Ex Parte Baumgarten et al

Patent Trial and Appeal Board

Aug 31, 2016

11834475 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111834,475 08/06/2007
47743 7590
DOWNEY BRAND LLP
Attn: IP Docketing
P.O. BOX569
Cupertino, CA 95015
09/02/2016
FIRST NAMED INVENTOR
John S. Baumgarten
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.
18814-08000l/P5462US1 9825
EXAMINER
SONG, DAEHO D
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
IPDocketing@DowneyBrand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHNS. BAUMGARTEN and
CHRISTOPHER BROOKE SHARP
Appeal2015-004101
Application 11/834,475
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-22 and 24--31. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal2015-004101
Application 11/834,475
STATEMENT OF THE CASE
Appellants' invention adaptively publishes content, such as digital
images. Spec. i-f 3. In one embodiment, the invention first sends lower-
quality content before sending higher-quality content. Id. For example,
lower-quality content includes a low-resolution image, and the higher-
quality content includes the corresponding high-resolution version that better
matches the display properties. Id. By sending two different quality images,
the invention balances quality with delivery speed. Id. Claim 1 is
illustrative:
1. A computer-implemented method, comprising:
storing an original content item and a first derivative
content item in a storage, the derivative content item derived
from the original content item and having an image quality less
than the original content;
receiving, by a content server, a request from a remote
device having an output device, the request including
information about the remote device and an identifier associated
with the original content item;
responsive to the request, transmitting, by the content
server, the first derivative content item to the remote device for
outputting the first derivative content item using the output
device;
determining, based on the received request, that a property
of the output device of the remote device does not match a
corresponding property of the first derivative content item;
generating, by a content server, a second derivative
content item that is a derivative of the original content item, the
second derivative content item having a property that matches
the property of the output device of the remote device and has an
image quality greater than the first derivative content item and
less than the original content; and
2
Appeal2015-004101
Application 11/834,475
transmitting, by the content server, the second derivative
content item to the remote device for outputting the second
derivative content item using the same output device.
THE REJECTIONS
The Examiner rejected claims 1-15, 19, 21, 22, 25, 26, and 28-31
under 35 U.S.C. § 103(a) as unpatentable over Meek (US 2006/0179080 Al;
published Aug. 10, 2006), Wilkins (US 2004/0027593 Al; published Feb.
12, 2004), and Fukuda (US 2005/0110882 Al; published May 26, 2005).
Final Act. 3-11. 1
The Examiner rejected claims 16-18, 20, 24, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Meek, Wilkins, Fukuda, and Pyhalammi
(US 2004/0066419 Al; published Apr. 8, 2004). Final Act. 12-16.
THE OBVIOUSNESS REJECTION OVER MEEK, WILKINS, AND
FUKUDA
Contentions
Regarding claim 1, the Examiner finds that Meek stores the recited
content item and a first derivative content item, receives the recited request
from a remote device, and transmits the first derivative content.
Final Act. 3--4. The Examiner finds that Meek lacks the recited determining
step, but cites Wilkins in concluding that this limitation would have been
obvious. Id. at 4. In particular, the Examiner finds that Wilkins determines
whether to resize an image to match an output resolution. Id. (citing Wilkins
1 Throughout this Opinion, we refer to (1) the Final Rejection, mailed
January 6, 2014 ("Final Act."); (2) the Appeal Brief filed October 20, 2014
("App. Br."); (3) the Examiner's Answer2 mailed December 22, 2014
("Ans."); and ( 4) the Reply Brief filed February 23, 2015 ("Reply Br.").
3
Appeal2015-004101
Application 11/834,475
ilil 16-20, Fig. lb). According to the Examiner, Wilkins's step 156 produces
a first derivative image, and Wilkins further creates a resized image
corresponding to the second derivative image. Ans. 5---6.
The Examiner further finds that the Meek-Wilkins combination lacks
a second derivative having an image quality greater than the first, but less
than the original. Final Act. 5. The Examiner, however, cites Fukuda for
teaching this feature in concluding that the claim would have been obvious.
Id. (citing Fukuda i-fi-f 13, 20-21).
Appellants argue that Wilkins's working buffer cannot correspond to
the first derivative content item because Wilkins's working buffer has the
same resolution as the original buffer. App. Br. 15-16. According to
Appellants, the recited first derivative content item's image quality is less
than the original content item's. Id.
Appellants further contend that the Examiner has conceded that Meek
and Wilkins lack a second derivative content item with an image quality
greater than the first, but less than the original. Reply Br. 4---6. In
Appellants' view, the rejection should be reversed for at least the reason that
the Examiner has conceded that the Meek-Wilkins combination lacks this
feature. Id. at 6.
Appellants even further argue that skilled artisans would have been
motivated against the proposed combination because modifying Meek to
incorporate Wilkins would amount to extra work for no apparent reason.
App. Br. 13-15; Reply Br. 4. According to Appellants, Meek would not
encounter the recited situation, where the image's resolution does not match
the output device's resolution, because Meek' s server only sends images
with the requested properties. App. Br. 14; Reply Br. 1--4. Appellants
4
Appeal2015-004101
Application 11/834,475
contend that Meek has no need for Wilkins. Reply Br. 1--4. In Appellants'
view, the Examiner's reason to combine lacks an articulated reasoning with
some rationale underpinning. App. Br. 16-17.
Lastly, Appellants argue that the combination does not transmit a first
derivative content item to a remote device despite having a property that
does not match. Id. at 11-13. According to Appellants, the invention
transmits the first derivative content item so the user can receive the item
quickly. Id. at 12.
Issues
Under§ 103(a), has the Examiner erred by finding that Meek,
Wilkins, and Fukuda collectively would have taught or suggested:
I. a derivative content item having an image quality less than the
original content, as recited in claim 1?
II. (1) determining that the first derivative content does not match the
output device's property and (2) generating a second derivative content item
with the recited image quality, as in claim 1?
III. Is the Examiner's combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
Analysis
I
We begin by construing the key limitation of claim 1, which recites, in
part, that the first derivative content item has an "image quality less than the
original." According to the Specification, one non-limiting example of
5
Appeal2015-004101
Application 11/834,475
image quality is resolution. See Spec. il I 6. Although claim 1 is not limited
to this example (id.), it nevertheless informs our construction of the claim.
That is, the first derivative content item can have an image quality less than
the original, but not necessarily a lower resolution.
Given this interpretation, we are unpersuaded that, because Wilkins's
working buffer has the same resolution as the original buffer, it cannot also
have quality that is less than the original. See App. Br. 15-16.
For example, the Examiner notes that Meek's derivative images can
have a smaller size than the high-quality original. Ans. 5 (citing Meek i-f 9).
That is, the size of Meek's images, but not necessarily their resolution, is
smaller. See Meek i-fi-17-9. For example, each pixel in a 512x512 image
could be represented by 8 bits in the grayscale color space. Id. i-f 7. In this
case, the image's pixel data would use 512x512x8 bits. See id. But a larger
image of the same resolution could use three 8-bit numbers to represent each
of the 512x512 pixels in an RGB 2 color space. See id. ,-r 8. In this case, the
pixel data would use 512x512x8x8x8 bits. See id. That is, changing the
color space could result in a smaller image. See Meek i-f 80 (discussing
requesting a particular color space) (cited in Final Act. 3). So, an image
with less quality could include, among other things, Meek's smaller image.
We understand the Examiner's proposed combination to involve using
Wilkins's image-editing operations in step 15 6 (Wilkins i-f 1 7 (cited in
Ans. 5)) in some way to create the smaller image discussed in Meek
(Meek i-f 9 (cited in Ans. 5)}-i.e., the recited lower quality image. That is,
according to the Examiner, Wilkins performs image-editing operations in
2 RGB stands for Red, Green, and Blue. Meek ,-r 6.
6
Appeal2015-004101
Application 11/834,475
step 156 to create the first derivative. Ans. 5 (citing Wilkins il I 7).
Accordingly, we are unpersuaded that the Examiner has erred in finding that
this combination collectively teaches a derivative content item having an
image quality less than the original content (Final Act. 3; see also Ans. 5).
II
Under this modification, we agree that Wilkins also performs the
recited determination and generation of the second derivative to match the
output device's property. Final Act. 4 (citing Wilkins i-f 18); see also
Ans. 5---6. That is, Wilkins resizes the image resulting from step 156, which
performs image operations to produce a first derivative image. Wilkins i-f 18.
The Examiner finds that this resized image corresponds to the recited second
derivative content item. See Ans. 5---6.
Although Appellants argue that neither Wilkins nor Meek teaches the
recited image quality for this second derivative content item (Reply Br. 4---6),
those references were not cited for this feature. Rather, the Examiner cites
Fukuda for the recited image quality greater than the first, but less than the
original. Final Act. 4--5. Appellants' arguments regarding Wilkins's and
Meek's individual shortcomings regarding the second derivative content
item's quality, then, are unpersuasive. The arguments are not only
inapposite to the Examiner's reliance on Fukuda; they do not show
nonobviousness where, as here, the rejection is based on the cited
references' collective teachings. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
7
Appeal2015-004101
Application 11/834,475
III
We are also unpersuaded that the proposed modification would
amount to extra work for no apparent reason (App. Br. 13-15; Reply Br.
1--4) or that the Examiner has dissected the claim into discrete elements
(App. Br. 11-13).
