Ex Parte Battles

Patent Trial and Appeal Board

Oct 15, 2012

10859029 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AMY E. BATTLES
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Appeal 2010-003225
Application 10/859,029
Technology Center 2400
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Before ERIC S. FRAHM, DAVID M. KOHUT, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003225
Application 10/859,029

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appellant’s Disclosed Invention
Appellant discloses an image capture device that can display the
adjusted histogram and settings values (Spec. ¶ [0011]), so that the user can
benefit from immediately understanding the effect of the changes to the
settings values (Spec. ¶ [0002]).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphasis added:
1. A system which indicates settings of an image capture
device, comprising:
a photosensor configured to detect light from an object;
a processor configured to determine a setting of an image
capture parameter, the processor further configured to determine a
histogram from information received from the photosensor and
determine at least one user-adjustable setting value; and
a display configured to display a preview image of the
object, the display further configured to display the histogram
concurrently with the user-adjustable setting value received from
the processor, the histogram and the user-adjustable setting value
both being displayed as an overlay on the preview image of the
object, the user-adjustable setting value configured to provide data
related to exposure of an image to be captured, the user-adjustable
setting value configured to facilitate adjustment of exposure of an
image to be taken, based on the displayed histogram.

Appeal 2010-003225
Application 10/859,029

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The Examiner’s Rejections
The Examiner rejected claims 21-25 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 2-3.
The Examiner rejected claims 1-25 under 35 U.S.C. § 102(b) as being
anticipated by the Olympus C-750 Ultra Zoon Digital Camera (hereinafter,
“Olympus”). Ans. 3-6.
Appellant’s Contentions
(1) Appellant contends (App. Br. 5; Reply Br. 2-3) that the Examiner
erred in rejecting claims 21-25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter for numerous reasons, including: “the computer
readable medium,” as recited in claim 21, cannot be a signal because signals
do not store programs.1
(2) Appellant contends (App. Br. 5-13; Reply Br. 2-3) that the
Examiner erred in rejecting claims 1-25 under 35 U.S.C. § 102(b) as being
anticipated by the Olympus for numerous reasons, including: Olympus,
when operated in the M-mode, does not display both the histogram and the
user-adjustable setting.2

1 In response to § 101 rejection, Appellant only presents arguments on the
merits with regard to independent claim 21 (see App. Br. 5; Reply Br. 2-3).
Separate patentability is not argued for dependent claims 22-25 (see App.
Br. 5; Reply Br. 2-3). For the § 101 rejection, we select claim 21 as
representative of the group of claims 21-25. 37 C.F.R. § 41.37(c)(1)(vii).
2 In response to the § 102(b) rejection, Appellant presents the same
substantive arguments on the merits with regard to each of independent
claims 1, 7, 17, and 21 (compare App. Br. 6-8 with App. Br. 8-9 with App.
Br. 9-11 with App. Br. 11-13; see also Reply Br. 3, where only claim 1 is
argued and 2-25 stand or fall with “[s]imilar logic and reasoning [as claim
1]”). Like independent claim 1, independent claims 7, 17, and 21 similarly
Appeal 2010-003225
Application 10/859,029

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Issues on Appeal
Did the Examiner err in rejecting:
(1) claims 21-25 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter because “the computer readable medium,” as recited
in claim 21, cannot be a signal because signals do not store programs; and
(2) claims 1-25 under 35 U.S.C. § 102(b) as being anticipated by
Olympus because Olympus does not disclose displaying both the histogram
and the user-adjustable setting?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 5-13) and the Reply Brief (Reply
Br. 2-3) that the Examiner has erred.
We disagree with the Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellant’s Appeal Brief (Ans. 3-
8). We highlight and amplify certain teachings and suggestions of the
reference as follows.

recite displaying both the histogram and the user-adjustable setting value.
Appellant argues that dependent claims 2-6, 8-16, 18-20, and 22-25 are
patentable for their dependence from claims 1, 7 ,17, and 21, respectively
(App. Br. 13), which is not considered an argument for separate
patentability. In view of the foregoing, we select claim 1 as representative
of the group of claims 1-25. 37 C.F.R. § 41.37(c)(1)(vii).
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Non-statutory subject matter
Appellant contends (App. Br. 5; Reply Br. 2-3) that the “computer
readable medium,” as recited in claim 21, is drawn to statutory subject
matter because the computer readable medium is further recited to store
programs, and that transitory, propagating signals cannot store programs.
We agree with the Examiner (Ans. 3, 6) that the “computer readable
medium,” as recited in claim 21 and as construed in light of the disclosure
(see infra Spec. ¶ [0051]), is drawn to non-statutory subject matter.
In the originally filed disclosure, Appellant discloses, “a ‘computer
readable medium’ can be any means that can store, communicate, propagate,
or transport the data ... [and it] can be, for example, but not limited to ...
infrared ... or propagation medium now known or later developed.” Spec.
¶ [51] (emphasis added). Per the originally filed disclosure, the claimed
“computer readable medium” can be a transitory, propagating signal and
transitory, propagating signals are ineligible. In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007).
Therefore, we will sustain the Examiner’s § 101 rejection of claims
21-25.
Anticipation by Olympus
Appellant contends (App. Br. 6-13; Reply Br. 3) that Olympus fails to
disclose displaying both the histogram and the user-adjustable setting value,
as recited in claim 1 and as similarly recited in claims 7, 17, and 21. To
support this conclusion, Appellant relies upon Olympus’ M-mode which, in
the first bulleted note at the bottom of page 115, is disclosed as being
incapable of displaying the histogram.
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We agree with the Examiner (Ans. 4, 7) that Olympus discloses
displaying the histogram and the user-adjustable setting (Olympus 12, 114).
The Examiner did not rely upon the M-mode for this limitation, but the P-
mode. Additionally, the Examiner relies upon page 114 that, notably, shows
three distinct figures that each show both the histogram and the exposure
compensation value being displayed over the preview image (see Ans. 4, 7).
Therefore, we will sustain the Examiner’s § 102(b) rejection of claims
1-25.

CONCLUSIONS
(1) The Examiner did not err in rejecting:
(a) claims 21-25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter because the “computer readable
medium,” as recited in claim 21 encompasses signals and is thus
drawn to non-statutory subject matter.
(b) claims 1-25 under 35 U.S.C. § 102(b) as being anticipated
by Olympus because Olympus shows displaying both the histogram
and the user-adjustable setting, as recited in claim 1 and as similarly
recited in remaining independent claims 7, 11, and 21.
(2) Claims 1-25 are not patentable.

DECISION
The Examiner’s rejections of (i) claims 21-25 under § 101, and (ii)
claims 1-25 under § 102(b) are affirmed.
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).
Appeal 2010-003225
Application 10/859,029

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AFFIRMED

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