Ex Parte Walton et al

Patent Trial and Appeal Board

Nov 19, 2013

11261188 (P.T.A.B. Nov. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANDREW CHRISTOPHER WALTON,
BRYAN J. JACQUOT and STEVE LYLE
__________

Appeal 2011-013586
Application 11/261,188
Technology Center 2600
__________

Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a
device, a computer-implemented method, a computer system, and an article
of manufacture. The Patent Examiner rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Hewlett Packard Co., LP.
(See App. Br. 1.)
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STATEMENT OF THE CASE
Claims 1-25 are on appeal. Claims 1 and 16 are representative and
read as follows:
1. A device, comprising:
a non-volatile memory storing i) a plurality of vector images
illustrating different views of at least a portion of the device, and ii) one or
more relationships specifying how to navigate between the vector images;
and
an interface to provide access to the vector images.

16. A computer-implemented method, comprising:
retrieving at least a first image from a set of images stored in a device,
the first image illustrating at least a portion of the device;
causing the first image to be displayed to a user; and
in response to the user’s interaction with the first image, causing a
second image retrieved from the device to be displayed to the user.

The Examiner rejected the claims as follows:
• claims 16-25 under 35 U.S.C. § 102(e) as anticipated by Callaghan;2
• claims 1-7 and 9-15 under 35 U.S.C. § 103(a) as unpatentable over
Callaghan and Misuhashi;3 and
• claim 8 under 35 U.S.C. § 103(a) as unpatentable over Callaghan,
Misuhashi, and Englefield.4

2 Patent Application Publication No. US 2005/0108364 A1 by David M.
Callaghan et al., published May 19, 2005.
3 Patent No. US 6,369,905 B1 issued to Shunya Mitsuhashi et al., Apr. 9,
2002.
4 Patent No. US 6,335,738 B1 issued to Paul Jonathan Englefield et al., Jan.
1, 2002.
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ANTICIPATION
The Examiner found that Callaghan disclosed the inventions of claims
16-25.
Appellants contend that Callaghan does not teach the claimed
inventions because “Appellants understand Callaghan to teach storing
device-related information and graphics for a device in storage that is
separate from the device,” rather than teaching “a set of images stored in a
device, the first image illustrating at least a portion of the device,” as recited
in independent claim 16. (App. Br. 8.) In particular, Appellants assert that
in Callaghan the “storage component 240 with stored SVG [scalable vector
graphics] files that are uploaded and/or downloaded from/to the device 230
is a storage device that is remotely located with respect to the device 230.”
(Id. at 9)(referring to Callaghan [0043] and Fig. 2).
We are not persuaded by Appellants’ argument. Callaghan Figure 2 is
reproduced below:

Figure 2 “illustrates an exemplary system that renders device-related
information within a Web-based interface associated with a remote Web
client, in accordance with an aspect of the [] invention.” (Callaghan [0017].)
Regarding Figure 2, Callaghan teaches:
[0044] The storage component 240 can be utilized to save
device-related SVG files. The storage component 240 can be
any known storage element. For example, it can be local
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memory. For example, it can include storage associated with a
hard drive, RAM, ROM, a memory module, flash, CD, DVD,
and the like. In addition, it can include shared, or common
storage such [as] a networked server and/or database that is
local to an associated network. Remote storage can include
remote servers, databases and/or other devices.

(Id. at [0044])(Emphasis added). According to Appellants, this teaching
indicates that “local memory” means “local to an associated network.”
(App. Br. 9; Reply Br. 2.) We disagree. We find that a person of ordinary
skill in the art at the time of the invention would have understood
Callaghan’s disclosure of “local memory” to be memory local to the device.
We do not find that Callaghan exemplified the term “local memory” as
including “shared or common storage such [as] a networked server and/or
database that is local to an associated network.” Rather, by introducing the
network storage option with the phrase “[i]n addition,” Callaghan expressly
distinguished it from the preceding local memory option. Thus, Appellants
have not established that Callaghan does not anticipate the claimed
invention.
Accordingly, we affirm the Examiner’s anticipation rejection of claim
16. Appellants do not raise additional arguments for claims 17-25 (see App.
Br. 9-10), therefore, these claims fall with claim 16. See 37 C.F.R.
§ 41.37(c)(1)(vii).
OBVIOUSNESS
I. Claims 1-7 and 9-15
The Examiner found that Callaghan disclosed a device comprising a
non-volatile memory storing i) a plurality of vector images illustrating views
of at least a portion of the device, e.g., the device’s faceplate, and ii) one or
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more relationships specifying how to navigate between the vector images,
and an interface to provide access to the vector images. (Ans. 7-8.)
However, the Examiner found that Callaghan did not expressly disclose
vector images illustrating different views of the device. (Id. at 8.)
The Examiner found that Mitsuhashi disclosed information processing
wherein images illustrating different views of a device are accessed. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
Callaghan to include images illustrating different views of the device, as
disclosed by Mitsuhashi “allowing [a] user to view only a desired portion of
the device instead of a default main image of the device.” (Id. at 9.)
Appellants contend that the combined art does not teach or suggest the
claimed invention because Callaghan does not teach a device comprising a
non-volatile memory storing a plurality of vector images illustrating
different views of at least a portion of the device, as required by independent
claim 1. (App. Br. 11.) According to Appellants, Callaghan instead
“teaches storing device-related information and graphics for a device 230 in
storage 240 that is separate from the device 230.” (Id. at 12.) Further,
Appellants assert that Mitsuhashi does not cure this alleged deficiency of
Callaghan.
Moreover, Appellants assert that
[S]ince Mitsuhashi teaches storing virtual printer image data in
storage that resides on a host computer instead of in non-
volatile memory of Misuhashi’s printer …, both Callaghan and
Mitsuhashi teach away from “A device, comprising: a non-
volatile memory storing i) a plurality of vector images
illustrating different views of at least a portion of the device…,”
as recited by Claim 1.
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(Id. at 12-13.) Therefore, according to Appellants, “there is no motivation to
combine [Callaghan with Mitsuhashi] because both Callaghan and
Mitsuhashi teach away from the suggested modification.” (Id. at 12.)
We are not persuaded by Appellants’ arguments. As discussed
regarding the anticipation rejection, we found that Callaghan disclosed
storing device-related SVG files in the local memory of the device. Thus,
Callaghan does not teach away from this element of claim 1.
Further, the Examiner relied on Mitsuhashi for its teaching to store
vector images illustrating different views of at least a portion of the device,
and not as teaching or suggesting the location for the storage of such
different views. As the Examiner explained, the proposed combination of
the references involved merely including images illustrating different views
of the device, instead of only a main image of the device. (Ans. 9, 16.) We
agree with the Examiner (id.) that a person of ordinary skill in the art at the
time the invention was made would have been motivated to do so to allow a
user to view only a desired, i.e., selected, portion of the device, instead of a
default main image of the device, and that such modification would have
predictably yielded the claimed invention. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
Accordingly, we affirm the obviousness rejection of independent
claim 1. Appellants do not separately argue dependent claims 2-7 and 9-15.
(App. Br. 13.) Therefore, these claims fall with independent claim 1.
II. Claim 8
Appellants assert that Englefield does not remedy the alleged
“deficiencies in the Callaghan Mitsuhashi combination.” (App. Br. 15.)
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According to Appellants, “Claim 8 is patentable over the Callaghan
Mitsuhashi Englefield [sic] combination for at least the reasons that Claim 1
is patentable over the Callaghan Mitsuhashi Englefield [sic] combination.”
(Id. at 16.)
As we have found that Appellants have not established deficiencies in
the combination of Callaghan and Mitsuhashi, we affirm the rejection of
claim 8.

SUMMARY
We affirm each of the Examiner’s anticipation and obviousness
rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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