Ex Parte Basson et al

Patent Trial and Appeal Board

Jul 11, 2016

12329466 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/329,466 12/05/2008 Sara H. Basson
30449 7590 07113/2016
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END9200804lOUS1 8837
EXAMINER
COLEMAN, STEPHEN P
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
07/13/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH. BASSON, DIMITRI KANEVSKY,
EDWARD E. KELLEY, and IRINA RISH
Appeal2014-008496
Application 12/329,466
Technology Center 2600
Before JOHNNY A. KUMAR, KAMRAN JIV ANI, and
JOYCE CRAIG, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants' requested rehearing is filed under 37 C.F.R. § 41.52(a)(l)
on May 31, 2016 ("Request") from our Decision on Appeal mailed April 13,
2016 ("Decision"), wherein we affirmed the Examiner's rejections of claims
1-5, 7, 8, 10, 12, 13, 17, 18, 20-22, and 24-27. 1 See Decision 7-17. We
reconsider our Decision in light of Appellants' Request for Rehearing.
1 Claims 9, 11, and 14-16 were previously canceled. We reversed the
Examiner's rejections of claims 6, 19, and 23. The Examiner rejected claim
1under35 U.S.C. § 102(b) as being unpatentable over Pohja (US
2005/0096084 Al; May 5, 2005) and further added Nakamura (US
2009/0136221 Al; May 28, 2009) to reject independent claim 8 under 35
U.S.C. § 103(a), and Zuckerberg (US 2008/0091723 Al; April 17, 2008) to
reject independent claim 13 under 35 U.S.C. § 103(a). Final Act. 4 and 8.
Appeal2014-008496
Application 12/329,466
Appellants argue, inter alia, that contrary to our analysis, which relied
on Pohja as disclosing transmitting the authorization signal towards the
physical location at which the photographic image is captured, Pohja does
not explicitly or inherently disclose that the entities receiving the signal
transmitted are in the same physical location at which the photographic
image is captured (Request 1-5). Appellants concede that although
Bluetooth may imply physical proximity (Id. at 3), due to the mobile nature
of the devices of the persons captured (Id. at 4), Bluetooth does not imply
that the captured content is transmitted toward the person whose likeness
was photographed.
Analysis
In our Decision (see pages 4-- 5), we agreed with the Examiner's
findings that Pohja discloses the use of Bluetooth to transmit content
towards a physical location (Decision 8-9; Ans. 16) and, therefore, we
agreed with the Examiner that "a transmitter for transmitting the
authorization signal generated by the controller towards the physical location
at which the photographic image comprising the likeness of the person is
captured and at which the person is located" is described in Pohja. The
Examiner relied on Figures 5A and 5B of Pohja and related paragraphs 57-
61 (Final Act. 4; Ans. 15). However, we now note that in these examples of
Pohja, Bluetooth is used to retrieve content identifiers in order to identify the
person being captured, rather than to transmit associated content information
comprising an authorization signal, interpreted by the Examiner to be a URL
address. Therefore, we agree with Appellants that Pohja, exemplified in
Figure 9 and related paragraph 72, does not disclose that the step of
Appeal2014-008496
Application 12/329,466
transmission of the created content comprising the URL address takes place
towards the physical location at which the photographic image comprising
the likeness of the person is captured because a person may receive the URL
address at a later time (Request 4). We further note that because Pohja
discloses a possible transmission of the content information via email (see
Pohja i-f 61 ), there is no disclosure that the content will be transmitted to the
person identified immediately after the photographic image is captured so as
to ensure that transmission is towards their physical location. For these
reasons, we reverse our previous decision to affirm the Examiner's§ 102 (b)
rejection of claim 1 and related claims 2, 3, 5, and 7, which were not argued
separately (Request 1 ).
Upon reconsideration, we enter a new ground of rejection for claim 1,
under 35 U.S.C. § 103 (a) as being unpatentable over Pohja in view of
Nakamura of record. We adopt the Examiner's related findings and
conclusions in the Final Action and Answer, which were directed to
corresponding independent claim 8 which contains the same argued
limitation, and wherein the Examiner finds the transmission of an
authorization signal as being obvious over the combination of Pohja and
Nakamura (Final Act. 9; Ans. 21-22). Stated differently, it would have been
obvious to an artisan of ordinary skill at the time of the invention, in view of
Nakamura's transmission of an authorization signal via WLAN towards
photographees in order to obtain consent to be photographed, to transmit
such an authorization signal towards the physical location at which the
photographic image comprising the likeness of the person is captured and at
which the person is located (See Nakamura i-fi-165-67). The transmission of
the authorization signal must be in close proximity because Nakamura uses
Appeal2014-008496
Application 12/329,466
WLAN, and the photographees must physically be present in order to
confirm the authorization reply. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007).
For the same reasons, we re-affirm the Examiner's§ 103 rejections of
the remaining independent claims 8 and 13, which were not argued
separately (Request 5). The Examiner finds that the above argued limitation
is taught by a combination of Pohja and Nakamura, and rationale for
combining has been provided by the Examiner (Final Act. 9). The Examiner
finds that Nakamura teaches "receiving from the persons at the physical
location an authorization or a denial of usage of the photographic image"
(Final Act. 9; Nakamura Figs. 1-2 and i-fi-167-71), which cannot take place
unless the signal is also transmitted towards that physical location.
Therefore, we conclude that the Board's Decision did not overlook or
misapprehend Appellants' contentions with respect to independent claims 8
and 13, and the remaining claims 10, 12, 17, 18, 20-22, and 24--27, which
were not argued separately.
Summary
Appellants' request for rehearing has been granted to the extent that
our Decision has been reconsidered, and we modified our opinion to enter
new grounds of rejection. Therefore, we grant Appellants' request for
rehearing, and we hereby designate that the rejection of claims 1-3, 5, and 7
under 35 U.S.C. § 102 (b) is reversed, and we enter new grounds of rejection
for claims 1-3, 5, and 7 under 35 U.S.C. § 103(a). However, such request is
denied with respect to making any modifications to the original Decision on
claims 8, 10, 12, 13, 17, 18, 20-22, and 24--27.
Appeal2014-008496
Application 12/329,466
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
Appeal2014-008496
Application 12/329,466
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REHEARING GRANTED
37 C.F.R. § 41.50(b)