TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

Sep 29, 2021

2020005231 (P.T.A.B. Sep. 29, 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.
16/357,123 03/18/2019 Woo Chang CHUN P76021-US9 8185
27045 7590 09/29/2021
ERICSSON INC.
6300 LEGACY DRIVE
M/S EVR 1-C-11
PLANO, TX 75024
EXAMINER
KHAN, USMAN A
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
09/29/2021 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):
amber.rodgers@ericsson.com
michelle.sanderson@ericsson.com
pam.ewing@ericsson.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOO CHANG CHUN, JIN SANG YUN, and JA WON KOO
____________

Appeal 2020-005231
Application 16/357,123
Technology Center 2600
____________

Before KARL D. EASTHOM, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a Final
Office Action rejecting claims 1–5, 8–16, and 19–22, which constitute all of
the pending claims. Claims 6, 7, 17, 18, and 23 have been cancelled.
Appeal Br. 16, 18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
The Specification states that the invention relates generally “to
photographing images, and more particularly, to a mobile terminal capable
of controlling a camera efficiently and conveniently to capture an image and
a method of photographing an image using the same.” Spec. ¶ 2.2 The
Specification explains that “a touch screen has been adopted by a variety of
terminals including mobile terminals” to perform “complex functions . . .
includ[ng] capturing images and video.” Id. ¶¶ 3, 5. The Specification
further explains that “efforts have been made to diversify the complex
functions of the terminals as multimedia players according to the needs of
users and to provide a user interface (UI) capable of performing these
functions conveniently.” Id. ¶ 5. Hence, the invention endeavors to
“control[] a camera using a touch screen conveniently and efficiently to
effectively photograph a desired image.” Id. ¶ 6.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows:
1. A mobile terminal comprising:
a camera configured to capture an image,
a touch screen configured to receive a touch input, and
a processor configured to:

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed March 18, 2019; “Final Act.” for the Final Office
Action, mailed October 7, 2019; “Appeal Br.” for the Appeal Brief, filed
March 6, 2020; “Ans.” for the Examiner’s Answer, mailed May 5, 2020; and
“Reply Br.” for the Reply Brief, filed July 6, 2020.
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control the touch screen to display a preview
image of an image to be captured by the camera,
control the touch screen to display an auto focus
guide,
determine a first touch input received by the touch
screen is a drag-and-drop touch,
control the touch screen to move the auto focus
guide to a position on the preview image where the drop has
occurred, and
control the camera to auto focus on an object
present at the position where the auto focus guide is
displayed;
control the camera to capture the image based on
recognizing a release of the first touch input wherein the
processor is further configured to control the camera to
capture the image after a preset period of time has elapsed
from the release of the first touch input.
Appeal Br. 15 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
Name Reference Date
Ishiguro et al. (“Ishiguro”) US 5,970,261 Oct. 19, 1999
Hyodo et al. (“Hyodo”) US 7,034,881 B1 Apr. 25, 2006
Tanaka US 2004/0189856 A1 Sept. 30, 2004
Higashino US 2007/0018069 A1 Jan. 25, 2007
Terashima US 2007/0296848 A1 Dec. 27, 2007
Hyatt US 2008/0044171 A1 Feb. 21, 2008
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The Rejections on Appeal
Claims 1–4 and 12–15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Higashino, Hyodo, and Tanaka. Final Act. 5–11.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103 as unpatentable
over Higashino, Hyodo, Tanaka, and Ishiguro. Final Act. 11–12.
Claims 8 and 19 stand rejected under 35 U.S.C. § 103 as unpatentable
over Higashino, Hyodo, Tanaka, and Terashima. Final Act. 13–15.
Claims 9–11 and 20–22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Higashino, Hyodo, Tanaka, and Hyatt. Final Act. 15–18.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. Based on the record before us and for the reasons
explained below, we agree with Appellant that the Examiner erred in finding
that the cited portions of the references teach or suggest the claimed subject
matter. We provide the following to address and emphasize specific
findings and arguments.
The § 103 Rejection of Claims 1–4 and 12–15
Independent Claims 1 and 12
As noted above, the § 103 rejection of independent claims 1 and 12
rest on Higashino, Hyodo, and Tanaka. Final Act. 5–6, 2–4. Claim 1
recites, inter alia, “control the camera to capture the image based on
recognizing a release of the first touch input wherein the processor is further
configured to control the camera to capture the image after a preset period of
time has elapsed from the release of the first touch input.” Appeal Br. 15.
Claim 12 includes a similar limitation. Id. at 17. The Examiner finds the
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combination of Hyodo and Tanaka teaches that disputed claim limitations.
Final Act. 5–6.
The Examiner finds Hyodo teaches “control[ling] the camera to
capture the image based on recognizing a release of the first touch input
(figure 6 items S110 – S112 capture after release of input)”. Final Act. 5;
see also Ans. 5 (citing Hyodo col. 8, ll. 13–24). The Examiner further finds
that “Tanaka teaches wherein the processor is further configured to control
the camera to capture the image after a preset period of time has elapsed
from the release of the first touch input (paragraphs 0022 - 0025, 0067 -
0284 touch; also paragraph 0126 self timer).” Final Act. 6.
Appellant argues that Tanaka’s “simple listing of a self-timer feature”
does not teach “caus[ing] the capture of an image after a preset period of
time has elapsed from the release of a touch input.” Appeal Br. 8.
Specifically, Appellant argues that nothing in Tanaka describes how the self-
timer operates, “let alone that it causes an image to be captured after a preset
period of time has elapsed from the release of the first touch input.”
Reply Br. 3. According to Appellant, “it could be that the self-timer starts
once a touch is detected, and not after the release of the touch input.” Id. at
2. Appellant further argues that Hyodo’s “touch” is what “captures the
image, not the release of the touch.” Appeal Br. 9.
Based on the record before us, we agree with Appellant that the
Examiner erred. Although Tanaka teaches a “self-timer” for the camera,
Tanaka is silent on what triggers the self-timer to begin. See Tanaka ¶ 126,
Fig. 12. In other words, Tanaka is silent as to whether the timer begins
when a button is pressed or when a button is released. See Tanaka ¶ 126,
Fig. 12. According, the record cited by the Examiner does not support the
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Examiner’s finding that “Tanaka teaches wherein the processor is further
configured to control the camera to capture the image after a preset period of
time has elapsed from the release of the first touch input.” See Final Act. 6.
Nor does the cited portion of Hyodo support the Examiner’s finding.
In the cited portions, Hyodo discloses that “[a]fter the image on the display
part 10 is confirmed . . . the release button 20 is touched or the screen is
touched twice in rapid succession (double-clicked) so as to direct that the
image be stored.” Hyodo, col. 8, ll. 13–16. In other words, Hyodo describes
touching the release button or the screen to trigger capturing the image.
However, because Hyodo’s capturing of the image is triggered by the touch
input, it is not triggered by the release of the touch input as required by the
claim. Thus, based on the Examiner’s findings, when Tanaka’s self-timer is
combined with Hyodo, the timer would begin when the user presses the
button, not when the button is released as recited in the claims.3
Accordingly, we agree with Appellant the Examiner’s finding that
Hyodo in view of Tanaka teaches the disputed limitation is in error because
it is not supported by a preponderance of the evidence. See In re Caveney,
761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-
patentability is by a preponderance of the evidence); see also In re Warner,

