Ex Parte CarlDownload PDFPatent Trial and Appeal BoardSep 28, 201612541833 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/541,833 08/14/2009 45965 7590 TIPS GROUP 960 San Antonio Road Suite 200 Palo Alto, CA 94303-4921 09/30/2016 FIRST NAMED INVENTOR Stewart Carl 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. IMPXP001.US02 4269 EXAMINER ANDERSON II, JAMES M ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): phickman@tipsgroup.com gvouraki@tipsgroup.com tj ellison @tips group. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEWART CARL Appeal2015-007295 Application 12/541,833 Technology Center 2400 Before MARC S. HOFF, JOHNNY A. KUMAR, and JOHN D. HAMANN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1-3, 5-7, 10, 11, 15-17, 19-21, 26, and27. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellant's invention is a note capture device comprising a writing surface, a camera mounted to view the writing surface, and electronic circuitry to capture images of said surface, or various alternative surfaces. Image transformations are contemplated, which may correct for an oblique 1 Claims, 4, 8, 9, 12-14, 18, and 22-25 have been cancelled. Appeal2015-007295 Application 12/541,833 camera angle with respect to the surface. In certain embodiments, automatic detection of the completion of writing a note is provided; upon detection, the completed note is captured. Note completion may be detected by various sensors; or by a button click; or through image analysis. Spec. i-fi-f 16, 17. Claim 1 is exemplary of the claims on appeal: 1. A notepad top page image capture device compnsmg: an elongated base assembly supporting a notepad including a plurality of sheets of paper including a removable top page which provides a writing surface for a writing implement consisting of at least one of a pen, pencil and the like designed for writing on paper, wherein said notepad is of the type wherein each of said plurality of sheets of paper is provided with a weak, reusable adhesive compound which can removably hold it to another sheet of paper; a circuit board disposed within said elongated base assembly; a digital processor attached to said circuit board; non-volatile memory attached to said circuit board and coupled to said digital processor; a rigid, fixed post having a lower portion and an upper portion, wherein said lower portion of said post is rigidly fixed to said base assembly; a solid-state camera device having a fixed optical focus and a fixed depth of field range, said solid-state camera being rigidly fixed to said post proximate said upper portion, said solid state camera device having a fixed field of view inclusive of the writing surface and defining a fixed optical axis that is oblique to and directed towards said writing surface, said solid-state camera being electrically coupled to said circuit board; a trigger mechanism to indicate a completion of a writing by the writing implement on said writing surface, said trigger mechanism being electrically coupled to said circuit board; a display screen rigidly fixed between said lower portion and said upper portion of said post and below said camera device, said display screen being configured, at least in part, to display 2 Appeal2015-007295 Application 12/541,833 at least a partial image derived from said camera device, said display screen being electrically coupled to said circuit board; and a communications port electrically coupled to said circuit board, wherein said communications port is at least one of a wired communications port and a wireless communications port; wherein said digital processor executes code segments stored in said non-volatile memory to communicate with said trigger mechanism, said display screen, said solid-state camera device and said communications port via said circuit board disposed within said elongated base assembly, said digital processor receiving image information from said camera device, said digital processor being configured to automatically perform a predetermined anti-keystone image processing of said image information based upon said fixed optical axis after receiving a signal from said trigger mechanism and to cause a display on said display screen to ensure that a clean image is obtained. The Examiner relies upon the following prior art in rejecting the claims on appeal: Challa Gannage Wang Pollard Nozaki Silverbrook King Iwasaki US 6,396,481 B 1 US 6,504,956 B 1 US 2004/0140965 Al US 2005/0078871 Al JP 2006-078752 A US 2006/0088230 Al US 2007/0011140 Al US 2007 /0025612 Al May 28, 2002 Jan. 7,2003 July 22, 2004 Apr. 14, 2005 Mar. 23, 2006 Apr. 27, 2006 Jan. 11, 2007 Feb. 1,2007 Claims 1, 3, 10, 15, 16, 19, 20, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gannage, Iwasaki, Nozaki, and Pollard. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gannage, Iwasaki, Nozaki, Pollard, and Silverbrook. Claims 5-7 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gannage, Iwasaki, Nozaki, Pollard, and Wang. 3 Appeal2015-007295 Application 12/541,833 Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gannage, Iwasaki, Nozaki, Pollard, and Challa. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gannage, Iwasaki, Nozaki, and King. Claim 27 stands rejected2 under 35 U.S.C. § 103(a) as being unpatentable over Gannage, Iwasaki, Silverbrook, Wang, and Pollard. Throughout this decision, we make reference to the Appeal Brief ("App. Br.," filed Jan. 2, 2015), the Reply Brief ("Reply Br.," filed July 27, 2015), and the Examiner's Answer ("Ans.," mailed May 20, 2015) for their respective details. ISSUES 1. Does the combination of Gannage, Iwasaki, N ozaki, and Pollard teach or suggest a rigid, fixed post rigidly attached to an elongated base so as to support a camera device in a fixed position? 2. Does the combination of Gannage, Iwasaki, Nozaki, and Pollard teach or suggest a solid-state camera device having a fixed optical focus and a fixed depth of field that is supported by a post in such a way that the camera device has a fixed field of view and a fixed optical axis? 3. Does the combination of Gannage, Iwasaki, Nozaki, and Pollard teach or suggest a digital processor disposed with the base, which executes code segments stored in non-volatile memory to communicate with (a) a 2 The Examiner has withdrawn the§ 112 rejection of claims 1, 26, and 27. Ans. 18. 4 Appeal2015-007295 Application 12/541,833 solid-state camera rigidly supported above the base, (b) a trigger mechanism, ( c) a display screen and/ or ( d) a communications port? 4. Does the combination of Gannage, Iwasaki, Nozaki, and Pollard teach or suggest a digital processor configured to automatically perform a predefined anti-keystone image processing of image information based on a fixed optical axis? 5. Does the combination of Gannage, Iwasaki, Nozaki, Pollard, and Silverbrook teach or suggest a fixed depth of field range of 2.5 inches to 7.5 inches? 6. Does the combination of Gannage, Iwasaki, Nozaki, Pollard, and Wang teach or suggest a palm rest proximate a first end; a base assembly provided with at least one proximity sensor; or a base assembly provided with a page removal detector? 7. Does the combination of Gannage, Iwasaki, N ozaki, and King teach or suggest a business card holder configured to hold a business card proximate to the camera device? PRINCIPLES OF LAW The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152 (1950)). The Federal Circuit concluded that it would have been obvious to combine ( 1) a mechanical device for actuating a phonograph to play back sounds associated with a letter in a word on a puzzle piece with (2) an electronic, processor-driven device capable of playing the sound associated 5 Appeal2015-007295 Application 12/541,833 with a first letter of a word in a book. Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) ("[a]ccommodating a prior art mechanical device that accomplishes [a desired] goal to modem electronics would have been reasonably obvious to one of ordinary skill in designing children's learning devices"). In reaching that conclusion, the Federal Circuit recognized that "[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Id. at 1161 (citing KSR, 550 U.S. at 416 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results")). The Federal Circuit relied in part on the fact that Leapfrog had presented no evidence that the inclusion of a reader in the combined device was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Id. (citing KSR, 550 U.S. at 418-19). ANALYSIS CLAIMS 1, 3, 10, 15, 16, 19, 20, AND 26 We do not agree with Appellant's argument that the cited art does not disclose a rigid, fixed post rigidly attached to an elongated base so as to support a camera device in a fixed position. See App. Br. 8. We note Appellant's argument that Iwasaki does not teach a rigid post, but the Examiner finds that Pollard teaches such a post. See Ans. 19. "The camera 190 is supported by a metal stand 194 at a fixed height above a surface such as a desktop on which the stand 194 is placed." Pollard i-f 19. Contrary to 6 Appeal2015-007295 Application 12/541,833 Appellant's argument, we find that Pollard's stand is fixed to the base assembly. See App. Br. 10. We find that it is a rigid stand rigidly fixed, given that the camera is supported at a fixed height, and Pollard contains no disclosure that the stand is intended to be in any way flexible. We are also not persuaded by Appellant's argument that the Examiner's combination does not disclose a