11580713 (B.P.A.I. Feb. 8, 2012)

Ex Parte Hwang et al

Board of Patent Appeals and InterferencesFeb 8, 2012

11580713 (B.P.A.I. Feb. 8, 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. 11/580,713 10/13/2006 Paul Jin Hwang 50W8546.01 6037 36738 7590 02/09/2012 ROGITZ & ASSOCIATES 750 B STREET SUITE 3120 SAN DIEGO, CA 92101 EXAMINER PHILLIPS, III, ALBERT M ART UNIT PAPER NUMBER 2154 MAIL DATE DELIVERY MODE 02/09/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PAUL JIN HWANG, RACHEL THEY NGUYEN, GUOXUAN ZHANG, and JIANYU ROY ZHENG ____________ Appeal 2009-010671 Application 11/580,713 Technology Center 2100 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and HOWARD B. BLANKENSHIP, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Patent Examiner rejected claims 1-3, 5-14, and 16-20. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). Appeal 2009-010671 Application 11/580,713 2 INVENTION The Appellants describe the invention at issue on appeal as "[a] method for establishing an album cover for a group of digitally stored photographs . . . include[ing] accessing metadata for the photographs in the group and based on the metadata, selecting one or more photographs in the group as an album cover for the group." (Spec. 2.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for establishing an album cover for a group of digitally stored photographs each being associated with a respective computer file, comprising: accessing metadata for at least some photographs in the group; and based at least in part on the metadata, selecting one or more photographs in the group as an album cover for the group, wherein at least one photograph is selected as the album cover based on a time of last viewing. REJECTIONS Claims 1, 3, 5-8, 12-14, 16, 17, 19, and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over U.S. Patent Application Pub. No. 2002/0167683 A1 ("Hanamoto") and U.S. Patent Application Pub. No. 2006/0004698 A1 ("Phyalammi"). Claims 2 and 11 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Hanamoto; Phyalammi"; and U.S. Patent Application Pub. No. 2007/0067295 A1 ("Parulski"). Claims 9 and 18 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Hanamoto; Phyalammi; and U.S. Patent No. 7,286,723 B2 ("Taugher"). Appeal 2009-010671 Application 11/580,713 3 DISCUSSION Based on the dependencies of the claims, we will decide the appeal of claims 1-3, 5-14, and 18-20 on the basis of independent claims 1, 10, and 19. Therefore, the issue before us follows. Did the Examiner err in finding that the combined teachings of Hanamoto and Phyalammi would have suggested selecting at least one photograph in a group of digitally stored photographs as an album cover for the group based on metadata for at least some photographs in the group, as required by independent claims 1, 10, and 19? The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). "The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, Hanamoto describes a third embodiment, on which the Examiner relies, as "creating an album cover utilizing metadata of a plurality of images . . . ." (Â¶ 0053.) Specifically, the Examiner finds that the reference teaches "'based at least in part on the metadata, selecting one or more photographs in the group as an album cover for the group' in Â¶0060 lines 1-2." (Ans. 3.) Paragraph 60 of Hanamoto does disclose that "a cover can be created taking into consideration the metadata of all of the images in the group." Appeal 2009-010671 Application 11/580,713 4 The third embodiment, however, does not select any of the images in the group as the cover. To the contrary, the embodiment selects clip art corresponding to metadata associated with the images as the cover for the group of images. More specifically, "a procedure for creating an album cover using a keyword specific to each image file" (Â¶ 0055) according to the third embodiment includes the following steps. [A] CPU [i.e., central processing unit] 104 . . . extracts keyword information from the metadata that has been read in (S1006) and determines whether clip art corresponding to the keyword has been stored in the storage unit . . . (S1007). If clip art corresponding to the keyword exists, then the CPU 104 adds this clip art onto the cover image 904 (S1008). (Â¶ 0057.) For its part, Phyalammi "allow[s] a user to locate user data files stored in a memory." (Â¶ 0005.) The Examiner finds that "Pyhalammi teaches selecting a file to be displayed as a thumbnail . . . in , Â¶ 0030 lines 1-9 and , Â¶ 0005 last 8 lines." (Ans. 3.) The reference includes the more specific description of its selecting process. User data files for electronic images and/or other types of information are stored in the memory and have priorities based on prior activity regarding those files. . . . [A] file "priority" generally refers to a manner of distinguishing a file from other files. . . . By way of example, file activities affecting image file priority can include enlarging an image, editing an image and copying an image to another folder. When the user views an array of thumbnail images in some embodiments, thumbnail images are only displayed for user data files meeting a priority threshold. The user can adjust the priority threshold so as to increase or decrease the number of thumbnail images shown. Appeal 2009-010671 Application 11/580,713 5 (Â¶ 0005.) Based on this description, we agree with the Appellants that "[t]he image arrangement of Pyhalammi . . . has nothing to do with selecting a representative entity of anything, . . ." (Appeal Br. 7.) In summary, Hanamoto selects clip art corresponding as the cover for the group of images, and Pyhalammi displays only those thumbnail images having associated user data files meeting a priority threshold. In view of these teachings, we agree with the Appellant that "the references if combined in accordance with what they teach, . . . would not arrive at" (Reply Br. 4) the claimed invention. The Examiner does not allege, let alone show, that the addition of Parulski or Taugher cures the aforementioned deficiency of Hanamoto and Phyalammi. Therefore, we conclude that the Examiner erred in finding that the combined teachings of Hanamoto and Phyalammi would have suggeste//d selecting at least one photograph in a group of digitally stored photographs as an album cover for the group based on metadata for at least some photographs in the group, as required by independent claims 1, 10, and 19. DECISION We reverse the rejection of claims 1, 10, and 19 and those of claims 2, 3, 5-9, 11-14, 16-18, and 20, which depend therefrom. REVERSED Appeal 2009-010671 Application 11/580,713 6 tkl