface 123 can provide an MMS interface, whereby the user types in an address, which can be any identifier, in the “To” field (assuming the identifier has been pre-confirmed) and specify a name of the folder that should store image within the “Body” field. Once the user initiates the transmission of the image, for example, by depressing a “Send” button, the attached photos are uploaded to the specified folder on the image server 107. In this manner, the image can be accessed by any user associated with the folder (step 207). For example, if the user specifies a “family folder,” then only family members can access the images stored in this folder. According to one embodiment, a default folder can be designated. Further, Appeal 2012-002098 Application 11/947,917 4 uploading to a temporary folder can result in sending the image to a contact list that is created by the user. (Spec. 4: ¶ 0018 (emphasis added).) Analysis The Examiner takes the position that the limitation “‘generating, without user intervention,’ is not clearly derived (with reasonable clarity) from the specification.” (Ans. 11.) Accordingly, the Examiner considers this limitation to introduce new matter (id. at 4). Appellants contend that “the written description of the specification reveals that the claimed inventions include at least one soft key ‘PUT’ displayed on an user interface . . . to be selected to generate, without user intervention, a text message according to a messaging protocol for transmitting the image over the wireless network” (App. Br. 8). We find that Appellants have the better position. The written description requirement “serves a teaching function, as a ‘quid pro quo’ in which the public is given ‘meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.”’ Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 922 (Fed. Cir. 2004). While the Examiner is correct that the specific language of the claims was not disclosed ipsis verbis in the Specification, ipsis verbis support is not required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Furthermore, “the written description requirement does not demand either examples or an actual reduction to practice; a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the Appeal 2012-002098 Application 11/947,917 5 written description requirement.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). The Specification teaches the use and programing of soft keys so that they can function to direct the uploading process and destination selection of images from the mobile device. Specifically, the Specification provides that “soft keys” can be presented to the user in the graphical user interface (GUI) that can be “configured to store and execute instructions for supporting the imaging sharing and management service, as well as other communication functions.” (FF1.) Additionally, “[i]f multiple services are offered for photo sharing, the user can specify the particular service to use in the user profile.” (Spec. 3: ¶ 0014; see also id. at 6: ¶ 0024.) The Specification provides that these soft key buttons can be configured to upload the folders to a default folder or to place them into a specified folder such as the “‘family’ folder.” (Spec. 6: ¶ 0024, Table 1.) The “‘Put’” and “‘Send’” soft key can be configured to uploaded the selected photos to different folders or contact groups (id.; see also id. at 7: ¶ 0025) “Once the user initiates the transmission of the image, for example, by depressing a ‘Send’ button, the attached photos are uploaded to the specified folder on the image server 107.” (FF2.) Based on the cited portions of the Specification, we find that a skilled artisan would have understood Appellants to have been in possession of the invention at the time of filing. See Ariad, 598 F.3d at 1352. Here, the Specification provided that these soft key controls can be programed to upload images to a remote platform in specified manner without requiring additional user input. Accordingly, we reverse the new matter rejection under 35 U.S.C. § 112, first paragraph. Appeal 2012-002098 Application 11/947,917 6 II. The Issue: Anticipation Does the preponderance of evidence of record support the Examiner’s finding that Klassen anticipates the claims? Findings of Fact FF3. Klassen disclosed a method of uploading an image file to an image repository from a mobile handheld communications device. [The] camera user interface screen 400B now including a “Send . . .” pop-up menu 402B. In this illustrative example, the “Send . . .” pop-up menu 402B includes a number of menu options including “Send as Email” 404B, “Send as MMS (Multimedia Messaging Service)” 406B, and “Send To (Image Repository)” 408B (e.g. where the Image Repository may be an online image repository such as Flickr™, for example). (Klassen 3: ¶ 0031; see also Ans. 6, 12.) App App an im requ see a eal 2012-0 lication 11 FF4. K age repos Fig. 5, re ired for sh lso Ans. 5 02098 /947,917 lassen illu itory. produced aring imag .) “Metho strates the above, sho es with an d 500B m 7 steps invo ws a flow image up ay then pr lved in up chart com load modu oceed to b loading an prising th le. (Klass lock 518B image to e steps en Fig. 5; , where Appeal 2012-002098 Application 11/947,917 8 upon receiving user instructions, the image may be uploaded using the selected upload settings.” (Klassen 5: ¶0055.) FF 5. Klassen disclosed that the upload module may be configured to specify viewing privileges at the image repository. “For example, the user may specify that the uploaded images are for the private use of the user only. Alternatively, the user may specify that the images may be shared within a defined group of users, or shared with all other Image Repository users.” (Klassen 4: ¶ 0052; see also Ans. 8, 12.) FF6. Klassen disclosed “preselecting default upload setting in the image upload user interface” (Klassen 5: ¶ 0059). [T]he Image Upload Module 148B may also be configured to display send menu 402B with the “Send To (Image Repository)” menu item 408B preselected as the default image upload option. With this default option preselected, the user would only need to confirm the selection (e.g. with the click of a trackball 117 or a key from keyboard 116) in order to initiate the image upload process. (Klassen 3: ¶ 0044; see also Ans. 8, 13.) Principle of Law “Both anticipation under § 102 and obviousness under § 103 are two- step inquiries. The first step in both analyses is a proper construction of the claims . . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted). “‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech, Inc. v. Appeal 2012-002098 Application 11/947,917 9 Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). “The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.” Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (citations omitted). Analysis We begin with claim interpretation, since before a claim is properly interpreted, its scope cannot be compared to the prior art. Claim 1 recites the term “comprising,” indicating that the claim is reasonably interpreted to contain additional steps. We find that the Examiner has reasonably interpreted claim 1 so that it can include additional steps that allow for the addition of descriptive language, as well as including instructions regarding viewing privileges for the uploaded images before initializing the image upload module from the various software applications (see generally Ans. 5-7). Klassen teaches a method of sending images to an image repository, or sending an image via email or text message (FFs 3 & 4). The method begins with the image capture and then proceeds through the steps of configuring the image upload module, followed by the step of uploading the image from the device to the repository or the multimedia messaging service (id.). Klassen also teaches that the image upload options may be preselected and stored as the default for sending the images (FF6). In addition, Klassen teaches that “the user may specify that the images may be shared within a defined group of users” or that they are intended for private use or alternatively that can be shared by all users of an image repository (FF5). Appeal 2012-002098 Application 11/947,917 10 The Examiner finds “the Image upload Module 148B [of Klassen] may be initialized from a ‘Send To (Image Repository)’ menu option located in a context menu. The context menu may be accessible from various software applications 134 to provide ‘Send As . . .’ or ‘Send To . . .’ menu options when the user clicks the corresponding context menu button on communication device 100.” (Ans. 6.) The Examiner acknowledges that the image upload module may be accessed from within various menu options found within Klassen, however, it is not until the image upload module is activated that the processes for transmitting the image to the repository is initiated (FF4). Appellants contend that Klassen does not anticipate the claims (App. Br. 9-10). Specifically, Appellants contend that “[i]t is clear that in Klassen, a selection, e.g., ‘Send as Email’, ‘Send as MMS’ or ‘Send to (Image Repository)’ in Fig. 4B, by a user, results in the user needing to make numerous additional selections, as shown, for example, in Figs 4D through 4G.” (Reply Br. 4; see also App. Br. 10.) We are not persuaded. As discussed above the claim language “comprising” allows for additional steps to precede the election of the option “wherein one of the options includes uploading the image to the remote platform . . . in response to selection of the one option.” Klassen provided that the uploading of the image occurs at step 518B (FF4). It is at point 518B that all the information regarding the viewing privileges and descriptive information is processed to be sent to the remote repository (see id.). Furthermore, Klassen discloses that the send to image repository option can be preselected as the default image upload option (FF6). The image upload module “may be configured to provide users with the ability to add Appeal 2012-002098 Application 11/947,917 11 descriptive information to an image before uploading . . . [to] include a title, a caption, tag words or phrases, or other information that may be associated with the image.” (Klassen 4: ¶ 0055.) On the record before us, we conclude the Examiner did not err in rejecting claims 1, 4-9, 12-16, 20, 21, and 24 under 35 U.S.C. § 102(e) as anticipated by Klassen. As Appellants do not argue the claims 4-9, 12-16, 20, 21, and 24 separately, they fall with claim 1. 