solid-state camera device having a fixed optical focus and a fixed depth of field that is supported by a post in such a way that the camera device has a fixed field of view and a fixed optical axis. App. Br. 8. The imaging head 2 of Iwasaki et al. does not have a fixed optical focus, a fixed depth of field range, a fixed field of view and a fixed optical axis ... because it is intentionally supported by a flexible arm member 3 so that it can be repositioned with respect to the object that is being imaged. Id. We regard Appellant's statement as a tacit admission that if one adapted the imaging head 2 of Iwasaki to be fixed in position, as proposed by the Examiner and as suggested by Pollard, it would have the claimed fixed optical focus, fixed depth of field range, fixed field of view, and fixed optical axis. See Ans. 20. We agree with the Examiner's conclusion that it would have been obvious to combine the teachings of Iwasaki and Pollard in this fashion. See Ans. 7. Appellant's argument that the Examiner does not articulate how the disparate digital processors of the prior art could be combined to substitute for Appellant's single digital processor is also unpersuasive. See App. Br. 9. We agree with the Examiner that one skilled in the art would have found it obvious to generate instructions, stored on the memory in the microcontroller (of Gannage) and executable by the processor included in the microcontroller, that controls the input and output peripherals (i.e., the 7 Appeal2015-007295 Application 12/541,833 display and solid state camera device of Iwasaki, anti-keystoning algorithm ofNozaki) suggested by the prior art. See Ans. 22. We agree with the Examiner that the structure and function claimed is fully taught by the combination of references. The Examiner proposes combining familiar elements, according to known elements, to yield predictable results. See KSR, 550 U.S. at 416. Appellant has not provided evidence that the combination would have been uniquely challenging or difficult for one of ordinary skill in the art. See Leapfrog, 485 F .3 d at 1161. We are not persuaded that the cited art fails to teach automatic performance of anti-keystone image processing. See App. Br. 9. We agree with the Examiner's finding that Nozaki discloses keystone correction corresponding to a predetermined angle. We further agree with the Examiner's finding that Nozaki teaches applying keystone correction to an image captured from a camera: When transmitting the image data photoed by the camera part 200, image data is sent out from CPUl 01 to the communication control part 110. When projecting an image shot, image data is sent out via camera control CPU203 to CPUl 01 to the projector module 6. In CPUl 01, trapezoidal-distortion-correction processing is performed to the image data on which it is projected with the projector module 6. Nozaki i-f 19. The Examiner's proposed combination suggests a solid-state camera with fixed optical axis. Thus, incorporating Nozaki's keystone correction technique would apply anti-keystone image processing to an image captured as suggested by the cited prior art. This would provide the advantage of correcting a distorted image to undistorted form before presentation to a user. See Ans. 23. 8 Appeal2015-007295 Application 12/541,833 We find that the Examiner did not err in combining Gannage, l wasaki, Pollard, and Nozaki to obtain the claimed invention. We sustain the Examiner's§ 103(a) rejection of claims 1, 3, 10, 15, 16, 19, 20, and 26. CLAIM2 Appellant argues that [ w ]hile there aren't any dimensions disclosed in the specification or drawings, it is clear that, due to the position of the image sensor 13 2 with respect to the metal end piece 114 of the stylus that it cannot have a "fixed depth of field range is 2.5 inches to 7.5 images." App. Br. 13. In the Reply Brief, Appellant argues that [i]t is abundantly clear that the depth of field referred to by Silverbrook et al. is that of an optical pen or stylus . . . . The depth of field to which Silverbrook is referring is the distance from a sensor near the end of the stylus to the writing surface. Silverbrook et al. 's stylus clearly cannot have a fixed depth of field range between 2.5 and 7.5 inches. Reply Br. 6. Appellant provides only argument, without evidence, in opposining the Examiner's finding, and arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We are not persuaded that the Examiner erred in combining Gannage, Iwasaki, Nozaki, Pollard, and Silverbrook to render obvious the invention recited in claim 2. We sustain the Examiner's§ 103(a) rejection. CLAIMS 5-7 AND 11 We are persuaded by Appellant's arguments that the Examiner erred in rejecting these claims. See App. Br. 13-14. 