Ex Parte Webb

Board of Patent Appeals and Interferences

Aug 28, 2009

10192922 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN L. WEBB
____________

Appeal 2008-000238
Application 10/192,922
Technology Center 2600
____________

Decided: August 28, 2009
____________

Before KENNETH W. HAIRSTON, MARC S. HOFF,
and THOMAS S. HAHN, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 11. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the anticipation rejection of claims 3 to 11, and we
will sustain the obviousness rejection of claims 1 and 2.

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Application 10/192,922

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Appellant has invented a method of using the names of people
identified in images to store and organize the images in files (Spec. 2, 6;
Abstract). Appellant’s method can create a directory based on the name of
the person in an image (Spec. 6, 7).
Claim 3 is representative of the claims on appeal, and it reads as
follows:
3. A method of naming image files, comprising:
capturing an image;
locating at least one face in the image;
comparing the at least one face in the image to a database of known
faces;
requesting a name for the face when the face does not match any of
the known faces in the database;
storing the face identification information and the name in the
database of known faces; and
storing the image into a file using a name for the file based on the
name of at least one person in the image.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Murakawa US 6,549,913 B1 Apr. 15, 2003
(filed Feb. 23, 1999)
Cooper US 6,606,398 B2 Aug. 12, 2003
(filed Sep. 30, 1998)
The Examiner rejected claims 3 to 11 under 35 U.S.C. § 102(e) based
upon the teachings of Cooper.

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The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) based
upon the teachings of Cooper and Murakawa.
In response to the Examiner’s position (Ans. 5, 13, 14) that Cooper
stores an image into a file using a name for the file based upon the name of a
person in the image, Appellant argues (Reply Br. 2) that “the database file in
Cooper does not use a name of one of the people in the image as the
database filename.”
In response to the Examiner’s position (Ans. 7, 8, 15, 16) that Cooper
creates a directory to store images based on names of people in the images,
Appellant argues (Reply Br. 2) that Cooper does not teach creating a
directory, and that the term is not mentioned in Cooper.

ISSUES
Anticipation
Has Appellant demonstrated that the Examiner erred by finding that
Cooper stores an image into a file using a name for the file based upon the
name of a person in the image?
Has Appellant demonstrated that the Examiner erred by finding that
Cooper creates a directory to store images based on names of people in the
images?
Obviousness
Has Appellant demonstrated that the Examiner erred by finding that
Cooper in combination with Murakawa teaches or would have suggested the
claimed invention set forth in claims 1 and 2?

Appeal 2008-000238
Application 10/192,922

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FINDINGS OF FACT (FF)
1. According to Appellant (Spec. 2), “[t]he digital imaging system
uses the names of the people identified in the captured images to name the
captured image file or to name the path to the captured image file.”
2. Appellant has not challenged the Examiner’s findings (Ans. 4, 5)
that Cooper describes a method of capturing an image, locating at least one
face in the image, comparing the at least one face in the image to a database
of known faces, requesting a name for the face when the face does not match
any of the known faces in the database, storing the face identification
information and the name in the database of known faces, and storing the
image into a file using identification information about at least one person in
the image.
3. Cooper describes automatic cataloging and storing of facial images
of people along with identification parameters (e.g., names 207) in database
112 (Figs. 1, 2, 3A, 3B; Title; col. 1, ll. 33, 34; col. 2, ll. 4, 5, 30 to 33, and
53 to 55; Abstract).
4. Cooper searches the database 112 by using the name 207 associated
with the image (Fig. 3A; col. 2, ll. 37 to 40; col. 3, ll. 16 to 18).

PRINCIPLES OF LAW
Anticipation
In In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999), the Court
stated:
If the prior art reference does not expressly
set forth a particular element of the claim, that
reference still may anticipate if that element is
Appeal 2008-000238
Application 10/192,922

5
‘inherent’ in its disclosure. To establish inherency,
the extrinsic evidence ‘must make clear that the
missing descriptive matter is necessarily present in
the thing described in the reference, and that it
would be so recognized by persons of ordinary
skill.’ Continental Can Co. v. Monsanto Co., 948
F.2d 1264, 1268, 20 U.S.P.Q. 2d 1746, 1749 (Fed.
Cir. 1991).

Anticipation is established when the applied reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and the Appellant has the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Anticipation
Although we agree with Appellant’s argument (Reply Br. 2) that
Cooper does not expressly state that the database file 112 uses a name of one
of the people in the image as the database filename, we are of the opinion
that Cooper inherently uses such a name for the database filename in order
to permit a search of the database file 112 via the use of a name 207. If the
database file 112 did not bear the name of a person in the image, then a
search for that name in the database file 112 would not yield that name (FF
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3, 4). Thus, the name of a person in an image in Cooper must be necessarily
present as a label or name of the database file 112 that holds the image that
matches the name in order to search that file for that person’s name as
required by claims 3 to 5, 8, and 9. Robertson, 169 F.3d at 745.
With respect to claims 6, 7, 10, and 11, we find that the cataloging and
storing of facial images of people along with names that identify the facial
images is producing a directory of those names and images (FF 3). After all,
the directory disclosed and claimed by Appellant is collecting and storing
the same names and images collected and stored by Cooper in the catalog.
Thus, it follows that anticipation has been established by the
Examiner because Cooper does disclose each and every limitation of the
claimed invention set forth in claims 3 to 11. Atlas Powder Co., 190 F.3d at
1347; Paulsen, 30 F.3d at 1478-79.
Obviousness
Inasmuch as Appellant has presented the same argument for claims 1
and 2 as was presented for claims 3 to 5, 8, and 9 (App. Br. 7; Reply Br. 4),
we find that Cooper inherently saves an image in a file using a file name
based on the name of at least one person in the image as indicated supra for
claims 3 to 5, 8, and 9. In summary, Appellant’s rebuttal does not serve to
overcome the Examiner’s prima facie case of obviousness. Oetiker, 977
F.2d at 1445.

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CONCLUSIONS OF LAW
Anticipation
Appellant has not demonstrated that the Examiner erred by finding
that Cooper stores an image into a file using a name for the file based upon
the name of a person in the image.
Appellant has not demonstrated that the Examiner erred by finding
that Cooper creates a directory to store images based on names of people in
the images.
Obviousness
Appellant has not demonstrated that the Examiner erred by finding
that the applied references teach or would have suggested the claimed
invention set forth in claims 1 and 2.

ORDER
The decision of the Examiner rejecting claims 3 to 11 under 35 U.S.C.
§ 102(e) is affirmed. The decision of the Examiner rejecting claims 1 and 2
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 CFR § 1.136(a)(1)(iv).

AFFIRMED
KIS
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