Ex Parte WebbDownload PDFBoard of Patent Appeals and InterferencesAug 28, 200910192922 (B.P.A.I. Aug. 28, 2009) Copy Citation 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. Appeal 2008-000238 Application 10/192,922 2 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. Appeal 2008-000238 Application 10/192,922 3 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 4 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 Appeal 2008-000238 Application 10/192,922 6 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. Appeal 2008-000238 Application 10/192,922 7 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 HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528 Copy with citationCopy as parenthetical citation