Ex Parte Zhang et al

Patent Trial and Appeal Board

May 29, 2014

11947917 (P.T.A.B. May. 29, 2014)

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).
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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.
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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,

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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
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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.
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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.)
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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.
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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).
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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
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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
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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
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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
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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.
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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

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