Ex Parte RobsarveDownload PDFPatent Trial and Appeal BoardMar 27, 201311753833 (P.T.A.B. Mar. 27, 2013) Copy Citation 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. 11/753,833 05/25/2007 Erik Robsarve SALBP0141US 6265 58342 7590 03/28/2013 WARREN A. SKLAR (SOER) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE 19TH FLOOR CLEVELAND, OH 44115 EXAMINER DAGNEW, MEKONNEN D ART UNIT PAPER NUMBER 2664 MAIL DATE DELIVERY MODE 03/28/2013 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 ERIK ROBSARVE ____________________ Appeal 2012-007403 Application 11/753,833 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007403 Application 11/753,833 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellant’s invention is directed to a communication device that enables a user to select a portion of the image to be transmitted with a message service; wherein, only the selected portion is compressed and transmitted based upon a maximum transmission limit (Abstract). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A communication device comprising: a control unit for processing data files containing images stored in an internal or attachable memory; a communication interface configured to transmit images, the communication interface configured to respond to a maximum size limit imposed on images to be transmitted; a user interface including a display configured to show images and input means for inputting commands; wherein the control unit is configured to process a data file to be transmitted by letting a user select a part of the image contained in the data file; and the control unit is configured to transform the selected part of the image corresponding to a part of the data file to a compressed size depending on the maximum size limit imposed by a user on images to be transmitted by the communication interface. Appeal 2012-007403 Application 11/753,833 3 C. REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Driscoll U.S. Pat. Pub. 2002/0041326 A1 April 11, 2002 Novak U.S. Pat. Pub. 2002/0141657 A1 Oct. 3, 2002 Bentley U.S. Pat. Pub. 2005/0132414 A1 June 16, 2005 Claims 1, 2, 7-12, and 17-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Novak in view of Bentley. Claims 3-6 and 13-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Novak in view of Bentley and Driscoll. II. ISSUE The dispositive issue before us is whether the Examiner has erred in determining that the combination of Novak and Bentley teaches or would have suggested “the control unit is configured to transform the selected part of the image corresponding to a part of the data file to a compressed size depending on the maximum size limit imposed by a user on images to be transmitted by the communication interface” (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Novak 1. Novak discloses a set-top box 140 for controlling the capture of an image of an object in a camera field of vision having a processor 310 and Appeal 2012-007403 Application 11/753,833 4 a memory device 320 that includes a compression/correction engine 400 and a webcam engine 410; wherein, the compression/correction engine 400 performs compression and distortion compensation on the image data received from webcam 100 and the webcam engine 410 processes user commands relating to pan, tilt, and/or zoom functions of the webcam 100 (Figure 3; ¶¶ [0038], [0039], and [0043]). 2. The webcam 100 stores an entire scene captured through a vision field 200 in an image collection array 240 as digitized scene image data 485 (Fig. 2, ¶ [0042]). 3. The webcam engine 410 enables the user to select a subset area in the vision field 200 for display or transmission, simulating the panning/tilting feature of conventional webcams (Fig. 4, ¶ [0043]). In particular, in response to the user sending a pan-left command 486, the webcam engine 410 samples an area 487 that contains an image of the object 480 in the digitized scene image data 485 (Fig. 5B, ¶ [0043]). Conversely, in response to a pan-right command 488, the webcam engine 410 selects the subset area 489 that contains an image of the object 484 in the digitized scene image data 485 (¶ [0044]). 4. The webcam engine 410 passes the selected area (487,489) to the compression/correction engine 400 which uses any known suitable skew correction algorithm to compress the subset of the image output from webcam 100 (Fig. 4, ¶¶ [0039] and [0046]). Bentley 5. Bentley discloses a system and method of storing, analyzing, and accessing video data from surveillance cameras; wherein, the system transmits captured the video data over the internet or a similar network to an Appeal 2012-007403 Application 11/753,833 5 independent third party site (¶ [0047]). The amount of data that can be transferred is dependent upon the available bandwidth of the transmission link (id.). 6. To overcome the problem of insufficient bandwidth, the third party site, in response to bandwidth variations, varies one or more transmission variables (e.g., frame rate, compression ratio, or image resolution); wherein, the user or the third party configures the set of instructions that govern which variables are to be adjusted, the order of the adjustment, and the limitations placed on the adjustment (id.). IV. ANALYSIS Claims 1, 8-11, 18, and 19 Appellant contends that “Bentley simply does not transform a part of the video to a compressed size based on a maximum size limit imposed by the user” (App. Br. 7). Appellant contends further that “Bentley does not disclose transforming the selected part of the image corresponding to a part of the data file to a compressed size depending on the maximum size limit imposed by the user” (App. Br. 8). Appellant asserts, as a result, “Bentley actually teaches away from transmitting a selected part of the video data depending on a maximum size limit” (App. Br. 9). Appellant contends further that “there is no reasonable basis for one of ordinary skill in the art to modify Novak with Bentley to arrive at the subject matter of claim 1” (App. Br. 10). Finally, Appellant contends that since MPEP 2111.04 “states that ‘[t]he determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case[,]’ … a blanket rejection of the term ‘configured to’ is improper” (App. Br. 12). Appeal 2012-007403 Application 11/753,833 6 However, the Examiner finds that “Bentley teaches either the user or third party to adjust the frame rate, compression, etc. before transmitting the video data captured by the user’s camera” (Ans. 11). The Examiner notes that “Novak clearly teaches transforming a part of the image to a compressed size” (id.). We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claim 1 merely requires that the control unit is “configured to” transform the selected part of the image into a compressed size depending upon the maximum size limit imposed by the user. We find such “configured to” language to merely represent a statement of intended use of the control unit which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, we give “the control unit is configured to transform the selected part of the image corresponding to a part of the data file to a compressed size depending on the maximum size limit imposed by a user on images to be transmitted by the communication interface” its broadest reasonable interpretation as a control unit that is capable of transforming the selected part of the image into a compressed image of a limited size imposed by the user, as consistent with the Specification and as defined in claim 1. Novak discloses an apparatus for controlling the capture of an image of an object having a webcam engine which processes a user command to select a portion of the image and a compression/correction engine that compresses this selected portion of the image (FF 1 and 4). In particular, the Appeal 2012-007403 Application 11/753,833 7 webcam stores an entire scene as digitized scene image data and the webcam engine selects a portion of the entire image based upon a user’s pan-left or pan-right command (FF 2 and 3). We find that Novak’s apparatus compresses a selected portion of the image. In addition, Bentley discloses a system that transmits captured the video data over a network to an independent third party site; wherein, the third party, in response to bandwidth variations, varies one or more transmission variables to overcome the problem of insufficient bandwidth (FF 5 and 6). The system enables a user or the third party to configure the set of instructions that govern which variables are to be adjusted, the order of the adjustment, and the limitations placed on the adjustment (FF 6). We find that Bentley’s system includes a control unit that is capable of enabling the user to impose a maximum size limitation for transmission since the user can configure the set of instructions that govern which transmission variables are to be adjusted. In view of our claim construction above, we find that the combination of Novak and Bentley at least suggests providing “the control unit is configured to transform the selected part of the image corresponding to a part of the data file to a compressed size depending on the maximum size limit imposed by a user on images to be transmitted by the communication interface” (claim 1). We also agree with the Examiner’s explicit motivation that combining the references would be obvious since Novak’s system modified with the “the provision of allowing the user [to] set the max limit of transmission taught by Bentley” “that the user can highlight a specific time period for detailed review and as taught by Bentley” “and to have more control over Appeal 2012-007403 Application 11/753,833 8 the transmission rate” (Ans. 6-7). The Supreme Court has stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we find no error in the Examiner’s finding that the combination of Novak’s apparatus which compresses a selected portion of the image with the system enables the user to configure the set of instructions that govern the adjustment of transmission variables, as disclosed in Bentley, produces a control unit that is capable of transforming the selected part of the image into a compressed image of a limited size imposed by the user which would be obvious (Ans.6-7; FF 1-6). Accordingly, we find no error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) over