Ex Parte Whitham

Patent Trial and Appeal Board

Sep 9, 2014

12392393 (P.T.A.B. Sep. 9, 2014)

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.
12/392,393 02/25/2009 Charles L. Whitham 08360003AA 8783
30743 7590 09/10/2014
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
REISNER, NOAM S
ART UNIT PAPER NUMBER
2852
MAIL DATE DELIVERY MODE
09/10/2014 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 CHARLES L. WHITHAM
____________

Appeal 2012-007157
Application 12/392,393
Technology Center 2800
____________

Before CHARLES F. WARREN, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the decision of the
Primary Examiner finally rejecting claims 1, 2, 5–11, 13, 14, 16, and 17.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral
Hearing was held on August 26, 2014.
We reverse.

1 Appellant states that he is also the Real Party-In-Interest (Appeal Br. 3).
We note that the assignment records of the U.S. Patent and Trademark
Office indicate that the application on appeal has been assigned to
WHITHAM HOLDINGS, LLC.
Appeal 2012-007157
Application 12/392,393

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a digital camera with a high
dynamic range mode of operation and to methods of operating such a
camera (Spec. 1). High Dynamic Range (HDR) photography is a process
which allows the photographer to capture a greater range of tonal detail than
can be captured in a single photograph (id.). In particular, HDR
photography combines a number of photographs of a scene taken at varying
exposures. The resulting combination gives each portion of the scene the
best possible exposure level.
The claimed digital camera includes a shutter mechanism, an HDR
mode of operation interface operable by a user, and a controller (claims 1
and 17), where the controller computes bracketing of a nominal exposure by
one or more under exposures and one or more over exposures, and causes
the shutter mechanism, upon being activated, to take each of the necessary
photographs (id.). The user, therefore, is able to capture a set of HDR
combinable images using only one selection operation followed by a single
shutter activation (id.). Independent claims 1 and 16 are representative and
are reproduced below from the Claims Appendix to the Brief:
1. A digital camera comprising:
a shutter mechanism;
a high dynamic range (HDR) mode of operation
selection interface operable by a user; and
a controller,
wherein when an HDR mode of operation is
selected by the user using said HDR mode of operation
selection interface, said controller
computes bracketing of a nominal exposure by one or
more under exposures and one or more over
exposures of a scene to be photographed; and
Appeal 2012-007157
Application 12/392,393

3
causes said shutter mechanism, upon a single shutter
activation, to make in rapid succession the one or
more under exposures, the nominal exposure and
the one or more over exposures of the scene,
whereby the user is able to capture a set of HDR
combinable images using only one selection operation by the
user followed by actuation of a single shutter activation.
16. A method of operation by a digital camera,
comprising the steps of:
providing a high dynamic range (HDR) mode of
operation selectable by a user in a single operation;
when the HDR mode of operation is selected by a user,
the digital camera automatically performs the steps of:
computing bracketing of a nominal exposure by one or
more under exposures and one or more over
exposures of a scene to be photographed;
setting the camera to aperture priority mode of operation,
overriding any other mode of operation previously
selected by the user, when the HDR mode of
operation is selected by the user; and
upon a single shutter activation by the user, makes in
continuous succession the one or more under
exposures, the nominal exposure and the one or
more over exposures of the scene;
wherein the camera includes a lens, the camera and lens
implementing an autofocus function and an exposure metering
function, further comprising the step performed by the digital
camera of disabling the autofocus function during the
successive exposures in response to the single shutter
activation,
whereby the user is able to capture a set of HDR
combinable images using only one selection operation by the
user followed by actuation of a single shutter activation.
Appeal 2012-007157
Application 12/392,393

4
REJECTIONS
The following rejections are appealed:
(1) Claims 1, 2, 5, 8–10, 13, 14, 16, and 17 under
35 U.S.C. § 103(a) as being unpatentable over Ogi2 in view of Matsushima.3
(2) Claims 6, 7, and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Ogi in view of Matsushima, and further in view of Ishida.4
The Examiner finds that Ogi discloses a digital camera having an HDR
mode of operation selection interface operable by a user (Ans. 6 (citing Ogi,
Fig. 1, item 3).) The Examiner further finds that although Ogi’s mechanism
is described as an automatic exposure bracketing (AEB) mode, “HDR mode
of operation or bracketing mode is merely a matter of nomenclature so long
as the multiple images are suitable for HDR combination” (Ans. 6).5
The Examiner further finds that Ogi discloses a controller which
computes bracketing of a nominal exposure of one or more under exposures
and one or more over exposures of a scene (Ans. 6–7 (citing Ogi, col. 3,
ll. 56–61)). The Examiner acknowledges that Ogi does not specify that the
disclosed AEB mode is one which is conducive to creating images which are
HDR combinable (Ans. 4).
The Examiner also finds that Matsushima discloses a shutter
mechanism (Ans. 6), and also that Matsushima discloses the use of an

