Ex Parte Hertz et al

Patent Trial and Appeal Board

Nov 5, 2012

09737371 (P.T.A.B. Nov. 5, 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.
09/737,371 12/15/2000 Richard J. Hertz 007412.00087 2412
71867 7590 11/05/2012
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
TUCKER, WESLEY J
ART UNIT PAPER NUMBER
2669
MAIL DATE DELIVERY MODE
11/05/2012 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 RICHARD J. HERTZ and SCOTT P. ROBERTSON

Appeal 2010-001090
Application 09/737,371
Technology Center 2600
____________

Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12, 15-19, and 21-29. Claims 13, 14, and 20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a system and method for
distributing digital images. See Spec. 12, Abstract of the Disclosure.

Appeal 2010-001090
Application 09/737,371
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Claim 1 is illustrative with key disputed limitations emphasized:
1. A system for distributing digital images to a user, the system
comprising:

an image capture device for creating digital images, wherein the
digital images include metadata containing information about a
source of the digital images;

at least one image server in communication with the image
capture device, the image server receiving and storing digital
images transmitted from the image capture device; and

at least one programmable software agent in communication
with the at least one image server, the at least one software
agent including at least one set of user-specified criteria for
selecting digital images, the at least one set of user-specified
criteria including a desired source of the digital images, wherein
for each set of user-specified criteria the at least one software
agent automatically compares the user-specified criteria with
the metadata of digital images available at the image server
during a first time period to evaluate and select digital images
from the desired source for distribution to the user, the at least
one software agent automatically comparing the user-specified
criteria with the metadata of additional digital images not
available during the first time period whenever the additional
digital images are made available at the image server.

The Examiner relies on the following as evidence of unpatentability:
Savitzky US 6,571,271 B1 May 27, 2003
(Filed May 3, 1999)
Mathias US 6,480,627 B1 Nov. 12, 2002
(Filed June 29, 1999)
Shiota US 6,337,712 B1 Jan. 8, 2002
(Filed Nov. 20, 1997)

Appeal 2010-001090
Application 09/737,371
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Zhang US 6,968,366 B1 Nov. 22, 2005
(Filed May 12, 2000)

THE REJECTIONS
1. The Examiner rejected claims 1-8, 10, 15-19, and 21-23 under 35
U.S.C. § 103(a) as unpatentable over Savitzky and Mathias. Ans.
5-13.1
2. The Examiner rejected claims 9, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Savitzky, Mathias, and Shiota. Ans.
13-15.
3. The Examiner rejected claims 24-29 under 35 U.S.C. § 103(a) as
unpatentable over Savitzky, Mathias, and Zhang. Ans. 15.

ISSUE
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal:
Under § 103, has the Examiner erred in rejecting claims 1-8, 10, 15-
19, and 21-23 by finding that the cited references show or suggest digital
images which include “metadata containing information about a source of
the digital images” and wherein a software agent “automatically compares
the user-specified criteria with the metadata of digital images available at the
image server during a first time period to evaluate and select digital images

1 Throughout this opinion, we refer to the Appeal Brief filed March 14,
2007; the Examiner’s Answer mailed July 19, 2007; and the Reply Brief
filed February 28, 2007.
Appeal 2010-001090
Application 09/737,371
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from the desired source for distribution to the user” as set forth in
independent claims 1, 15, and 21.

ANALYSIS
Appellants argue that, despite the fact that Savitzky discloses that
metadata may be associated with a digital image and that the metadata may
include multiple pieces of information (e.g., camera ID, date of capture, GPS
location), there is no indication within Savitzky that such information may
be utilized as search criteria. App. Br. 7, Reply Br. 1-3.
Appellants further argue that the cited references fail to show or
suggest automatically comparing the metadata of additional images against
user-specified criteria “whenever the additional images are made available at
the image server,” as set forth in independent claims 1, 15, and 21. App. Br.
8, Reply Br. 4.
The Examiner finds Savitzky discloses a system for distributing
digital images where the digital images include metadata containing
information about the digital images, such as: camera ID, date of capture,
and the like. The Examiner also finds that Savitzky discloses a software
agent that compares user specified criteria with the image metadata, noting
that Savitzky expressly states that the image database is “searchable by text
(i.e. from the captions or titles) or by image features.” Ans. 5-7.
The Examiner also finds that Mathias discloses an image retrieval
system which utilizes a “standing order” to repeatedly and automatically
search for images so that the user may be updated continuously. Ans. 9-10.
We find Appellants’ arguments unpersuasive. Appellants argument
that searching by “captions or titles” is not suggestive of searching for an
image from a “desired source” does not address the express teaching within
Appeal 2010-001090
Application 09/737,371
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Savitzky of searching images by “image features.” Further, we find that
Appellants’ failure to expressly define “source” within the Specification in a
manner which would render the Examiner’s interpretation unreasonable,
leads us to conclude that Savitzky’s teaching of searching by “image
features” is suggestive of Appellants’ claimed searching for images from a
“desired source.”
Further, we find the teaching within Mathias of a repeated and
automatic search for additional desired images after a first time period is
suggestive of Appellants’ claimed “automatically comparing the user-
specified criteria with the metadata of additional digital images not available
during the first time period whenever the additional digital images are
made available at the image server” (Claims 1, 15, 21).
Consequently, we find the Examiner did not err in rejecting claims 1,
15, and 21 as unpatentable over Savitzky and Mathias. Claims 2-12, 16-19,
and 22-29, which were not argued separately, fall as well.
CONCLUSION
The Examiner did not err in rejecting claims 1-12, 15-19, and 21-29
under § 103.
ORDER
The Examiner’s decision rejecting claims 1-12, 15-19, and 21-29 is
affirmed.
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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