3 This is not to say that changing the start of the timer from when the button
is pressed to when the button is released would not have been a routine
design choice or obvious to try. The Examiner did not analyze whether that
change would have been a routine design choice or obvious to try. Although
the Board is authorized to enter a new ground of rejection to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so in this case based on those rationales. See MPEP 1213.02
(9th Ed., Rev. 10.2019, June 2020).

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379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”). Therefore, based on the current record, we are constrained to
reverse the Examiner’s rejection of claims 1 and 12.
Dependent Claims 2–4 and 13–15
Claims 2–4 depend directly from claim 1; and claims 13–15 depend
directly from claim 12. For the reasons discussed for claims 1 and 12, we do
not sustain the § 103 rejection of these dependent claims.
Dependent Claims 5, 8–11, 16, and 19–22
Claims 5 and 8–11 depend directly or indirectly from claim 1; and
claims 16 and 19–22 depend directly or indirectly from claim 12. On this
record, the Examiner has not shown how the additionally cited references—
Ishiguro, Terashima, and Hyatt—overcome the deficiency in Tanaka and
Hyodo discussed above for claims 1 and 12. Hence, for the reasons
discussed for claims 1 and 12, we do not sustain the § 103 rejections of
claims 5, 8–11, 16, and 19–22.
CONCLUSION
We reverse the Examiner’s decision to reject claims 1–5, 8–16, and
19–22.
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–4, 12–15 103 Higashino, Hyodo, Tanaka 1–4, 12–15
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Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
5, 16 103 Higashino, Hyodo, Tanaka, Ishiguro 5, 16
8, 19 103 Higashino, Hyodo, Tanaka, Terashima 8, 19
9–11, 20–22 103 Higashino, Hyodo, Tanaka, Hyatt 9–11, 20–22
Overall
Outcome
1–5, 8–16,
19–22
REVERSED