11184297 (B.P.A.I. Feb. 22, 2012)

Ex Parte Kim

Board of Patent Appeals and InterferencesFeb 22, 2012

11184297 (B.P.A.I. Feb. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte KI II KIM _____________ Appeal 2011-005054 Application 11/184,297 Technology Center 2600 ______________ Before, ALLEN R. MacDONALD, DAVID M. KOHUT, and JASON V. MORGAN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final rejection of claims 19-24 and 35-96.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. 1 Claims 1-18 and 25-34 were previously cancelled. Appeal 2011-005054 Application 11/184,297 2 INVENTION The invention is directed to a method and mobile device that can be used to record and/or playback images, audio, and video, as well as communicate data through either a cellular or satellite connection. See Spec. 1. Claim 19 is representative of the invention and is reproduced below: 19. A method for capturing and transferring an image from a hand held cellphone, the method comprising: (a) selecting a hand held cellphone having an internal camera and an output jack; (b) capturing an image with the camera and storing the image in the hand held cellphone; (c) connecting a device comprising one of a television or a personal computer to the hand held cellphone through the output jack; and (d) transferring the stored image from the hand held cellphone via the output jack to the device. REFERENCES Ohnsorge US 5,485,504 Jan. 16, 1996 Hassan US 5,550,646 Aug. 27, 1996 McNelley US 5,550,754 Aug. 27, 1996 Parulski US 5,666,159 Sep. 9, 1997 Rostoker US 5,793,416 Aug. 11, 1998 Radley US 5,966,643 Oct. 12, 1999 Liebermann US 5,982,853 Nov. 9, 1999 Tran US 6,202,060 B1 Mar. 13, 2001 Friesem US 2003/0063042 A1 Apr. 3, 2003 Chen US 6,233,468 B1 May 15, 2001 Rydbeck US 7,123,936 B1 Oct. 17, 2006 (filed Feb. 18, 1998) Murakami JP 06070312 A Mar. 11, 1994 Kawazu JP 06268582 A Sep. 22, 1994 Appeal 2011-005054 Application 11/184,297 3 REJECTIONS AT ISSUE Claims 19-24, 35, 36, 38-44, 48, 54-72, 78, 79, 89-91, 95, and 96 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Radley, Liebermann, Ohnsorge, Kawazu, Parulski, Hassan, Murakami, McNelley, and Rostoker. Ans. 4-8. Claims 37, 45-47, 49-63, 73-77, 80-88, and 92-94 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Radley, Liebermann, Ohnsorge, Kawazu, Parulski, Hassan, Murakami, McNelley, Rostoker, and Tran. Ans. 8-11. ISSUES Did the Examiner err in finding it obvious to combine the references to arrive at each of the limitations of claims 19-24 and 35-96? Did the Examiner err in applying Tran as prior art? ANALYSIS We have reviewed the Examiners’ rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusion. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusion reached by the Examiner. In addition, below we highlight and address a few of Appellant’s main arguments. Appellant argues that the Examiner fails to provide reasons as to why each claim is obvious to one of ordinary skill in the art and instead only Appeal 2011-005054 Application 11/184,297 4 address the rejected the claims as a whole. App. Br. 12-13, 16-21; Reply Br. 2. We disagree. In the Examiner’s rejection, the Examiner has indicated what features each of the references specifically disclose. Ans. 4-11. While a specific motivation for the combination is not listed, the Supreme Court stated that one is not required as long as the combination of familiar elements according to known methods does nothing more than yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, we agree with the Examiner that it would have been obvious to combine the references since each of the elements disclosed by the multiple references can be combined by one of ordinary skill in the art to yield predictable results. Additionally, Appellant argues that the Examiner’s failure to provide a motivation combined with the application of nine references proves that Appellant’s invention would not have been obvious to one of ordinary skill in the art. App. Br. 13. As noted above, motivation is not required. Additionally, “[t]he criterion [to support a rejection for obviousness under 35 U.S.C. §103], however, is not the number of references, but what they would have meant to a person of ordinary skill in the field of invention.” See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Each of the cited references discloses a particular feature of the present invention which could have been combined by known methods to yield a predictable result. Thus, we agree with the Examiner that the combination of references was proper. Appellant also argues that the rejection of the claims over Tran is improper since the inventor’s Declaration filed December 12, 2009 was accepted by the Examiner to establish a conception and reduction to practice of the invention prior to Tran’s filing date. App. Br. 26. The Examiner Appeal 2011-005054 Application 11/184,297 5 responded by finding that the limitations rejected by Tran were not “sufficiently supported, if taught at all, by the evidence in Appellant’s Affidavit and Declaration.” Ans. 14. Thus, the Examiner is withdrawing acceptance of Appellant’s conception and reduction to practice prior to Tran’s filing date. Appellant has not addressed the Examiner’s specific findings. Thus, we agree with the Examiner that Tran is valid prior art. CONCLUSION The Examiner did not err in finding it obvious to combine the references to arrive at each of the limitations of claims 19-24 and 35-96. The Examiner did not err in applying Tran as prior art. SUMMARY The Examiner’s decision to reject claims 19-24 and 35-96 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 ELD