Contrary to Appellants' argument (id. at 14; Reply Br. 1--4), the
Examiner identifies a situation where Meek' s image resolution does not
match the output device's resolution. See Ans. 4. For example, the
Examiner finds that Meek's derivative-data requirements change when the
user wants to print the image. Id. (citing Meek i-f 11 ). In this example,
Meek's client receives a first derivative image in a webpage. Meek i-f 62.
To create this first derivative image, a source image is transformed into a
web-ready version. Id. i-f 63. If Meek's client wants to print the image, the
web-ready derivative may not match the printer's characteristics. Id. i-f 65.
This mismatch may distort the resulting printout. Meek i-f 65. Therefore,
Meek has a need to adapt the image resolution to meet different uses for the
image. See Ans. 4.
Because Meek's derivative-image requirements change in this way,
the Examiner's reason for using Wilkins's match determination to meet
these evolving requirements automatically (id.) is a sufficient rational
underpinning to justify the obviousness conclusion. Such an enhancement
uses prior art elements predictably according to their established functions-
an obvious improvement. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007). On this record, we disagree that the Examiner's proposed
combination would amount to extra work for no apparent reason. See
App. Br. 13-15.
8
Appeal2015-004101
Application 11/834,475
Likewise, we are unpersuaded that the Examiner has dissected the
claim into discrete elements, and in doing so, has failed to present a prima
facie case of obviousness. See id. at 11-13. Although the Examiner cites
different references for the quoted limitations on page 12 of the principal
Brief (see Final Act. 3---6), the Examiner's proposed modification does not
ignore the interrelationships discussed by Appellants (App. Br. 11-13). For
example, we agree that claim 1 requires a determination that the first
derivative content does not match the output device's property. See id. But
here, the Examiner finds that Wilkins makes this determination. Final Act. 4
(citing Wilkins i-fi-f 16-20, Fig. 1 b ). The Examiner further proposes
incorporating this teaching into Meek, as described above. Final Act. 5. So,
the recited relationship follows from the Examiner's modification to Meek.
See id. Therefore, we are not persuaded that the Examiner has disregarded
the recited relationship between the content items. See App. Br. 11-13.
To the extent that Appellants argue that the claims require quickly
transmitting and receiving items (id. at 12), such arguments are not
commensurate with the scope of claim 1. Specifically, claim 1 does not
recite transmitting a first or second derivative content item in a particular
time period, let alone quickly. Rather, claim 1 recites only that the first
derivative content item is transmitted responsive to a request. Furthermore,
claim 1 's final step only requires "transmitting" the second derivative
content item to the remote device-without limitation on responsiveness.
Accordingly, we are unpersuaded by Appellants' argument (id.) that the
Examiner has disregarded the claim language in this respect.
We, likewise, disagree with Appellants that Meek does not transmit
the web-ready version to the client before creating the print-ready version.
9
Appeal2015-004101
Application 11/834,475
See Reply Br. 2--4. For example, Meek states that the client requests web
pages containing image 20 derived from a source image. Meek i-f 62. Image
20 is web-ready. Id. i-f 63. Meek expressly states that a client must create a
"new derivative image (different from the derivative file 20)" before printing
the image. Id. i-f 65 (emphasis added). On this record, the Examiner's
finding that Meek's client can use a second derivative image (Ans. 4) is
reasonable.
Accordingly, we sustain the Examiner's rejection of claim 1, and
claims 2-15, 19, 21, 22, 25, 26, 29, and 31, not argued separately with
particularity. See App. Br. 14--20; Reply Br. 9.
Claims 2 8 and 3 0
Claim 28 recites, in part, providing the second derivative content
without receiving a further request from the remote device after the first
request is received from the remote device.
The Examiner finds that Wilkins provides the second derivative
content item after the resize operation. Ans. 7 (citing Wilkins, Fig. 1 b ). In
the Examiner's view, Wilkins waits for user input only after the second
derivative content is provided.
Appellants argue that the cited portion of Wilkins does not take an
action without further request. App. Br. 17-18; Reply Br. 6-7. According
to Appellants, Wilkins waits for a request to re-render the image or a user
request for a new image. App. Br. 18 (quoting Wilkins i-f 18). But in
Appellants' view, the claims require transmitting the second item to the
remote device without a request from that remote device. Reply Br. 6-7.
10
Appeal2015-004101
Application 11/834,475
In the embodiment relied upon by the Examiner, Wilkins performs
image operations in two different steps. See Wilkins i-fi-f 16-20 (cited in
Final Act. 13). First, Wilkins performs image-editing operations in step 156.
Wilkins i-f 17. The Examiner finds that step 156's output corresponds to the
first derivative image. See Ans. 5, 7. Second, Wilkins resizes the image
output from step 156. Wilkins i-f 18. The resized image, in the Examiner's
view, corresponds to the second derivative image. See Ans. 5---6.
Appellants have not identified any request made before Wilkins
provides this resized image. See App. Br. 17-18; Reply Br. 6-7. That is, in
step 166, Wilkins provides the resized image (the recited second derivative
image). See Ans. 8 (discussing Wilkins's resized image provided by output
device). To be sure, Wilkins waits for input in step 168. App. Br. 18
(quoting Wilkins i-f 18). But step 168 is performed only after Wilkins
provides the resized image (the recited second derivative image) in step 166.
Wilkins i-f 18. On this record, then, the Examiner's finding that Wilkins
provides the second derivative content without receiving a further request
(Ans. 7) is reasonable.
Accordingly, we sustain the Examiner's obviousness rejection of
claim 28 and claim 30, not argued separately with particularity. See
App. Br. 20; Reply Br. 9.
11
Appeal2015-004101
Application 11/834,475
THE OBVIOUSNESS REJECTION OVER MEEK WlLKINS FUKUDA
' ' '
AND PYHALAMMI
Appellants argue that claim 163 is patentable for reasons similar to
those presented against the rejection of claim 1. App. Br. 19. So, to the
extent that Appellants' earlier arguments apply to claim 16, we are
unpersuaded by these arguments for the reasons discussed previously.
Appellants also argue that Meek does not determine whether any
content item in the folder has the recited matching properties. Id.
According to Appellants, the claim requires more than determining whether
the device characteristics match the source-data file's characteristics. Id.
Appellants emphasize that the claimed method considers any content item in
the folder. Id. Appellants further contend that Wilkins, Fukuda, and
Pyhalammi have not been cited to remedy the deficiencies of the cited
portions of Meek. Id.
In the Final Rejection, the Examiner finds that Meek determines
whether any content item in the folder has the recited matching properties.
3 We note that claim 16 's steps of providing and generating content items are
performed only if none of the folder's items have properties matching the
output device's properties. That is, these steps are conditioned either
expressly or implicitly on the recited match. Notably, the Federal Circuit
has held that "[i]f the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed." Cybersettle, Inc. v. Nat 'l
Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007)
(unpublished); see also Applera Corp. -Applied Biosystems Grp. v.
Illumina, Inc., 375 Fed.Appx. 12, 21 (Fed. Cir. 2010) (unpublished)
(affirming a method claim's interpretation as including a step that need not
be practiced if the condition for practicing the step is not met). The
Examiner, however, did not articulate such a construction. See Final
Act. 12-13. Nor will we speculate in that regard here in the first instance on
appeal.
12
Appeal2015-004101
Application 11/834,475
Final Act. 12. But the Examiner also cites Pyhalammi for storing items in
folders. Id. at 13-14. In the Answer, the Examiner clarifies this rationale by
stating that the recited determining would have been obvious over the
proposed combination. Ans. 9. According to the Examiner, the limitation at
issue would have been obvious in view of Pyhalammi' s folders combination
with the Meek and Wilkins's matching determination. Id.
In particular, Pyhalammi stores miniaturized images 62, 64, and 66 in
image folder 68. Pyhalammi i-f 32 (cited in Final Act. 13). And as discussed
above, Wilkins determines whether a content item's resolution matches the
output resolution. See, e.g., Wilkins, Fig. 1 b, step 162.
Appellants have not shown, for example, that using Pyhalammi' s
folders to store the content items would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans. See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Nor have Appellants shown that the Examiner's proposed combination
would render the prior art unsuitable for its intended purpose to teach away
from such an approach. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984).
In fact, Appellants' Reply Brief does not contain any substantive
analysis of, or rebuttal to, the Examiner's findings regarding claim 16. See
Reply Br. 2-9. And Appellants' arguments in the principal Brief directed to
the Meek reference alone (App. Br. 19) are not persuasive where, as here,
the rejection is based on the cited references' collective teachings. See In re
Merck & Co., Inc., 800 F.2d at 1097.
On this record, we are not persuaded that the Examiner has erred in
concluding that it would have been obvious to use Pyhalammi's method to
13
Appeal2015-004101
Application 11/834,475
store content items in the Meek-Wilkins-Fukuda combination (see Final Act.
13-14).
Accordingly, we sustain the Examiner's obviousness rejection of
claim 16, and claims 17, 18, 20, 24, and 27, not argued separately with
particularity. See App. Br. 19-21; Reply Br. 9.
CONCLUSION
The Examiner did not err in rejecting claims 1-22 and 24--31 under
§ 103.
DECISION
The Examiner's decision rejecting claims 1-22 and 24--31 is 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)(l )(iv).
AFFIRMED
14