9 Appeal2015-007295 Application 12/541,833 With regard to claim 5 (and claim 11 dependent thereupon), we find that Wang's teaching of a pen-tip as a support point does not correspond to the claimed palm rest. See Wang i-fi-1 64---66. With regard to claim 6, we agree with Appellant that the proximity disclosed in Wang paragraph 125 is "movement of the input device ... by measuring the relative movement of objects within images captured by the optical sensor of the input device." We find that the Examiner erred in finding that Wang teaches the claimed proximity sensor. With regard to claim 7, we agree with Appellant that Wang paragraph 142 does not teach or suggest a page removal detector. We find that the combination of references relied upon by the Examiner fails to teachor suggest all the limitations of claims 5-7 and 11. We do not sustain the Examiner's§ 103(a) rejection over Gannage, Iwasaki, Pollard, Nozaki, and Wang. CLAIM 17 Appellant's only argument concerning dependent claim 17 is that Challa fails to cure the alleged deficiencies of Gannage, Iwasaki, Nozaki, and Pollard. App. Br. 15. Because we disagree, supra, that any such deficiencies exist, we sustain the§ 103(a) rejection of claim 17, for the same reasons given with respect to the rejection of independent claim 1. CLAIM21 We do not agree with Appellant that the combination of references fails to disclose or suggest the claimed business card holder. See App. Br. 15-16. The combined teachings of Gannage, Iwasaki, and N ozaki suggest the desirability of capturing images from a substrate in a known or predictable position. Given the teaching of King that one may capture data 10 Appeal2015-007295 Application 12/541,833 from a business card (if 492), we agree with the Examiner that the combination of Gannage, Iwasaki, and Nozaki with King would have suggested to the skilled artisan the use of a holder to maintain a business card in a known or predictable position, so that the card's image may reliably be captured and the data thereon stored in memory and used for further purposes. See Ans. 31. We sustain the Examiner's§ 103(a) rejection of claim 21 as being unpatentable over Gannage, Iwasaki, Nozaki, and King. CLAIM27 In arguing for the patentability of claim 2 7, Appellant refers to the arguments made with respect to "the claims," as "set forth above." Appellant asserts that the combination lacks a teaching of "the base structure, the rigid, fixed post, the solid-state came [sic] having a fixed optical focus and a fixed field of depth [sic] range, and a digital processor executing code segments." App. Br. 16. As those elements are set forth in claim 1, whose rejection we sustain supra, we also sustain the Examiner's § 103(a) rejection of claim 27 over Gannage, Iwasaki, Silverbrook, Wang, and Pollard, for the same reasons given with respect to claim 1. CONCLUSION 1. The combination of Gannage, Iwasaki, N ozaki, and Pollard suggests a rigid, fixed post rigidly attached to an elongated base so as to support a camera device in a fixed position. 2. The combination of Gannage, Iwasaki, Nozaki, and Pollard suggests a solid-state camera device having a fixed optical focus and a fixed 11 Appeal2015-007295 Application 12/541,833 depth of field that is supported by a post in such a way that the camera device has a fixed field of view and a fixed optical axis. 3. The combination of Gannage, Iwasaki, Nozaki, and Pollard suggests a digital processor disposed with the base, which executes code segments stored in non-volatile memory to communicate with (a) a solid- state camera rigidly supported above the base, (b) a trigger mechanism, ( c) a display screen and/or ( d) a communications port. 4. The combination of Gannage, Iwasaki, Nozaki, and Pollard suggests a digital processor configured to automatically perform a predefined anti-keystone image processing of image information based on a fixed optical axis. 5. The combination of Gannage, Iwasaki, Nozaki, Pollard, and Silverbrook suggests a fixed depth of field range of 2.5 inches to 7.5 inches. 6. The combination of Gannage, Iwasaki, Nozaki, Pollard, and Wang does not teach or suggest any of a palm rest proximate a first end; a base assembly provided with at least one proximity sensor; or a base assembly provided with a page removal detector. 7. The combination of Gannage, Iwasaki, Nozaki, and King suggests a business card holder configured to hold a business card proximate to the camera device. DECISION The Examiner's decision to reject claims 1-3, 10, 15-17, 19-21, 26, and 27 is affirmed. The Examiner's decision to reject claims 5-7 and 11 is reversed. 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). 12 Appeal2015-007295 Application 12/541,833 AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation