Ex Parte Bennett

Board of Patent Appeals and Interferences

Aug 29, 2012

11143868 (B.P.A.I. Aug. 29, 2012)

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.
11/143,868 06/02/2005 James Ronald Bennett N0210US 8070
37583 7590 08/30/2012
NAVTEQ NORTH AMERICA, LLC
425 West RANDOLPH STREET
SUITE 1200, PATENT DEPT
CHICAGO, IL 60606
EXAMINER
TON, MINH TOAN T
ART UNIT PAPER NUMBER
2882
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JAMES RONALD BENNETT
________________

Appeal 2010-003853
Application 11/143,868
Technology Center 2800
________________

Before ERIC B. CHEN, BRUCE R. WINSOR, and
GLENN J. PERRY, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003853
Application 11/143,868

2
STATEMENT OF THE CASE
Introduction
Appellant invokes our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection
1
of claims 1-13 and 15-21. Claim 14 was
cancelled.
2
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Invention
Appellant’s claims relate in general to printing a photograph with a
map on the reverse side indicating a location associated with an image
depicted in the photograph. Claims 1 and 15 are illustrative and are
reproduced below with disputed claim limitations emphasized.
1. A method for producing a photograph comprising:

acquiring data that represents an image with information that indicates
a location associated with the image;

using the image data for printing the image on a front side of a
photographic print; and

using the location information associated with the image for printing
a map of the location directly on a back side of the photographic print.

15. A photograph comprising:

a photographic print having an image printed on a front side of the
photographic print; and

a map printed directly on a back side of the photographic print,
wherein location information associated with the image is used to print the
map.

1
Final Rejection (“Final Rej.”) mailed September 26, 2008
2
Appellant’s “Claims Appendix” to Appeal Brief.
Appeal 2010-003853
Application 11/143,868

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Evidence Considered
The Examiner relies on the following prior art in rejecting the claims:
Squibbs US 2001/0015759 A1 Aug. 23, 2001
Ota US 6,437,797 B1 Aug. 20, 2002
Kinjo US 2003/0184654 A1 Oct. 2, 2003
Redd US 6,646,754 B1 Nov. 11, 2003
Shih US 6,674,923 B1 Jan. 6, 2004
Silverbrook WO 99/04368 Jan. 28, 1999

The Rejections

1. The Examiner rejected claims 1-4, 6-8, 10, 12, 13, 15, 16, and 18
under 35 U.S.C. § 103(a) as being obvious based on the teachings of
Squibbs and, either Redd or Silverbrook. Ans. 3.
3

2. The Examiner rejected claims 5, 9, 11, 17, and 18 under 35 U.S.C.
§ 103(a) as being obvious based on the teachings of Squibbs, Redd, and Ota.
Ans. 6.
3. The Examiner rejected claims 19-21 under 35 U.S.C. § 103(a) as
being obvious based on the teachings of Redd and Squibbs. Ans. 7.
4. The Examiner rejected claims 1-4, 6-8, 10, 12, 13, 15, 16, and 18-
21 under 35 U.S.C. § 103(a) as being obvious based on the teachings of
Squibbs and Shih. Ans. 9.

3
Throughout this opinion, we refer to (1) the Appeal Brief (“App. Br.”) filed
April 15, 2009 (an amended argument section (“Amended App. Br.”)
including 12 pages was filed May 18, 2009 in response to Notification of
Non-Compliant Appeal Brief mailed May 11, 2009); (2) the Examiner’s
Answer (“Ans.”) mailed September 2, 2009; and (3) the Reply Brief (“Reply
Br.”) filed November 2, 2009.
Appeal 2010-003853
Application 11/143,868

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5. The Examiner rejected claims 1 and 12 under 35 U.S.C. § 103(a)
as being obvious based on the teachings of Kinjo, Squibbs, and Redd. Ans.
11.

REJECTIONS BASED ON SQUIBBS, REDD AND SILVERBROOK
Appellant’s Contentions
Appellant argues that, as to independent claim 1, none of the
references teach using location information associated with an image for
printing a map directly on the back side of a photo. Amended App. Br. 5-9.
Appellant argues that, as to independent claim 15, none of the references
teach a map printed directly on a back side of the photographic print,
wherein location information associated with the image is used to print the
map. Amended App. Br. 5-9. Appellant further argues the Examiner’s
obviousness rationale does not account for Squibbs’ labels being used when
a computer cannot automatically associate location data with image data.
Amended App. Br. 7.

Examiner’s Findings
The Examiner finds that Squibbs discloses a camera with a GPS
receiver that stores location information at the time a photo is taken. When
photos are downloaded from the camera, digital photos are printed with
location data stamped thereon. For traditional film photos, a label is printed
to be affixed to the back of the photo. This label may be in the form of a
map. Ans. 3-4.
Squibbs explains that:
[0110] The photos can be traditional (chemical) snaps and the
uniting is done by printing labels with the location data, these
Appeal 2010-003853
Application 11/143,868

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labels then being stuck on the back of the snaps (preferably this
location data takes the form a map showing the location where
the photo was taken)---- in this case, the labels are numbered to
correspond to photo numbers.

[0111] Preferably, however, the photos are digital (or digitised)
and the uniting of the photos with the location information is
done in a PC or other computing device as part of the album
program. Processes for effecting this uniting will be described
hereinafter.

Squibbs, paragraphs 0110 and 0111.
Thus, according to the Examiner, Squibbs discloses claim 1 except for
printing the map information “directly” on the back side of the photo.
Ans. 5.
Redd discloses backprinting information onto photo prints. See
Figs. 4A, 8, and 10 and col. 6, ll. 37-59, col. 17, ll. 51-67, and col. 18, ll. 1-
15. Ans. 5.
Silverbrook discloses at page 325, lines 12-21, and in Figures 248 and
249, printing, on the back of a photograph, the location where the
photograph was taken and time and date information. This location
information is known at the time of printing. Ans. 5.
The Examiner concludes that it would have been obvious at the time
the invention was made to a person having ordinary skill in the art to print
the map directly onto the back of the photo based on either the combined
teachings of Squibbs and Redd or the combined teachings of Squibbs and
Silverbrook. Ans. 5.

Appeal 2010-003853
Application 11/143,868

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Analysis
We are not persuaded of error in these Examiner rejections.
First, we construe claims 1 and 15. We conclude that both claims
encompass acquiring location data and associating the location data with a
photograph. We also conclude the claims encompass any manner, sequence,
or timing of printing the photograph and map. We agree with the Examiner
that it would have been obvious to print a map directly on the back of a
photo. The Examiner has articulated a reasonable rationale with rational
underpinings. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Squibbs associates an image with location data
4
and teaches presenting a
map showing locations of photo images.
5
The photos can be traditional
(chemical) printed photos with the location data printed on a label that is
affixed to the back side of the printed photo.
6
Redd and Silverbrook teach
printing directly on the back of a photo.
7
We conclude that it would have
been obvious for one of ordinary skill based on Squibbs with either Redd or
Silverbrook to print a location map “directly” onto the back of a photo.
In addition, Silverbrook teaches printing the location where the
photograph was taken (derived from a global positioning sensor) on the back
of photographic prints.
8
We find that it would have been a matter of simple
substitution for one of ordinary skill to print a map in place of the routing
and other information on such a postcard. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. at 417. We, therefore, sustain these rejections.

4
See Squibbs Abstract.
5
See Squibbs Figures 6 and 7.
6
See Squibbs paragraph [0110].
7
See Redd Figure 8; Silverbrook Title and Field of the Invention.
8
Answer 13.
Appeal 2010-003853
Application 11/143,868

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REJECTIONS BASED ON REDD AND SQUIBBS
Claims 19 and 20 are reproduced below.
19. An online method for producing photographs comprising:

from each of a plurality of users, receiving data corresponding to an
image and information that indicates a location associated with the image;

using the image data for printing the image on a front side of a
photograph;

using the location information for printing a map of the location
directly on a back side of the photograph; and

providing the photograph to the user from whom the image was
received.

20. A printer comprising:

means for receiving data corresponding to an image;
means for receiving data that indicates a location associated with the
image;

means for printing the image on a front side of a photographic print
using the image data; and

means for printing a map of the location directly on a back side of the
photographic print using the location data.

Appellant’s Contentions
Appellant argues that independent claims 19 and 20 are not obvious
based on Redd and Squibbs because neither teaches printing a map directly
on the back of a photo. Amended App. Br. 6-7. Appellant also argues that
the rationale provided by the Examiner for finding obviousness is inadequate
because Redd does not describe that “predetermined information” includes a
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Application 11/143,868

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location associated with an image. Even if Redd were provided with a map
generating means, Appellant argues, no map could be generated without
location information. Amended App. Br. 6-8.

Examiner’s Position
The Examiner provided the following rationale:
It would have been obvious at the time the invention was made
to a person having ordinary skill in the art to print maps on the
backside of the prints in Redd et al. in view of Squibbs for the
purpose of providing additional valuable information to the
user. It would have been obvious at the time the invention was
made to a person having ordinary skill in the art to provide
Redd et al. with map generating means for generating a map in
view of Squibbs for the purpose of providing additional
valuable information to the user.

Ans. 8-9.

Analysis
We construe claim 19 in a similar manner to our construction of
claims 1 and 15. Claim 19, unlike claims 1 and 15 require that the process
be carried out for a plurality of users.
9
We conclude that claim 19
encompass acquiring location data and associating the location data with a
photograph. We also conclude the claim encompasses any manner,
sequence, or timing of printing the photograph and map. For reasons
already stated with respect to claims 1 and 15, we agree with the Examiner
that it would have been obvious to print a map directly on the back of a
photo.

9
According to the preamble of the claim “online.”
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Application 11/143,868

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Claim 20
10
is directed to a printer and has limitations commensurate in
scope with those of claim 1. As noted in our discussion of claim 1, we find
the Examiner’s rationale to be sufficient. Again, we find that it would have
been a matter of simple substitution for one of ordinary skill to print directly
onto the back of a photo in place of affixing a map to the back of a
traditional photo. See KSR, 550 U.S. at 417.

REJECTIONS BASED ON SQUIBBS AND SHIH
We are not persuaded of error in the rejections including reliance on
Shih. Shih teaches printing relevant information (including location
information) on the back of a photo. Shih prints such information directly
on the back of a photo (without the need for a label). As noted above,
Squibbs teaches affixing a map label to the back of a photo.
The Examiner’s rationale is stated in the Final Rejection at page 10:
It would have been obvious at the time the invention was made
to a person having ordinary skill in the art to print the map of
the location where the photo was taken in Squibbs directly on
the back of the print in view of the teaching of Shih et al[.] for
the purpose of simplifying the equipment by eliminating the
labeling equipment. It would have been obvious at the time the
invention was made to a person having ordinary skill in the art
to [sic] Squibbs with an online printing service in view of Shih
et al. for the purpose of improving the versatility of the
apparatus.

10
Although claim 20 includes four “means plus function” clauses, the record
does not include any means plus function claim construction discussion.
The Specification describes the invention almost entirely at the block
diagram level (see Figures 1, 2, and 5). Appellant has waived any right to
argue that the claims should be construed more narrowly per 35 U.S.C. §
112, 6th paragraph, and In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
1994) (en banc).
Appeal 2010-003853
Application 11/143,868

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We find the rationale to be sufficient. Furthermore, we find that to
one of ordinary skill it would have been a matter of simple substitution to
print a map rather than print location information. See KSR, 550 U.S. at 417.

REJECTIONS BASED ON SQUIBBS, REDD, AND OTA
Appellant argues that Ota does not overcome the deficiencies of
Squibbs and Redd. Appellant does not dispute the specific teachings of Ota.
Amended App. Br. 2. In view of our analysis and conclusions with respect
to the claims rejected based on Squibbs and Redd, we are not persuaded by
this argument.

REJECTIONS BASED ON SQUIBBS, REDD, AND KINJO
Kinjo teaches a “Shooting Equipment Communication System.” See
Title. We agree with the Examiner that Kinjo discloses the limitations of
claims 1 and 12 but for printing the map information directly on the back of
the photo. Ans. 11. As discussed above, Redd discloses that backprinting
was known at the time of invention. Squibbs discloses printing a map on a
label and affixing it to the back of a photo. We agree with the Examiner that
given the teachings of these references claims 1 and 12 would have been
obvious for one of ordinary skill to print a map directly on the back of a
photo. At the very least this would have been a matter of simple
substitution. See KSR, 550 U.S. at 417.

Appeal 2010-003853
Application 11/143,868

11
DEPENDENT CLAIMS NOT SEPARATELY ARGUED
In view of our conclusions with respect to independent claims 1, 15,
19, and 20, we sustain the rejections of dependent claims 2-13, 16-18, and
21, not separately argued.

CONCLUSION
Under section 103, Appellant has not shown that the Examiner erred
in finding all of the claims under appeal to be obvious.

ORDER
The Examiner’s decision rejecting claims 1-13 and 15-21 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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