37 C.F.R. § 41.37 (c)(1). With regard to claims 22 and 23, Appellants contend that Klassen does not provide for “‘pre-configuring a command for each of the options that generates the text message for executing the selected option without user intervention’” and “‘generating without user intervention, in response to the selection of the one option, one or more invitations to the other users associated with the specified folder to share the image at the remote platform’” (App. Br. 11). We are not persuaded. We agree with the Examiner’s finding that Klassen disclosed [P]re-configuring a command for each of the options that generates the text message for executing the selected option without user intervention [By way of example, the menu options may include a pre-configured or predefined commands, Upload, “Send As Email” and “Send As SMS”, and “Send To (Image Repositories)”. . .] (Ans. 8, see also FF6). In addition to preconfiguring the default image upload module Klassen also disclosed that “the user may specify that the images may be shared within a defined group of users, or shared with all other Image Repository users” (FF5). “[The] method 500B may configure the Image Upload Module 148B to allow the user to specify the viewing privileges” (Klassen 4: ¶ 0052), because the upload module may be Appeal 2012-002098 Application 11/947,917 12 preconfigured, this step encompasses preconfiguring the viewing privileges as well (FF6). Accordingly, we agree with the Examiner’s finding that Klassen anticipates claims 22 and 23. With regard to claim 17, Appellants contend that Klassen does not disclose “adding contact information to the contact list for sharing the image with contacts in the contact list” (App. Br. 11). We are not persuaded. The Image Upload Module 148B may be configured to provide users with the ability to add descriptive information to an image before uploading. . . . [T]he descriptive information . . . may also be uploaded with the image and stored on an Image Repository 360 to be accessed by the user (or by other users with appropriate viewing privileges). (Klassen 4: ¶ 0055.) As explained by the Examiner “Klassen discloses a user created title or caption that is associated with the image to be uploaded and stored on an image repository 360. Furthermore, the image uploading may also be done if the user wishes to easily share images with other users” (Ans. 12-13). Klassen provides that the images that are uploaded onto the image repository may be specified by the user to be private, to be shared within a defined group, or shared with all users of the repository (FF5). Thus, Klassen provides that these different sharing options are specified using the mobile device before uploading to the image repository. The contact list can reasonably be viewed as including all users associated with the image repository, while specifying viewing options to less than all users would meet the limitation of adding contact information as this changes the list of contacts that can receive the images (FFs 4-6). We agree with the Examiner’s position that specifying the viewing options of the images in the image repository reasonably meets the claim limitation of “adding contact Appeal 2012-002098 Application 11/947,917 13 information to the contact list for sharing the image with contacts in the contact list.” (Ans. 7.) Accordingly, we agree with the Examiner’s finding that Klassen anticipates claims 22 and 23. With regard to claims 2 and 10, we find that Appellants have the better position. Claim 2 requires, among other things, “uploading the image to a temporary folder,” while claim 10 requires creating or removing folders. To anticipate a reference must expressly or inherently disclose “within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008). We agree with the Examiner’s finding that Klassen discloses uploading images to an online image repository, such as for example FlickrTM (Ans. 6, 12; FF3). However, what is missing from the Examiner’s analysis is a showing by way of persuasive evidence or explanation as to why the process of uploading the image folder necessarily requires the use of a temporary folder for sending the images to a contact list or moving the images to a different folder as required by claim 2. The Examiner also has not pointed to any persuasive evidence in this record that would suggest the method of Klassen to include creating or removing folders from the remote platform as required by claim 10. Accordingly, based on the record before us, we are persuaded that the Examiner erred in finding claims 2 and 10 anticipated. In sum, as we are not persuaded, for the reasons discussed, that the Examiner has adequately explained how Klassen describes, within the meaning of 35 U.S.C. § 102, uploading the image to a temporary folder as Appeal 2012-002098 Application 11/947,917 14 required by claim 2, or the creation or removal of folders as required by claim 10, we reverse the Examiner’s anticipation rejection with respect to these claims. III. Obviousness over Klassen and Haas We adopt the Examiner’s findings and reasoning as our own (see Ans. 10 & 14). For the obviousness rejection of claim 3, Appellants contend that Haas “does not cure the previously argued deficiencies in Klassen” (App. Br. 12) and thereby is insufficient to suggest all the elements. Appellants contend that “[t]he conventional HELP function for organizing and viewing data in Hass at al. does not allow quick and easy uploading images directly to an account of the user or other users, without user intervention.” (Id.) That argument is unpersuasive because, as explained in the “Anticipation” section above, we disagree that Klassen is deficient with regard to the limitation “without user intervention” as recited in claim 1. Accordingly, we affirm the rejection of claim 3 under 35 U.S.C. § 103(a). SUMMARY We reverse the rejection of claims 1-10, 12-17, and 20-24 under 35 U.S.C. § 112, first paragraph. We affirm the rejection of claims 1, 4-9, 12-17, and 20-24 under 35 U.S.C. § 102(e) as anticipated by Klassen. We reverse the rejection of claims 2 and 10 under 35 U.S.C. § 102(e) as anticipated by Klassen. We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) over Klassen in view of Hass. Appeal 2012-002098 Application 11/947,917 15 TIME PERIOD FOR RESPONSE 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-IN-PART cdc Copy with citationCopy as parenthetical citation