Novak in view of Bentley. Further, independent claims 11 and 19 having similar claim language and claims 8- 10 and 18 (depending from claims 1 and 11) which have not been argued separately, fall with claim 1. Claims 2 and 12 Appellant contends that “Novak discloses that a zoom action may be performed on a scene, but the scene is not shown on a display. Rather, Novak discloses that the image is zoomed, compressed and then transmitted to a display” (App. Br. 12). However, the Examiner finds that “Novak discloses that the image is zoomed, compressed and then transmitted to a display. Moreover, it discloses based on a zoom command a subset of the digitized scene image data is selected” (Ans. 13). Claim 2 merely requires that the control unit, “when operable,” receives a part of an image when the user performs a zoom and selection. Appeal 2012-007403 Application 11/753,833 9 That is, claim 2 merely requires that a selected part of an image may be received “when [the control unit is] operable,” wherein such intended use of the control unit will not limit the scope of the claim. Thus, we give “wherein the control unit which when operable receives the selected part of the image when the user performs a zoom and selection action on an image shown on the display” its broadest reasonable interpretation as the control unit capable of receiving the selected part of the image when a user performs a zoom function, as consistent with the Specification and as specifically defined in claim 2. As noted supra, Novak discloses a webcam engine that processes the zoom function of a conventional webcam; wherein, the user can send a command and in response the webcam engine selects a subset area of the scene image data (FF 1 and 3). We find that Novak’s webcam engine comprises a control unit capable of receiving the selected part of the image when a user performs a zoom function. Accordingly, we find no error in the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) over Novak in view of Bentley. Further, claim 12 (depending from claim 11) which has not been argued separately, falls with claim 2. Claims 7 and 17 Appellant contends that “Novak does not disclose that a control unit makes a selected part of an image by means of image recognition,” “[r]ather, Novak merely discloses that a user determines what part of a scene is panned/tilted” (App. Br. 13). However, the Examiner finds that “Novak teaches the webcam engine … allows the user to select a subset of vision field 200 to capture the object 130” (Ans. 14). The Examiner notes that “the Appeal 2012-007403 Application 11/753,833 10 claim does not specifically claim what kind of image recognition is used” and “the image [captured by Novak] is inherently recognized before it gets displayed” (id.). Claim 7 does not define what “image recognition” means, includes, or represents, and the Specification merely discloses that the control unit makes selection using image recognition; wherein, if the image contains a human face, a frame is automatically positioned such that the selected part covers the face to produce a portrait (Spec. 3:25-38 and 6:32-35). Further, Claim 7 merely requires that the control unit is “which when operable” selects part of the image using image recognition. Thus, we give “wherein the control unit which when operable makes the selected part of the image by means of image recognition” its broadest reasonable interpretation as the control unit capable of selecting a portion of the image using image recognition, as consistent with claim 7. As noted supra, Novak discloses a set-top box that includes a processor and a webcam engine that processes the pan, tilt, or zoom function of a conventional webcam; wherein, the user can send a command and in response the webcam engine selects a subset area of the scene image data (FF 1 and 3). We find that Novak’s set-top box comprises a control unit capable of selecting a portion of the image using image recognition because the set-top box includes a processor for processing the captured image data. Accordingly, we find no error in the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) over Novak in view of Bentley. Further, claim 17 (depending from claim 11) which have not been argued separately, fall with claim 7. Appeal 2012-007403 Application 11/753,833 11 Claims 3-6 and 13-16 Appellant argues that “Driscoll does not make up for the deficiencies in Novak and Bentley” (App. Br. 15) and that “the Examiner has not provided any explanation whatsoever as to why it would be obvious to modify Novak with Driscoll to arrive at the subject matter of these claims” (App. Br. 16-18). As noted supra, however, we find that the combination of Novak and Bentley at least suggests all the features of claim 1; hence, no deficiencies exist. We therefore affirm the Examiner’s rejection of claims 3-6 and 13-16 under 35 U.S.C. § 103 for the same reasons expressed with respect to parent claims 1 and 11, supra. V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) 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 tkl Copy with citationCopy as parenthetical citation