PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals Board

May 4, 2021

2019006729 (P.T.A.B. May. 4, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/309,296 11/07/2016 YAWEN CHEN 2014P00146WOUS01 2464
138325 7590 05/04/2021
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
KHAN, USMAN A
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
05/04/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YAWEN CHEN, SHENG PENG, XIAODAN TANG,
SHUGUANG KUAI, and KANGJUN LIU
________________

Appeal 2019-006729
Application 15/309,296
Technology Center 2600
________________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 8–12, and 14–23. Claims 6, 7, and
13 are canceled. Appeal Br. 19, 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm in part.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as PHILIPS LIGHTING HOLDING B.V.
Appeal Br. 4.
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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to a camera that enables a
user to specify a “desired modification to an image displayed on the screen
to produce a desired modified image.” Abstract. “Required light output
characteristics of a lighting device are then derived so that subsequent
captured images using the altered lighting are closer to the desired modified
image.” Id.
EXEMPLARY CLAIMS
(disputed limitations emphasized and bracketing added)
1. A device comprising:
a camera;
a screen for displaying a first image captured by the
camera;
a user input interface; and
a processor, wherein the processor is adapted to:
communicate with at least one lighting device
illuminating a scene;
[1] receive a user input representing a desired
modification to the image displayed on the screen
showing the scene; and
[2] derive required light output characteristics of the at
least one lighting device to change the illumination of the
scene such that subsequent captured images reflect the
desired modification, [3] wherein the processor is
configured to derive said light output characteristics by
determining a difference between first image
characteristics of said first image and second image
characteristics of a desired modified image including
said desired modification.
21. A device as claimed in claim 20, [4] wherein the difference
between the first image characteristics and the second image
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characteristics is a first difference, and wherein the processor
is configured to derive said light output characteristics based
on the first difference so that a second difference between third
image characteristics, of a third image of the scene having the
light output characteristics captured by the camera, and said
second image characteristics is less than said first difference.
Appeal Br. 18, 21 (Claims App.).
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Sugimoto US 2004/0233296 A1 Nov. 25, 2004
Park et al. (“Park”) US 2008/0266412 A1 Oct. 30, 2008
Chou et al. (“Chou”) US 2010/0165178 A1 July 1, 2010
Gouji et al. (“Gouji”) US 2013/0193853 A1 Aug. 1, 2013
REJECTIONS
The Examiner rejects claims 21 and 23 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 5–6.
The Examiner rejects claims 1–5, 9–11, 142, 15, 17, 19, 20, and 22
under 35 U.S.C. § 103 as obvious over Park and Chou. Final Act. 6–14.
The Examiner rejects claims 8 and 12 under 35 U.S.C. § 103 as
obvious over Park, Chou, and Sugimoto. Final Act. 14–16.

2 In the event of further prosecution, Appellant and the Examiner should
ascertain whether claim 14, which is directed to a “[c]omputer-program
product downloadable from a communication network and/or stored on a
non-transitory computer-readable and/or microprocessor-executable
medium” is directed to software per se or a signal, and thus is not directed to
a category of patentable subject matter. See MPEP § 2106.03; Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential-in-part).
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The Examiner rejects claims 16 and 18 under 35 U.S.C. § 103 as
obvious over Park, Chou, Sugimoto, and Gouji. Final Act. 17–19.
ADOPTION OF EXAMINER’S FINDINGS AND CONCLUSIONS
Except as detailed below with respect to the Examiner’s 35 U.S.C.
§ 112(a) rejection of claims 21 and 23, we agree with and adopt as our own
the Examiner’s findings as set forth in the Answer and in the Final Action
from which this appeal was taken, and we concur with the Examiner’s
conclusions. We have considered Appellant’s arguments, but, in connection
with the rejections under 35 U.S.C. § 103, we do not find them persuasive of
error. We provide the following explanations for clarity and emphasis.
ANALYSIS
35 U.S.C. § 112(a) – Claims 21 and 23
In rejecting claim 21 as failing to comply with the written description
requirement, the Examiner finds that limitation [4],
wherein the difference between the first image characteristics
and the second image characteristics is a first difference, and
wherein the processor is configured to derive said light output
characteristics based on the first difference so that a second
difference between third image characteristics, of a third image
of the scene having the light output characteristics captured by
the camera, and said second image characteristics is less than
said first difference,
is not disclosed in the Specification. Final Act. 6; Ans. 9.
Appellant submits that the claim recitation encompasses iteratively
changing light output and image capture so that the difference between
characteristics of subsequent images and a modified image selected by the
user converge toward zero, which Appellant contends is supported by the
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Specification. Appeal Br. 16; Reply Br. 11–15. Appellant’s arguments
accord with the Specification, which discloses that if “a first adjustment to
the light output does not achieve the desired modification to the image, the
set of assumptions [used as the basis for changing lighting conditions] can
be changed so that the next iteration may give better results.” Spec. 10:22–
24 (cited in Appeal Br. 5, 16; Reply Br. 13–14). That is, the Specification
discloses determining to what extent changing lighting characteristics
resulted in a captured image reflecting the desired modification (i.e.,
determining a first difference), further adjusting the lighting characteristics,
and capturing another image that more closely reflects the desired
modification (i.e., wherein a second difference is less than the first
difference).
The Examiner fails to provide a substantive response to Appellant’s
characterizations of the Specification and the scope of the disputed claim
recitation. Rather, the Examiner merely offers the conclusory statement that
recitation [4] is “still considered to be failing to comply with the written
description requirement.” Ans. 8. As such, based on the record before us, we
determine that the Specification reasonably conveys to those of ordinary
skill in the art that the inventors had possession of the claimed invention,
including recitation [4], as of the filing date for the application.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112(a)
rejection of claim 21, and the Examiner’s 35 U.S.C. § 112(a) rejection of
claim 23, which is similarly rejected. Final Act. 5–6.
35 U.S.C. § 103 – Claims 1–5, 8–12, 14–20, and 22
In rejecting claim 1 as obvious, the Examiner finds that Park, by
accepting a user selection of a camera setting through selection of an image
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illustrating the effect of the setting, teaches recitation [1], “receiv[ing] a user
input representing a desired modification to the image displayed on the
screen showing the scene.” Final Act. 7 (citing Park Fig. 5); Ans. 4. The
Examiner finds Park’s photographing of an image according to the selected
setup information teaches recitation [2], “deriv[ing] required light output
characteristics of the at least one lighting device to change the illumination
of the scene such that subsequent captured images reflect the desired
modification.” Final Act. 7 (citing Park Figs. 5, 7B–C); Ans. 3–4. The
Examiner relies on Chou’s flash intensity calculations to teach or suggest
modifying Park in the manner recitation [3] such that the light output
characteristics are derived “by determining a difference between first image
characteristics of said first image and second image characteristics of a
desired modified image including said desired modification.” Final Act. 7–8
(citing Chou Figs. 1–3, 5, 6); Ans. 4.
Appellant contends the Examiner erred because rather than teaching
reciting a desired modification from the user, Park “teaches that two images
with different flash settings are taken and displayed to permit a user to
choose the most appropriate image, and the user selects one of the images
for storage.” Appeal Br. 10. Specifically, Appellant argues that “with Park, a
camera device captures and displays an image according to current camera
settings, a user changes flash on/off settings, the device captures and
displays an image according to the new flash settings and the user selects
one of the two images for storage in the camera’s memory.” Id. (citing Park
¶¶ 84, 86–89, Fig. 5); Reply Br. 5.
Appellant’s argument is not persuasive because even if taking
multiple images using different display settings would have been a known
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method of using Park’s device, Park also discloses displaying setup
information as a selection of images to choose from (i.e., as a desired
modification to an image displayed rather than as a selection from among
images previously captured). Park ¶ 96, Figs. 8A–B. Thus, we agree with the
Examiner that Park teaches or suggests recitation [1].
Appellant further argues that Chou’s “device captures images with
[first and second] pre-flash settings” and “pixel values of each image are
compared to a threshold” such that “either the first or the second preset flash
image is selected based on the number of pixels in each image that exceed a
threshold.” Appeal Br. 10 (citing Chou ¶¶ 36, 39, Figs. 1, 2). Appellant
submits that “the main flash output is implemented based on the selected
pre-flash image and then the image taken with the main flash output is
displayed.” Id. (citing Chou ¶¶ 36, 38, Figs. 1, 2). Thus, Appellant contends
that a “simple combination” of Park and Chou “would result in the main
flash output of Park being selected by the device based on the pre-flash
images of Chou.” Id. Appellant further argues that “if the pre-flash images
of Chou were displayed to allow a user to select the best setting as in Park,
there would be no reason to perform the comparison of the pre-flash images
to a threshold standard.” Id. at 11.
Appellant’s arguments are not persuasive because they either attack
Park and Chou individually (Ans. 4–5) or fail to take into consideration all
that the Park and Chou teach and suggest (see In re Mouttet, 686 F.3d 1322,
1331 (Fed. Cir. 2012)). In particular, Chou teaches that in choosing which of
the two pre-flash images to use for purposes of calculating a flash intensity,
Chou’s device relies on a preset pixel threshold value. Chou Figs. 1, 2. Chou
further teaches comparing values derived from luminescent values of the
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images to luminescent standards that indicates, for example, either
overexposure or insufficient exposure. Id. ¶¶ 17–18. Presetting such
luminescent standards to accord with selection of an image representing a
desired modification (as Park teaches or suggests) would have been obvious
to an artisan of ordinary skill in the art to allow the user to select one of a
number of different image brightnesses to capture. See Ans. 6 (citing Park
Figs. 7B–C, 8A–B; Chou Figs. 1–3, 5, 6). Specifically, an artisan would
have recognized that how bright the user desires the captured image to be
affects what exposure levels would be considered overexposed or
underexposed. For example, proper exposure levels for night-time and day-
time scenes would likely vary greatly. Thus, we agree with the Examiner
that it would have been obvious to an artisan of ordinary skill to modify Park
to use a selected desired modification (e.g., a brightness level for an image)
to determine a threshold for use in determining a flash intensity to use for
capturing an image, as Chou teaches or suggests. Final Act. 7–8. Therefore,
we agree with the Examiner that the combination of Park and Chou teaches
or suggests recitations [2] and [3].
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 1, and claims 2–5, 8–12, 14–20, and 22, which Appellant
unpersuasively argues are patentable for similar reasons. Appeal Br. 12–15.
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CONCLUSION
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 23 112(a) Written
Description
21, 23
1–5, 9–11, 14,
15, 17, 19, 20,
22
103 Park, Chou 1–5, 9–
11, 14,
15, 17,
19, 20, 22

8, 12 103 Park, Chou,
Sugimoto
8, 12
16, 18 103 Park, Chou,
Sugimoto, Gouji
16, 18
Overall
Outcome
1–5, 8–
12, 14–
20, 22
21, 23
TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART