Ex Parte Diaz et al

Patent Trial and Appeal Board

Jul 20, 2016

12945819 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/945,819 11/12/2010 Raul Diaz
32566 7590 07/22/2016
PA TENT LAW GROUP LLP
465 Fairchild Drive
Suite 125
Mountain View, CA 94043
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.
ARC-LWl 8617
EXAMINER
TARKO,ASMAMAWG
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
sandy@patentlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAUL DIAZ and HUI DENG
Appeal2015-004208
Application 12/945,819
Technology Center 2400
Before THU A. DANG, LARRY J. HUME, and
NORMAN H. BEAMER, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-11, 15, 17-19, 21, and 22. Claims 12-14, 16,
and 20 have been canceled (Fin. Action 2). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
A. INVENTION
According to Appellants, the invention relates to "image taking and
processing" (Spec. 1, 11. 5---6).
Appeal2015-004208
Application 12/945,819
B. REPRESENTATIVE CLAHvIS
Claims 1 and 9 are exemplary:
1. An apparatus for taking and processing images,
compnsmg:
(a) at least one front facing camera;
(b) at least one back facing camera;
( c) a controller enabling the front facing and back facing
cameras to take images at predetermined times;
(d) a processor to:
combine the images; and
verify an image-taker captured by the at least one front
facing camera is a real person; and
( e) a memory to store the images.
9. A method for taking and processing images, the method
compnsmg:
(a) configuring a front facing camera for taking a first image;
(b) configuring a back facing camera for taking a second image;
( c) taking the first and the second images with the front and
back facing cameras at predetermined times, wherein an image-
taker can set the times;
(d) processing the first and the second images to generate a
third image where the first image comprises a part of a data
section of the third image, a watermark on the third image, or a
digital signature of the third image; and
( e) storing the third image.
C. REJECTION
1. Claims 1, 4--11, 15, 17-19, 21, and 22 stand rejected under
35 U.S.C. § 102(a) as being anticipated by Garcia Manchado (US
2012/0008011 Al, published Jan. 12, 2012).
2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garica Manchado and Neff (US 2008/0125972 Al,
published May 29, 2008).
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Application 12/945,819
IL ISSUES
The principal issues before us are whether the Examiner erred in
finding that Garcia Manchado teaches the claimed:
1) "a processor to ... verify an image-taker captured ... is a real
person" (claim 1 ).
2) processing first and second images to "generate a third image"
where the first image "comprises ... a digital signature of the third image"
(claim 9).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants 'Invention
1. Appellants' disclosed and claimed invention is directed to a
device with front and back facing cameras, wherein Figure 4 is reproduced
below:
400
As Figure 4 shows, tablet computer 400 is equipped with a front
facing camera 410, a back facing camera on the opposite side of the tablet
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Application 12/945,819
computer, and a screen 460 for displaying images and the combined image
450 (p. 6, Home screen).
2. To verify that the image taken by the back facing camera is by a
real personal, the front facing cameras can conduct blink detection, face
recognition, or take stereoscopic or moving images to improve the reliability
of the verification (p. 6, 11. 1--4).
Garcia Manchado
3. Garcia Manchado discloses a digital camera provided with
several lenses such that several images are captured simultaneously (ii 1 ),
wherein Figure 5 is reproduced below:
FIG. 5
Figure 5 shows a larger sized primary image 8 with two persons
acting as model, and a smaller sized additional image with the face of the
photographer at the moment in which the picture was taken (ii 29).
4. The digital camera includes a means for adding a digital
signature (ii 15) of the photographer (ii 31 ), and an image recognition means
for recognizing the people appearing in the images (ii 16) including the
photographer (ii 33).
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Application 12/945,819
IV. ANALYSIS
With respect to claim 1, Appellants concede Garcia Manchado
discloses an "image recognition means for its known purpose, which is to
recognize people in images" (App. Br. 4). However, Appellants contend
Garcia Manchado "does not disclose using the result to determine if an
image-taker is a real person" and thus "the Examiner is using impermissible
hindsight gathered from the present disclosure to modify camera 1 of Garcia
Manchado" (id.).
We consider all of Appellants' arguments and evidence presented, and
disagree with Appellants' contentions regarding the Examiner's rejection of
the claim.
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, "limitations are
not to be read into the claims from the specification." In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
Although Appellants contend that Garcia Manchado "does not
disclose using the result to determine if an image-taker is a real person"
(App. Br. 4, emphasis added), such contention is not commensurate in scope
with the specific recited language of independent claim 1. That is, claim 1
does not require determining "if' an image-taker is a real person, but rather,
independent claim 1 merely requires verifying that an image-taker captured
"is" a real person (claim 1 ). According to Appellants' Specification,
verification that the image taken (FF 1) is by a real person can be conducted
using face recognition or the like (FF 2). However, Appellants'
Specification does not define as to what encompasses a "real" person. Thus,
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Application 12/945,819
giving the claim its broadest, reasonable interpretation consistent with the
Specification, we conclude claim 1 's verifying that the image-taker is a "real
person" encompasses using face recognition of the image-taker to determine
that the image-taker is a "real" person, i.e., not a false person.
We note that, although Appellants also contend, "the Examiner is
using impermissible hindsight" (App. Br. 4), similar to a "teaching away"
argument, 1 "hindsight" is irrelevant to an anticipation rejection since
anticipation is based upon whether or not the cited reference describes the
claimed invention. 2
Garcia Manchado discloses a digital camera that captures the image of
the image-taker (FF 3), similar to the device of the claimed invention (FF 1 ).
In Garcia Manchado, an image recognition means is provided (FF 4), similar
to the face recognition means of the claimed invention (FF 2). Even
Appellants concede Garcia Manchado discloses an "image recognition
means" (App. Br. 4). That is, Garcia Manchado discloses recognizing the
image-taker, i.e., verifying that the image-taker is a particular, real (i.e., not
false) person (FF 4). In view of the broadest, reasonable interpretation of the
claim consistent with the Specification, we find no error with the Examiner's
reliance on Garcia Manchado for disclosing a processor to "verify an image-
taker captured ... is a real person," as recited by claim 1.
1 See Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380
(Fed. Cir. 2005). "Teaching away is irrelevant to anticipation."
2 Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed
element and the claimed arrangement or combination of those elements is
disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010).
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On this record, we find no error in the Examiner's rejection of claim 1
and dependent claims 4--8 falling therewith (App. Br. 4), as being
anticipated by Garcia Manchado.
As for claim 9, Appellants merely contend, "Garcia Manchado does
not disclose additional image 9 is part of a data section of the combined
image, a water mark on the combined image, or a digital signature of the
combined image" (App. Br. 5, citing claim 9). However, Garcia Manchado
discloses adding a digital signature of the photographer 9 to the image 8 of
the photographer (FF 3). Thus, contrary to Appellants' contention that
"Garcia Manchado does not disclose combining image 9 as ... a digital
signature in image 8" (Reply Br. 2), we find no error with the Examiner's
reliance on Garcia Manchado for also disclosing processing first and second
images to "generate a third image" where the first image "comprises ... or a
digital signature of the third image," as recited in claim 9 (emphasis added).
On this record, we find no error in the Examiner's rejection of
claim 9, and dependent claims 10, 11, and 17-19 falling therewith (App. Br.
5), as being anticipated by Garcia Manchado.
As for independent claims 15 and 21, the Examiner rejects the claims
as "drawn to the method using the corresponding apparatus claimed in
claims 1 and 4--8" (Final Rej. 4). However, with respect to claim 15, as
Appellants contend, the claim recites "'the image-taker can control the
combination of said images to enable real-time inclusion and exclusion of
the images taken by the front facing camera in said single stream,' which is
not recited in claims 1 and 4 to 8" (App. Br. 5---6). Similarly, as for
claim 21, Appellants contend that the claim recites "'creating a unique key
from a unique identifier, date and time information of the first image taken
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by the front facing camera, and the third image,' which is not recited in
claims 1 and 4 to 8" (App. Br. 6).
Based on the record before us, we agree with Appellants. We note the
Examiner does not address Appellants' contention regarding claim 21 in the
Answer but merely repeats that "the Examiner disagree for the same reason
discussed in the response to the arguments as used above [with respect to
claims 1 and 4--8]" (Ans. 6). As for claim 15, the Examiner responds in the
Answer that Garcia Manchado discloses that "an image-taker can control a
combination of images to enable real-time inclusion and exclusion ... using
the means 12-15 as discussed on figure 6 and paragraphs 0029 and 0033"
(Ans. 6). However, as Appellants contend, "means 12 is a GPS means,
means 13 is a digital signature means, means 14 is an image recognition
means, and means 15 is a text addition means" (Reply Br. 3). Thus, we
cannot find any clear disclosure in the sections of Garcia Manchado
referenced by the Examiner of "real-time inclusion and exclusion of the
images taken by the front facing camera in said single stream" (claim 1 ), as
required in an anticipation rejection under 35 U.S.C. § 102(a).
We find the preponderance of evidence, on this record, fails to support
the Examiner's finding that claims 15 and 21 are anticipated by Garcia
Manchada. We are of the view that the Examiner has not fully developed
the record to show express or inherent anticipation regarding the disputed
limitations of these claims pursuant to 35 U.S.C. § 102(a). Therefore, we
are constrained to reverse the Examiner's rejection of claims 15 and 21, and
claim 22 depending from claim 21 and standing therewith.
Appellants do not provide additional argument regarding claims 2
and 3 separate from claim 1 from which they depend (App. Br. 4). For the
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reasons discussed above with respect to claim 1, we also affirm the 35
U.S.C. § 103(a) rejection of claims 2 and 3 over Garcia Manchado in further
view of Neff.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1, 4--11, and 17-19
under 35 U.S.C. § 102(a) and of claims 2 and 3 under 35 U.S.C. § 103(a);
but reverse the Examiner's rejection of claims 15, 21, and 22 under 35
U.S.C. § 102(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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