Ex Parte Cok et al

Patent Trials and Appeals Board

Jun 12, 2019

13074403 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/074,403 03/29/2011
24633 7590 06/14/2019
HOGAN LOVELLS US LLP
IP GROUP, COLUMBIA SQUARE
555 THIRTEENTH STREET, N.W.
WASHINGTON, DC 20004
FIRST NAMED INVENTOR
Ronald Steven Cok
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
41667-349012 9721
EXAMINER
ALMAN!, MOHSEN
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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):
HLUSDocketing@hoganlovells.com
dcptopatent@hoganlovells.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD STEVEN COK and PETER KARL TRAEG
Appeal 2018-007 496
Application 13/074,403
Technology Center 2100
Before ALLEN R. MacDONALD, KAL YANK. DESHPANDE, and
IFTIKHAR AHMED, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 3, 5-7, 9, 10, 12-16, 20, and 22-26. Appellants have cancelled
claims 2, 4, 8, 11, 17-19, and 21. App. Br. 18-20 (Claims App'x). We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants indicate the real party in interest is Kodak Alaris Inc. App.
Br. 3.
Appeal 2018-007 496
Application 13/074,403
Illustrative Claim2
Illustrative claim 1 under appeal reads as follows ( emphases,
formatting, and bracketed material added):
1. A computer-implemented method for forming a multi-media
image product, comprising:
[A.] providing a storage location for storing a multi-media image
collection on a server computer;
[B.] associating an identifier and a code with the storage location;
[C.] distributing the identifier and the code to a plurality of
individuals;
[D.] receiving the identifier, the code, and one or more images from a
first individual;
[E.] responsive to receiving the identifier, the code, and the one or
more images, confirming that the identifier and the code are
associated with the storage location and automatically associating
the one or more images with the multi-media image collection;
[F.] receiving the identifier, the code, and one or more annotations
from a second individual;
[G.] responsive to receiving the identifier, the code, and the one or
more annotations, confirming that the identifier and the code are
associated with the storage location and automatically associating
at least one of the annotations with at least one of the images
received from the first individual;
[H.] receiving a selection specifying a type of multi-media image
product, wherein the type of multi-media image product is
selected from the group consisting of a hard-copy product and a
digital product;
[I.] responsive to the selection, applying a first set of preset product
rules when the selection is the hard-copy product, the first set of
preset product rules specifies the presentation location of at least
one textual annotation in association with at least one image;
2 All Manual of Patent Examining Procedure ("MPEP") citations herein are
to MPEP Rev. 08.2017, January 2018.
2
Appeal 2018-007 496
Application 13/074,403
[J.] responsive to the selection, applying a second set of preset
product rules when the selection is the digital product, the
second set of preset product rules specifies the presentation
location of at least one textual annotation in association with at
least one image and specifies the playback control of at least one
audio or video annotation in association with at least one image;
and
[K.] making a multi-media image product in accordance with the
selection and the applied first or the applied second set of preset
product rules, wherein the multi-media image product comprises
at least one image received from the first individual in association
with at least one annotation received from the second individual.
Heitzeberg et al.
Olson et al.
References3
US 2007 /0220092 Al
US 2010/0070573 Al
Rejection4
Sept. 20, 2007
Mar. 18, 2010
The Examiner rejected claims 1, 3, 5-7, 9, 10, 12-16, 20, and 22-26
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Heitzeberg and Olson. Non-Final Act. 2-15.
We select claim 1 as the representative claim for this rejection.
Appellants do not argue separate patentability for claims 3, 5-7, 9, 10, 12-
16, 20, and 22-26. Except for our ultimate decision, we do not address
claims 3, 5-7, 9, 10, 12-16, 20, and 22-26 further herein.
3 All citations herein to the references are by reference to the first named
inventor only.
4 All citations herein to the "Non-Final Action" are to a Non-Final Action
mailed on May 19, 2017.
3
Appeal 2018-007 496
Application 13/074,403
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions.
1.
As to above step I of claim 1 ("applying a first set of preset product
rules when the selection is the hard-copy product"), Appellants contend that
the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because:
First, Olson does not teach, suggest, or otherwise disclose that
the "customization features" are preset. On the contrary, Olson's
whole design is for each user to be able to differentiate her
yearbook content from the next person. . . . This is counter to the
idea that there are preset product rules for all users, as claimed
in the present application.
App. Br. 12 (emphases added). Appellants further contend:
Second, Olson does not teach, suggest, or otherwise disclose that
a set of product rules is applied specifically if the student selects
a paper-form yearbook. In fact, Olson does not make any
distinction between content display options for a paper-form
yearbook as compared to an electronic format yearbook.
App. Br. 12-13 (emphasis added).
Third, Olson does not teach, suggest, or otherwise disclose
product rules that consistently specify the presentation location
of at least one textual annotation. The Office Action
acknowledges that Olson discloses that yearbooks may contain
textual annotations, (Id. at [0064]), but Olson does not disclose
4
Appeal 2018-007 496
Application 13/074,403
that the presentation location of such annotations is specified as
a component of a set of present product rules.
App. Br. 13 ( emphasis added).
As to Appellants' above assertions, we are not persuaded that the
Examiner erred. First, contrary to Appellants' assertion, claim 1 does not
require "that there are preset product rules/or all users." App. Br. 12
(emphasis added). Claim 1 does not recite "user." Also, Olson explicitly
states:
[I]n some embodiments, all users ( e.g. students) are provided
with the same yearbook content and all users see the same
content along with all of the robust features provided with the
present invention. . . . In such, the user is provided a standard,
un-customized version or view of the yearbook 462. In such, it
is preferred, though not required, that the yearbook be in a final
or close-to-final state so that the user is working with a version
that has content that is somewhat stable. In this exemplary
method, the user accesses a yearbook customization utility 464.
Olson ,i 72 (emphasis added). For any user that prints the un-customized
version of the yearbook, the program instructions (product rules) to format
the presentation will be the defaults (presets) built into the system.
Otherwise, Olson would be inoperative.
Second, we disagree with Appellants that Olson does not suggest a set
of product rules is applied specifically if the student selects a paper-form
yearbook and other rules are applied to an electronic format yearbook.
Appellants overlook that in Olson:
The present invention further includes other forms of content
not available with a paper yearbook such as video segments,
music, current events, audio segments ( e.g., voice signatures),
etc.
5
Appeal 2018-007 496
Application 13/074,403
Olson ,i 38 (emphasis added). Contrary to Appellants' premise, other forms
of content not available in paper is suggestive of a different set of product
presentation instructions (product rules) for digital content of an electronic
format yearbook.
Third, we disagree with Appellants that Olson does not disclose that
the presentation location of an annotation is specified as a component of a
set of present product rules. Appellants overlook that Olson specifies a
location where a text annotation is to be placed:
In this example, one picture 70 is signed or written upon 74 by
another user. In the example shown, the text message 7 4 1s
overlaid upon the other user's photograph 70.
Olson ,i 63 ( emphasis added). The presentation instructions for such a text
annotation are not precluded by the claimed product rules.
2.
Also, as to above steps J and K of claim 1, Appellants present the
same or analogous arguments as presented for above step I of claim 1. App.
Br. 13-15. For the reasons discussed directly above, we are not persuaded
that the Examiner erred.
3.
Further, Appellants contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
[T]he § 103 rejection is improper and should be reversed
because the Examiner fails to articulate a prima facie case of
obviousness. . . . [T]he Supreme Court in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. [398] (2007) noted that the analysis
supporting a rejection under § 103 should be made explicit. ...
Here, the Examiner's § 103 rejection is entirely devoid of
any explicit rationale.
6
Appeal 2018-007 496
Application 13/074,403
App. Br. 15 ( emphasis added).
As to Appellants' above assertion, we are not persuaded that the
Examiner erred. In support of the rejection, the Examiner sets forth a clear
articulated reasoning at pages 3-7 of the Non-Final Action. Appellants cite
no case law to support their position that a more complex articulated
reasoning is always required. Rather, as set forth by the Court in KSR, in
some circumstances ( e.g., mere substitution) the required analysis is
minimal, while in complex circumstances "this analysis should be made
explicit." KSR, 550 U.S. at 418. The situation before us is one of mere
substitution rendering nothing more than predictable results, i.e., substituting
Olson's detailed multi-media content creation steps for the multi-media
content creation in Heitzeberg. We conclude the Examiner's analysis is
sufficient for the simple circumstances before us. We find the Examiner's
conclusion ( and analysis) well founded.
Further, Appellants have not presented evidence sufficient to show
that combining the prior art was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citingKSR, 550 U.S. at 418-19).
4.
Furthermore, Appellants contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
Heitzeberg does not disclose, teach, or suggest anything about
forming a multi-media image product.
App. Br. 10 ( emphasis added).
Heitzeberg is unrelated entirely to forming multi-media image
products, like the yearbooks disclosed by Olson and like the
7
Appeal 2018-007 496
Application 13/074,403
products claimed in the present application. . . . Accordingly,
there is no teaching, suggestion, or motivation to combine the
features of Heitzeberg' s interactive online community forum
with the features of Olson's yearbook comp[il]ation and delivery
system.
App. Br. 16 ( emphasis added).
As to Appellants' above assertion, we are not persuaded that the
Examiner erred. First, Appellants improperly characterize Examiner's
specific statement that Heitzeberg does not teach a multi-media image
product with specific claimed details (above claim 1 steps H-K) as a general
statement that Heitzeberg does not show "anything" about forming a multi-
media image product.
Second, we are not persuaded by Appellants that Heitzeberg does not
show "anything" about and is entirely unrelated to forming a multi-media
image product. Rather, Heitzeberg explicitly states otherwise.
What is desired is a system and associated apparatus and methods
of providing multi-media communication capabilities (audio,
video, and/or text) to both mobile and online members of a group
to enable the creation, management, and access of voice
messages, audio, video, text or other content by those members,
and which overcomes the disadvantages of present approaches.
Heitzeberg ,-J 19 ( emphasis added).
The invention creates a model of a voice bulletin board or voice
forum which may be used by community members to create
voice messages or multimedia content and enable those
messages or content to be accessed, commented upon, or
supplemented by other members of the community.
Heitzeberg ,-J 33 ( emphasis added).
8
Appeal 2018-007 496
Application 13/074,403
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3, 5-7, 9, 10,
12-16, 20, and 22-26 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 3, 5-7, 9, 10, 12-16, 20, and 22-26 are not patentable.
DECISION
The Examiner's rejections of claims 1, 3, 5-7, 9, 10, 12-16, 20, and
22-26 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
9