Ex Parte Hakansson

Patent Trial and Appeal Board

Nov 29, 2012

10538293 (P.T.A.B. Nov. 29, 2012)

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.
10/538,293 06/10/2005 Johannes Hakansson 9563-35 1566
20792 7590 11/30/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
HENN, TIMOTHY J
ART UNIT PAPER NUMBER
2662
MAIL DATE DELIVERY MODE
11/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHANNES HAKANSSON
____________________

Appeal 2010-007872
Application 10/538,2931
Technology Center 2600
____________________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed June 10, 2005, claiming priority of PCT/EP03/13765
filed December 5, 2003, EPO 020274528 filed December 10, 2002, and US
60/433,796 filed December 16, 2002. The real party in interest is Sony
Ericsson Mobile Communications AB. (App. Br. 1.)
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Application 10/538,293

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-16, which are all the claims remaining in
the application. Claims 17 and 18 have been canceled. (App. Br. 1.) We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal concerns a cellular phone, computer
program product, image editor, and method for providing storable image
effects in a processing device, in particular, a cellular phone. (Spec. 1:5-11;
2:13-30; Abstract.)2
Representative Claim
Independent claim 1, reproduced below, with disputed limitations
italicized, further illustrates the invention:
1. A method of providing storable image effects in a
cellular phone comprising:
generating an effect for application on digital images
based on entries of a user;
storing the effect as an effects file in a defined
standardised image editor independent effects format; and
transferring the effects file to another device, such that it
is used for later application on more than one image, the
multiple images not being associated with one another.

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed November 20, 2009; and Reply Brief (“Reply Br.”) filed April 19,
2010. We also refer to the Examiner’s Answer (“Ans.”) mailed February 18,
2010.
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Rejections on Appeal
1. The Examiner rejects claims 1-5, 7-12, and 14-16 under 35
U.S.C. § 103(a) as being unpatentable over US 7,038,716 B2, issued May 2,
2006 (filed Mar. 1, 2001) (“Klein”), US 2003/0071903 A1, published Apr.
17, 2003 (filed Jun. 25, 2002) (“Nakami”), and US 2003/0063198 A1,
published Apr. 3, 2003 (filed Aug. 27, 2002) (“Yokokawa”).
2. The Examiner rejects claims 6 and 13 under 35 U.S.C. § 103(a)
as being unpatentable over Klein, Nakami, Yokokawa, and US 5,913,088,
issued Jun. 15, 1999 (“Moghadam”).

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that the combination of Klein,
Nakami, Yokokawa collectively would have taught or suggested “generating
an effect for application on digital images,” “storing the effect as an effects
file,” “and transferring the effects file to another device, such that it is used
for later application on more than one image, the multiple images not being
associated with one another” (claim 1), within the meaning of Appellant’s
claim 1 and commensurate limitations of claims 8, 15, and 16?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.
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ANALYSIS
Based on Appellant’s arguments (App. Br. 3-6), we select
independent claim 1 as representative of Appellants’ arguments and
groupings with respect to claims 1-16. 37 C.F.R. § 41.37(c)(1)(vii).
The § 103 Rejection of Claim 1
Appellant contends the combination of Klein, Nakami, and Yokokawa
does not teach that “the effects file is transferred to another device where it
is subsequently used on more than one image, which are not associated with
one another” (App. Br. 5; see id. at 4, 6; Reply Br. 1-2.) Specifically,
Appellant contends that “Nakami, therefore, teaches against using the output
control data on a printer for more than one image as the other images may be
associated with other photographers and/or the same photographer may wish
to process/print images differently based on the particular subject matter
featured in the image.” (App. Br. 5.)
The Examiner sets forth a detailed explanation of the obviousness
rejection in the Examiner’s Answer with respect to each of the claims (Ans.
3-8) and, in particular, the rejection of claims 1 and 8 (Ans. 3-5, 7-8).
Specifically, the Examiner provides a detailed explanation with respect to
Klein’s disclosure of a cellular phone including a memory and Nakami’s
disclosure of a system for applying image effects to captured images (Ans.
3-5, 7-8 (citing Klein, col. 8, ll. 59-60; Figs. 2, 5; and Nakami, ¶¶ [0062],
[0077]-[0078]; Figs. 3, 5, 7).) The Examiner also provides a detailed
discussion concerning Yokokawa’s disclosure of capturing multiple images
under multiple different (unrelated) shooting conditions. (Ans. 4-5, 7-8
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(citing Yokokawa, Figs. 3A, 3B, 7A, 7B).) We adopt these findings and this
reasoning as our own.
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate conclusion that the
combination of Klein, Nakami, Yokokawa would have taught or at least
suggested the disputed features of claim 1. Accordingly, we sustain the
Examiner’s rejection of claim 1 for the reasons set forth in the Answer,
which we incorporate herein by reference. (Ans. 3-8.) We limit our
additional analysis to the following points of emphasis.
We initially note that all of the argued limitation fails to distinguish
the claimed invention from the prior art either structurally or functionally.
The recited “effects file” and its application to unassociated or unrelated
images (“application on more than one image, the multiple images not being
associated with one another” (claim 1, emphasis added)) are all essentially
non-functional descriptive material in that the limitations simply describe
stored images and algorithms – i.e., data. The data received or manipulated
by a device is non-functional descriptive material in that the underlying
structure and functionality remain the same regardless of what the data
constitutes, how the data may be named, or the relationship among the data
and do not further limit the claimed invention either functionally or
structurally. The informational content of the data thus represents non-
functional descriptive material, which “does not lend patentability to an
otherwise unpatentable computer-implemented product or process.” Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir.
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Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related”
data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method). See also In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-
functional descriptive material).
Even if we arguendo ascribe some patentable weight to the
limitations, as explained by the Examiner, the combination of Klein,
Nakami, and Yokokawa teaches or at least would have suggested an image
effect (effects file) applied to multiple images that could be unassociated or
unrelated. (Ans. 3-5, 7-8.)
Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1. Independent
claims 8, 15, and 16 include limitations of commensurate scope. Appellant
does not present separate arguments with respect to independent claims 8,
15, and 16, or dependent claims 2-7 and 9-14. (App. Br. 6.) Accordingly,
we affirm the Examiner’s rejection of representative claim 1 and claims 2-16
for the reasons discussed with respect to claims 1 (supra).

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-16 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-16.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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