Ex Parte Alsaud

Patent Trial and Appeal Board

Dec 23, 2013

11502710 (P.T.A.B. Dec. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/502,710 08/10/2006 Mohammed Alsaud 11483-1 9367
7590 12/24/2013
Klaus P. Stoffel
Wolff & Samson PC
One Boland Drive
West Orange, NJ 07058
EXAMINER
CARLOS, ALVIN LEABRES
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
12/24/2013 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 MOHAMMED ALSAUD
____________________

Appeal 2012-002405
Application 11/502,710
Technology Center 3700
____________________

Before: ANTON W. FETTING, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002405
Application 11/502,710
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
rejection of claims 1-5, 7-13, 15, 16, 18, and 30-32. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.

CLAIMED INVENTION
Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A method comprising:
displaying, on a display screen of a device, a plurality of
example photographic images;
receiving from a user a selection of one of the displayed
photographic images; and
displaying simultaneously, on the display screen, the
selected photographic image and a diagram comprising
information relating to how the photographic image was taken,
including a graphical representation showing distances between
at least two of a camera, a light, and a screen.

REFERENCE
Malloy Desormeaux US 6,526,234 B1 Feb. 25, 2003

REJECTION
Claims 1-5, 7-13, 15, 16, 18, and 30-32 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Malloy Desormeaux.

Appeal 2012-002405
Application 11/502,710
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ANALYSIS
Claim 9
We choose to address independent claim 9 first, and then address
independent claim 1. Appellant relies on the same arguments for claim 9 as
presented for claim 1. Br. 7.
Independent claim 9 recites the method step of “displaying
simultaneously, on the display screen, the selected photographic image and a
diagram comprising information relating to how the photographic image was
taken, including a graphical representation showing distances between at
least two of a camera, a light, and a screen.” Br., Clms. App’x. The
Examiner finds that Malloy Desormeaux discloses, inter alia,
a digital memory configured to store a plurality of example
photographic images and corresponding diagrams (column 11
lines 15-27), comprising information relating to how the
example photographic images were taken, the information for a
respective photographic image comprising a graphical
representation showing distances between at least two of a
camera, a light, and a screen (see figures 21 and 24, column 4
lines 1-10, column 18 lines 42-67 and column 19 lines 1-36),
and a digital display screen configured to display
simultaneously at least one of the example images and a
corresponding diagram.
Ans. 4-6. The Examiner is relying on revision suggestions as both the
images and diagrams to be displayed. Revision suggestions are used
to create a second archival image based on an original archival image.
(col. 18, ll. 41-40). These revision suggestions can be presented as “a
combination of derived images and indicia.” (col. 19, ll. 7-8). The
indicia type of revision suggestions are “text messages 138a or icons
138b” (col. 18, l. 67 - col. 19, l.1) used to communicate the suggested
effect required to produce the second image. Examples of indicia are
Appeal 2012-002405
Application 11/502,710
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shown as “Z”, or “zoom.” See Fig. 26. The Examiner does not
explain how text messages or icons can be a “diagram . . . showing
distances between at least two of the camera, light, and screen” as
claimed. Thus, these indicia are not a “diagram . . . showing distances
between at least two of the camera, light, and screen.” Revision
suggestions which are displayed as derived image are referred to as
“revision suggestion images” (col. 19. ll. 4-6). We understand the
“revision suggestion images” to be the claimed “example
photographic images.”
Appellant argues that the revision suggestions of Malloy
Desormeaux are not a diagram that displays distances between
objects. In particular, the Appellant argues
Fig. 24 shows a photograph that includes a person, a building
and landscape in the background, and the sun. The photographs
of Figs. 21 and 24 do not show a “distance” between “at least
two of a camera, a light, and a screen,” as claimed. As stated
above, merely showing a sun in a photograph does not
constitute the claimed “graphical representation” showing a
distance a “camera” and a “light.”
Br. 5. Appellant further argues that the revision suggestions merely
provided suggestions of other ways to photograph the subject, but do not
include a graphical representation including distances. In particular,
Appellant argues that
Fig. 21 shows three depictions of revision suggestions for other
ways of photographing the subject. While this passage
discusses “reaiming the camera to relocate the subject at two-
thirds of the distance from the bottom edge of the picture,”
there is no teaching or suggestion of the claimed “graphical
representation showing distances between at least two of
camera, a light, and a screen”.
Id.
Appeal 2012-002405
Application 11/502,710
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To address this shortcoming, the Examiner further finds the claimed
diagram is explicitly shown by the “revision suggestion images” and adds
the user [following] the illustration would implicitly show[] a
distance between a “camera” and a “light,” or a distance
between a “camera” and a “screen,” or a distance between a
“light” and a “screen” by changing the aiming of the camera to
relocate the subject at two-thirds of the distance from the
bottom edge of the picture, reorienting the camera in a
horizontal position, and zooming in/moving closer to the
subject in order to produce the displayed graphical revision
suggestion.
Ans. 9. The Examiner appears to be relying on the “revision suggestion
image” as both the claimed “photographic image” and claimed “diagram . . .
showing distances between at least two of the camera, light, and screen.”
The Appellant argues “[Malloy ]Desormeaux discloses display devices that
display various photographs and other information, none of the devices
displays, simultaneously, an image and a ‘corresponding diagram’ that
shows ‘distances between at least two of a camera, a light, and a screen,’ as
claimed.” App. Br. 6. Because the indicia of the revision suggestion do not
constitute the claimed diagram, and the revision suggestion images cannot
be both the “photographic image” and the “diagram”, the Examiner has
erred by finding that the Malloy Desormeaux discloses displaying
simultaneously the “photographic image” and a “diagram comprising . . .
graphical representation showing distances between at least two of a camera,
a light, and a screen.” Accordingly, we do not sustain the rejection of
independent claim 9, or claims 10-13, 15, 16, 18, 31, and 32 which depend
therefrom, as anticipated by Malloy Desormeaux.

Claim 1
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Application 11/502,710
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Appellant argues claims 1-5, 7, 8, and 30 as a group. Br. 7. We select
claim 1 as the representative claim, and claims 2-5, 7, 8, and 30 will stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites a digital memory configured to store data and a digital
display to simultaneously display data. The data is further defined as
“example photographic images” and “corresponding diagrams.” See Br.,
Clms. App’x. Appellant’s arguments above are all directed at novelty based
on the type of data stored and displayed. However, the claim terms
“example photographic images” and “corresponding diagrams” are merely
descriptions of respective “data.” When descriptive material is not
functionally related to the claimed embodiment, the descriptive material will
not distinguish the invention from the prior art in terms of patentability. See
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983). We therefore interpret these terms as merely
labels describing the two types of data, “example photographic images” and
“corresponding diagrams.” That is, we give “example photographic images”
and “corresponding diagrams” its broadest reasonable interpretation as any
data, as consistent with the Specification and as specifically defined in claim
1. As Appellant’s arguments are all based on distinguishing the claimed
data types from the data stored and displayed by the prior art, Appellant’s
arguments are not persuasive. Accordingly, we affirm the rejection of
independent claim 1, and claims 2-5, 7, 8, and 30 which stand or fall
therewith, as anticipated by Malloy Desormeaux.

Appeal 2012-002405
Application 11/502,710
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DECISION
For the above reasons, the Examiner’s decision to reject claims 1-5, 7,
8, and 31 is affirmed and the Examiner’s decision to reject claims 9-13, 15,
16, 18, 31, and 32 is reversed.

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-IN-PART

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