Ex Parte Neven

Patent Trial and Appeal Board

Nov 30, 2012

10783378 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HARTMUT NEVEN

Appeal 2010-007765
Application 10/783,378
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-31, which are all the claims remaining in
the application. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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Application 10/783,378

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Appellant’s Invention
The invention at issue on appeal concerns image/object recognition
and, in particular, a system and method for image-based information
retrieval from search engines utilizing a server-based object recognition
program and a search engine. (Spec. ¶¶ [0001] [0003].)1
Representative Claim
Independent claim 17, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
17. A computer implemented method for image-based
searching, comprising:
receiving at a computer server, an input image from a
user device remotely located from the server;
providing from the computer server the input image to an
image recognition system;
receiving at the computer server from the image
recognition system a symbolic identifier associated with the
input image;
providing from the computer server the symbolic
identifier to a search engine as a query;
receiving at the computer server from the search engine
a set of search results associated with the symbolic identifier;
and
transmitting from the computer server a plurality of the
search results to the user device.

1 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed Apr. 9, 2009; and Reply Brief (“Reply Br.”) filed February 11, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed December 11,
2008.
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Application 10/783,378

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Rejections on Appeal
1. The Examiner rejects claims 1-8, 11-15, 17-19, and 21-28
under 35 U.S.C. § 102(e) as being anticipated by PCT/WO 03/041000 A1,
published May 15, 2003 (“Boncyk”).
2. The Examiner rejects claims 9, 10, 16, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Boncyk in combination with the
Examiner’s Official Notice.
3. The Examiner rejects claims 29-31 under 35 U.S.C. § 103(a) as
being unpatentable over Boncyk and US 2003/0164819 A1, published Sep.
4, 2003 (“Waibel”).

ISSUE
Based upon 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 Boncyk discloses “receiving at
the computer server from the image recognition system a symbolic identifier
associated with the input image; providing from the computer server the
symbolic identifier to a search engine as a query” and “receiving at the
computer server from the search engine a set of search results associated
with the symbolic identifier” (claim 1), within the meaning of Appellant’s
claim 17 and commensurate limitations of claims 1, 11, 18, and 28-31?

ANALYSIS
We agree with Appellant that the portions of Boncyk identified by the
Examiner do not explicitly or inherently disclose the disputed features of
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Application 10/783,378

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claim 17, in particular, a search engine. (App. Br. 10-13; Reply Br. 2-4.)
Specifically, we agree with Appellant that Boncyk’s disclosure of a URL
and a content server supplying information to a user (Ans. 3, 7, 14-15) fails
to disclose the recited search engine, which receives from a server the
symbolic identifier that it then utilizes in a query to obtain search results
associated with the symbolic identifier, which are in turn provided to the
server and a user device. (App. Br. 10-13.) The portions of Boncyk cited
by the Examiner (9:40-10:5; 27:36-28:17; 37:30-38:1) separately describe a
URL associated with an image, object recognition, and a content server
supplying information pertinent to a target object to a user. We find no
disclosure in Boncyk of searching or search results associated with object
recognition.
Consequently, we are constrained by the record before us to conclude
that Boncyk fails to disclose the recited features of Appellant’s claim 17, and
the rejection of claim 17 fails to establish a prima facie case of anticipation.
Appellant’s independent claims 1, 11, 18, and 28 include limitations of
commensurate scope, and dependent claims 2-8, 12-15, 19, and 21-27
depend on and stand with their respective base claims. Accordingly, we
reverse the Examiner’s anticipation rejection of claims 1-8, 11-15, 17-19,
and 21-28.
Appellant’s claims 9, 10, 16, and 20, rejected under 35 U.S.C. § 103,
also depends on and stands with claims 1, 11, and 18 respectively.
Accordingly, we also reverse the Examiner’s obviousness rejection of claims
9, 10, 16, and 20.
Appellant’s independent claims 29-31, rejected under 35 U.S.C. § 103
over Boncyk and Waibel, include limitations commensurate in scope to
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claim 17 discussed supra. We do not find, nor has the Examiner established,
that Waibel cures the deficiencies of Boncyk discussed supra. Accordingly,
we reverse the Examiner’s rejection of independent claims 29-31 for the
same reasons discussed with respect to claim 17 (supra).

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1-8,
11-15, 17-19, and 21-28 under 35 U.S.C. 102(e).
Appellant has shown that the Examiner erred in rejecting claims 9, 10,
16, 20, and 29-31under 35 U.S.C. 103(a).

DECISION
We reverse the Examiner’s rejections of claims 1-8, 11-15, 17-19, and
21-28 under 35 U.S.C. 102(e).
We reverse the Examiner’s rejections of claims 9, 10, 16, 20, and 29-
31 under 35 U.S.C. 103(a).

REVERSED

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