2 Ogi et al., U.S. Patent No. 6,427,052 B1, issued July 30, 2002.
3 Matsushima, U.S. Patent No. 5,333,027, issued July 26, 1994.
4 Ishida et al., U.S. Patent No. 4,959,680, issued September 25, 1990.
5 Appellant disputes this finding, arguing that AEB mode is not HDR mode,
because automatic exposure bracketing is only a small part of HDR
photography (e.g., Appeal Br. 33, 35, Reply Br. 7). However, we need not
and do not address this issue as Appellant has shown reversible error in the
Examiner’s prima facie case of obviousness.
Appeal 2012-007157
Application 12/392,393

5
aperture priority mode in connection with an automatic bracketing mode
(Ans. 5). The Examiner concludes that it would have been obvious for a
person of skill in the art to provide the AEB mode of Ogi with the aperture
priority mode disclosed in Matsushima to provide bracketed images with a
constant depth of field6 (id.).
Appellant argues that neither reference teaches an HDR mode, that
both simply provide an AEB mode, and further emphasizes that the
advantage of the claimed invention is in simplifying the process for taking
HDR combinable images (Appeal Br. 33–35). Appellant also disputes the
Examiner’s finding that Matsushima discloses the capturing of a set of HDR
combinable images using a single shutter activation (Appeal Br. 41). In
particular, Appellant argues that although Matsushima teaches a “continuous
shooting mode” (where a single shutter activation results in the taking of
multiple images), Matsushima teaches that its continuous shooting mode is
useful for taking pictures of moving objects, which would not be suitable for
HDR combination (Reply Br. 8 (citing Matsushima, col. 2, ll. 30–40)).
DISCUSSION
To reject a claim in a patent application as obvious under
35 U.S.C. § 103(a), the examiner has the initial burden of establishing a
prima facie case of obviousness. “In the absence of a proper prima facie case
of obviousness, an applicant who complies with the other statutory
requirements is entitled to a patent.” In re Rouffet 149 F.3d 1350, 1355 (Fed.
Cir. 1998). In this instance, each of the independent claims recites a
requirement that the claimed camera (or method) provide for the taking of a

6 The Specification notes that having a constant depth of field is very helpful
in providing HDR combinable images (e.g., Spec. 3).
Appeal 2012-007157
Application 12/392,393

6
set of HDR combinable images by actuation of a single shutter activation.7
However, the Examiner has not shown that, in combination, the cited
references teach this claim limitation. Specifically, the Examiner finds that
Ogi does not disclose capturing the images in a single shutter activation (Ans.
18), but relies on Matsushima’s teachings of a continuous shutter mode to
cure this deficiency (id.). However, Matsushima explicitly teaches that the
continuous shutter mode is used to capture shots of moving subjects (col. 2,
ll. 30–40). Such images would not be HDR combinable. Therefore, we find
that the Examiner has not provided a reasoned explanation of why a person
of ordinary skill in the art would have combined Matsushima’s continuous
shutter mode with Ogi’s camera to produce a set of HDR combinable images.
In addition, each independent claim includes a limitation that the
controller computes bracketing of a nominal exposure by one or more under
exposures and one or more over exposures. The Examiner argues that this
limitation is taught by Ogi because “Ogi discloses capturing a set of
bracketed images and over-, normal, and under-exposures, which necessitates
a controller to calculate those values” (Ans. 6). However, as noted by
Appellant (Reply Br. 7), Ogi specifically teaches that the user—not the
controller—selects the bracketing using the AEB bracketing dial (see, e.g.,
Ogi, col. 1, ll. 43–50 (the AEB dial manipulated by the user includes at least
one pair of range marks “representing an exposure compensation range”)).
Thus, the Examiner has not shown where the cited prior art teaches or

7 Claims 1, 9, 16, and 17 each contain the phrase “whereby the user is able to
capture a set of HDR combinable images . . . by actuation of a single shutter
activation.”
Appeal 2012-007157
Application 12/392,393

7
suggests the claim limitation that the controller computes the bracketing
limits.
For the foregoing reasons, we determine that the Examiner has not
made out a prima facie case of obviousness, requiring reversal of the
rejections.
CONCLUSION
We REVERSE the rejection of claims 1, 2, 5, 8–10, 13, 14, 16, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Ogi in view of
Matsushima.
We REVERSE the rejection of claims 6, 7, and 11 under
35 U.S.C. § 103(a) as being unpatentable over Ogi in view of Matsushima,
and further in view of Ishida.

REVERSED

cdc