Ex Parte Cannon et al

Board of Patent Appeals and Interferences

May 31, 2012

10810283 (B.P.A.I. May. 31, 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.
10/810,283 03/26/2004 James W. Cannon 83094RRS 8578
1333 7590 06/01/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
SAMS, MICHELLE L
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
06/01/2012 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 W. CANNON and STEVEN M. BELZ
____________

Appeal 2009-011687
Application 10/810,283
Technology Center 2600
____________

Before LANCE L. BARRY, JEAN R. HOMERE, and
GREGORY J. GONSALVES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-18 and 21-46. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

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Application 10/810,283
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INVENTION
The following claim illustrates the invention on appeal.

14. A display device comprising:
a source of an original image;
a display;
a user input system adapted to generate an advance signal
that indicates only that a user input action has been taken and a
save signal; and
a controller adapted to detect the advance signal and, in
response thereto, to cause the display to present a sequence of
portion evaluation images each representing the image content
of one of a set of different portions of the original image and
showing each portion having a magnification that is greater
than the magnification that each portion has when the portion is
presented on the display part of the original image with the
predetermined set of portions including at least one portion that
is non-central with respect to the original image;
wherein the controller determines an area of importance
in the original image based upon the portion of the original
image presented when the controller detects the save signal.

REFERENCES AND REJECTIONS
Moghadam US 5,706,049 Jan. 06, 1998
Peters US 5,715,334 Feb. 03, 1998
Squilla US 5,898,779 Apr. 27, 1999
Anderson US 6,249,316 Bl Jun. 19, 2001
Berkner US 7,095,907 Bl Aug. 22, 2006

Claims 1-13 and 21-43 stand rejected under 35 U.S.C. § 112, ¶ 2, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
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Claims 1-13, and 21-43 are rejected under 35 U.S.C. 112, ¶ 1, as
failing to comply with the enablement requirement.
Claims 1-4, 7-18, 34-36, and 44-46 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moghadam and Anderson.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moghadam, Anderson, and Squilla.
Claims 21-25, 28-30, 33, and 39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Moghadam, Anderson, and Berkner.
Claims 26, 27, 31, and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moghadam, Anderson, Berkner, and Squilla.
Claims 37, 38, and 40-43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moghadam, Anderson, and Peters.

DISCUSSION
CLAIMS 1-13 AND 21-43
When claims have been rejected under the first and second paragraphs
of 35 U.S.C. § 112, analysis "should begin with the determination of
whether the claims satisfy the requirements of the second paragraph." In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).

INDEFINITENESS REJECTION
Based on the Appellants' arguments, we will decide the appeal of the
indefiniteness rejection of claims 1-13 and 21-43 on the basis of claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
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Therefore, the issue before us is whether the Examiner erred in
concluding that representative claim 1 is indefinite for reciting a "non-
directional signal."
The Examiner concludes that "[i]t is unclear how a non-directional
signal is generated if such a signal is controlled via an advance button [Fig.
12 (210)] or a jog dial [Figs. 14, 15 (300)]." (Ans. 5-6.)
The Appellants make the following argument.
Page 27, lines 25-28 states the following: "this
embodiment does not require a user input action that is
directional in that there is no inherent or apparent correlation
between the direction of movement of the user input controls
and the location of the designated portion[.]"
Accordingly, in the present invention, the non directional
signal is a signal that there has been a user input action and
does not include information regarding direction.
(Reply Br. 2 (emphasis added).)
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co., 927
F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the language
employed must be analyzed — not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Here, we are unpersuaded by the Appellants' argument because the
Appellants' cited support in the Specification that merely describes the user
input action, not the claimed "non-directional signal."
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Therefore, we conclude that the Examiner did not err in concluding
that representative claim 1 is indefinite for reciting "non-directional signal."

OBVIOUSNESS AND ENABLEMENT REJECTIONS
The issue before us is whether the indefiniteness of claims 1-13 and
21-43 prevents us from reaching the issues of obviousness and enablement.
A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962). "All words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious—the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). We also hold that if the
claim is indefinite then we cannot determine whether the claim is enabled.
Here, for the reasons explained in addressing the indefiniteness of
claims 1-13 and 21-43, our analysis of the claims leaves us in a quandary as
to what they specify. Speculations and assumptions would be required to
decide the meaning of the terms employed in the claims and the scope of the
claims. Therefore, we conclude that the indefiniteness of claims 1-13 and
21-43 prevents us from reaching the issues of obviousness and enablement.
Consequently, we reverse pro forma the obviousness and enablement
rejections of claims 1-13 and 21-43. We emphasize that our reversal is
based on procedure rather than on the merits of the obviousness and
enablement rejections. The reversal does not mean that we consider the
claims to be patentable as presently drawn.

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CLAIMS 14-18 AND 44-46
Based on the Appellants' arguments, we will decide the rejections of
claims 14-18 and 44-46 under 35 U.S.C. § 103(a) as being unpatentable over
Moghadam and Anderson on the basis of claim 14. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Therefore, the issues before us follow.
Did the Examiner err in concluding that it would have been obvious to
combine Anderson's teaching of a "view" magnification with teachings of
Moghadam's invention to reject representative claim 14?
Did the Examiner err in concluding that teachings of Moghadam
would have taught or suggested an "area of importance," as required by
representative claim 14?
We address the issues seriatim.

A. Combining Teachings of the References
The Examiner makes the following findings and conclusions.
[I]t would have been obvious to one of ordinary skill in the art
to modify the invention of Moghadam to include the "View"
magnification of Anderson in order for the user of Moghadam
to see in greater detail their selection (i.e. highlighted tile) since
the external display of Moghadam would be too small for the
user to see the details of the even smaller selected tile.
(Ans. 8-9.)
The Appellants make the following argument.
Moghadam et al. discloses a system that is configured to allow
a user to frame an entire image relative to selected hot spots,
while the combination asserted in the Final Rejection would
cause the camera to magnify what is shown in the viewfinder to
include only the hot spot, thus defeating the purpose of framing
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the image relative to the hot spots as described in Moghadam et
al.
(App. Br. 17.)
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted). A reason to combine
teachings from the prior art "may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved." WMS
Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Here, we are unpersuaded by the Appellants' argument. We agree
with the Examiner that the user would have been motivated to magnify the
view of the viewfinder to see his selection in greater detail. Then, the user
could revert to the normal view to take a photograph. Also, claim 14 does
not require that the display stay in magnified mode.
Therefore, we conclude that the Examiner did not err in concluding
that it would have been obvious to combine Anderson's teaching of a "view"
magnification with teachings of Moghadam's invention to reject
representative claim 14.

B. Area of Importance
We agree with the Examiner's following findings.
Thus, although this highlighted tile is not explicitly termed as
an area of importance, by highlighting a specific tile, the
specific tile is distinguished from the remaining tiles.
Furthermore, Applicant's disclose that the area of importance
can be determined by the user as a portion of the original image
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that is important to the user [pg. 24. lines 4-7; 19-25; Fig. 13
(s234 )]. Thus, the hot spots of Moghadam clearly teach an
area of importance.
(Ans. 25.)
The Appellants argue that "[t]he word importance is not found in
Moghadam et al. thus there is no explicit disclosure of an area of
importance." (App. Br. 19.)
Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d
831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l Trade
Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory
reference . . . need not duplicate word for word what is in the claims."
Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir.
1991). We hold that obviousness is not an ipsissimis verbis test either.
Consequently, the reference does not have to use the term "area of
importance" to have taught or suggested the feature.
Therefore, we conclude that the Examiner did not err in concluding
that teachings of Moghadam would have taught or suggested "area of
importance," as required by representative claim 14.

DECISION
We affirm the indefiniteness rejection of claim 1 and that of claims 2-
13 and 21-43, which fall therewith.
We reverse the obviousness and enablement rejections of claims 1-13
and 21-43.
We affirm the obviousness rejection of claim 14 and that of claims 15-
18 and 44-46, which fall therewith.
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No time for taking any action connected 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).

AFFIRMED

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