Ex Parte Chao

Patent Trial and Appeal Board

Mar 25, 2016

12845845 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/845,845 07/29/2010
22879 7590 03/29/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Hui Chao
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.
82261376 1772
EXAMINER
LE,HOAIVAN
ART UNIT PAPER NUMBER
2619
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HUI CHAO
Appeal2014-003579
Application 12/845,845
Technology Center 2600
Before DAVID M. KOHUT, JOHNNY A. KUMAR, and
KAMRAN JIVANI, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-8 and 10-28. Claim 9 is canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Appeal2014-003579
Application 12/845,845
Claim 1 is illustrative:
Exemplary Claim
1. A method of providing a template into which images are to be
inserted, comprising:
identifying, by a system having a processor, exclusion
zones on a page of the template, wherein each of the exclusion
zones defines a corresponding area of the page that is free of the
images to be inserted into the template;
generating, by the system, a representation of a layout of
the page, where the layout has plural partitions that divide the
page, and where the representation of the layout specifies one
or plural cuts in the page that define the partitions;
providing, by the system, the exclusion zones in
respective ones of the partitions; and
generating, by the system, the template defined by the
layout and including the exclusion zones in the partitions,
wherein the template is generated prior to insertion of any
image into the page.
The Examiner's Rejections
Claims 1-3, 10, 11, 15-22, 25, and 28 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Atkins (US 2006/0103891 Al, May 18,
2006). Final Act. 3-8.
Claims 4-8 and 12-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Atkins in view of Meunier (US 7,392,473 B2, June 24,
2008). Final Act. 8-11.
Claims 23, 24, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Atkins in view of Rosenstein (US 2009/0235158
Al, Sept. 17, 2009). Final Act. 11-12.
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Application 12/845,845
ANALYSIS
In the Briefs, Appellant contends the Examiner errs in finding that
Atkins teaches all the elements of Appellant's claimed invention (see App.
Br. 5---6; Reply Br. 3). Appellant contends the claim limitation "each of the
exclusion zones defines a corresponding area of the page that is free of the
images to be inserted into the template" (hereinafter "the disputed limitation
and recited in claim 1) (emphasis added) is not taught by Atkins (App. Br.
5---6).1
The Examiner finds the disputed limitation is disclosed in Atkins at
"Figs. 3-4C, elements 1-6; and see also par [0050], wherein the page is
divided into areas which assigned to the corresponding images A, B, C, and
D; and the areas or cells where respective images are to be placed" (Final
Act. 3). The Examiner also states "the examiner interprets that 'free of
images' is equivalent to the digital content without images (e.g., text,
documents) disclosed by Atkins." Ans. 3.
Appellant argues that the Examiner's citation of elements 1-6 in Figure
3 are images provided on page 40 and "since elements 1-6 are images inserted
into the page 40 of Atkins, these elements 1-6 cannot be exclusion zones that
are free of images to be inserted into the template." Reply Br. 3.
We agree with Appellant. Specifically, Atkins discloses images that
are provided on the page. Atkins i-f 87. However, the portions of Atkins
cited by the Examiner do not disclose an area of the page that is free of
images "to be placed," rather than the disclosed images already placed, and
1 Appellant makes additional arguments. App. Br. 6-11. We do not reach
the merits of these additional arguments because the issue discussed herein
is dispositive of the appeal.
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Application 12/845,845
thus, cannot correspond to the claimed "exclusion zones." A claim is
anticipated only if each and every element as set forth in the claims is found,
either expressly or inherently described in a single prior art reference, and
arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Given this principle and the record
before us, we find the weight of the evidence supports the position
articulated by Appellant in the Briefs. Accordingly, we cannot sustain the
Examiner's rejection of claim 1, and independent claims 10 and 19, which
recite commensurate limitations. Because we reverse the rejection of each
independent claim on appeal, we also reverse the rejection of each
associated dependent claim.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 10, and 19 under 35 U.S.C. § 103(a) as unpatentable over Atkins.
As to claim 1, Atkins teaches: "A method of providing a template into
which images are to be inserted" (see Fig. 2; see also i-f 16, wherein a
method of generating a layout of images on the pages of an album),
"comprising: identifying, by a system having a processor" (see i-f 97, wherein
the methods described herein may be performed by a computer processor),
"a page of the template (see Figs. 3--4C, elements 1---6; see also i-f 50,
wherein the page is divided into areas which assigned to the corresponding
images A, B, C, and D; and the areas or cells where respective images are to
be placed).
As discussed above, we agree with Appellant that the embodiment
discussed with respect to Figure 3, standing alone, fails to teach the
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limitations of "identifying ... exclusion zones on a page of the template,
wherein each of the exclusion zones defines a corresponding area of the
page that is free of the images to be inserted into the template."
In a related embodiment, Atkins teaches at paragraphs 38 and 39 the
use of a "strict area style," which results in empty spaces between the
images. This provides a benefit that produces an image arrangement that is
suitable for the size and shape of each page (see i-f 38).
Further, at paragraphs 64 and 65 and with regards to Figure 7, Atkins
teaches the images may be shrunk to create this empty "buffer space" to
keep the images from touching. We find Atkins's application of a "strict
area style" and usage of "buffer space" rules to teach or suggest the claimed
"exclusion zone" as no image may be placed onto the page in these areas in
order to keep the images from touching one another by recognizing a
boundary.
Therefore, it would have been obvious to one of ordinary skill in the
art at the time of invention to modify Atkins to utilize an exclusion zone
(strict area style and buffer space rules) as taught in a related embodiment,
for the advantage of producing an image arrangement that is suitable for the
size and shape of each page (see Atkins i-f 38).
Furthermore, utilizing Atkins's "strict area style" and "buffer space"
rules does not affect the normal functions of image insertion as taught by
Atkins in Figure 3. Atkins's function of inserting the image would be the
same, merely a scaling factor would be applied to ensure that the images do
not touch one another, and since these functionalities do not interfere with
one another, the results of the combination would be predictable.
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It would have been obvious to one of ordinary skill in the art to apply
the "strict area style" and "buffer space" of the related embodiment of
Atkins to the insertion features shown in Figure 3 of Atkins since the
claimed invention is merely a combination of old elements, in combination
each element would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that the results of
the combination were predictable.
Therefore, the combination of the embodiments teaches:
"generating, by the system, a representation of a layout of the
page, where the layout has plural partitions that divide the page, and
where the representation of the layout specifies one or plural cuts in
the page that define the partitions" (see Fig. 3, elements 40, 1---6, 50,
60; see also i-f 49, wherein the page layout has plural partitions with
horizontal and vertical divisions);
"providing, by the system, exclusion zones in respective ones of
the partitions" (see Fig. 7, i-fi-138-39, 64---65, for application of the
"buffer space" and "strict area style" within each cell); and
"generating, by the system, the template defined by the layout
and including the exclusion zones in the partitions, wherein the
template is generated prior to insertion of any image into the page"
(see discussion at i-fi-15 and 37, where predefined templates with user
specified or default maximum number of images that may be inserted
into a page and i-fi-138-39, where an initial assignment is presented).
As to claim 10, Atkins teaches an article comprising at least one non-
transitory computer-readable storage medium (see i-f 97) storing instructions
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for providing a template into which images are to be inserted, the
instructions upon execution causing a system having a processor (see ,-r 97)
to determine positions of images to be inserted into a page (see ,-r 38, where a
page layout module determines how many images are to be inserted into a
page and Figure 3 showing the locations).
Atkins teaches at paragraphs 38 and 39 the use of a "strict area style,"
which results in empty spaces between the images. This provides a benefit
that produces an image arrangement that is suitable for the size and shape of
each page (see ,-r 38).
Further, at paragraphs 64 and 65 and with regards to Figure 7, Atkins
teaches the images may be shrunk to create this empty "buffer space" to
keep the images from touching within the cells (partitions) located within the
template. We consider Atkins's application of a "strict area style" and usage
of "buffer space" rules to be equivalent to the claimed "exclusion zone" as
no image may be placed onto the page in these areas in order to keep the
images from touching one another.
Therefore, it would have been obvious to one of ordinary skill in the
art at the time of invention to modify Atkins to utilize an exclusion zone
(strict area style and buffer space rules applied to a partition in a template) as
taught in a related embodiment, for the advantage of producing an image
arrangement that is suitable for the size and shape of each page (see Atkins
,-r 38).
Furthermore, utilizing Atkins's "strict area style" and "buffer space"
rules does not affect the normal functions of image insertion as taught by
Atkins in Figure 3. Atkins's function of inserting the image would be the
same, merely a scaling factor would be applied to ensure that the images do
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not touch one another, and since these functionalities do not interfere with
one another, the results of the combination would be predictable.
It would have been obvious to one of ordinary skill in the art to apply
the "strict area style" and "buffer space" of the related embodiment of
Atkins to the insertion features shown in Figure 3 of Atkins since the
claimed invention is merely a combination of old elements, in combination
each element would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that the results of
the combination were predictable.
Therefore, the combination of Atkins's embodiments teaches:
"determine positions of exclusion zones on a page, wherein the
exclusion zones define corresponding zones on the page that are free
of the images to be inserted into the template (see i-fi-138-39, 64---65,
for application of the above "strict area style" and "buffer space." In
particular, Figure 7 shows how the buffer space is applied around the
images, so that no other image may be placed in that area);
"based on the determined positions of the exclusion zones" (see
i-fi-138-39, for the discussion of the page layout module 14)
"recursively identify cuts on the page that define partitions, wherein
the exclusion zones are located in respective ones of the partitions,
wherein recursively identifying the cuts comprises successively
considering increasing numbers of exclusion zones when identifying
the cuts" (see Fig. 7, and i-fi-164--65, in combination with Fig. 3,
wherein the page layout has plural partitions with horizontal and
vertical divisions, further, i163, where the respective cells are
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Application 12/845,845
identified, each respective image has its own exclusion zone that is
applied by page layout module 14); and
"generate the template according to the defined partitions, the
template including the exclusion zones, and the template being
generated prior to insertion of any image into the page" (see i-fi-1 5 and
37, where predefined templates with user specified or default
maximum number of images that may be inserted into a page; Fig. 11,
element 112; see also i175, wherein the user is able to generate a
layout template for the album, and then the user is able to use the add
comment button 116 to insert selected images into the layout
template, and i-fi-138-39, 64--65, for the application of the rules
included with the template).
As to claim 19, Atkins teaches: "A system comprising: a storage
media to store a representation of areas for images to be inserted that exist
on a page" (see Fig. 3, elements 1---6), "where the cells define corresponding
areas on the page where images to be inserted into the page for arrangement
in a collage" (see Figs. 3, 8A, 8B elements 1---6; see also i166, wherein
images are placed into the page) "and at least one processor" (see i-f 97,
wherein there is a computer processor).
Atkins teaches at paragraphs 38 and 39 the use of a "strict area style,"
which results in empty spaces between the images. This provides a benefit
that produces an image arrangement that is suitable for the size and shape of
each page (see i138).
Further, at paragraphs 64 and 65 and with regards to Figure 7, Atkins
teaches the images may be shrunk to create this empty "buffer space" to
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Application 12/845,845
keep the images from touching within the cells (partitions) located within the
template. We consider Atkins's application of a "strict area style" and usage
of "buffer space" rules to be equivalent to the claimed "exclusion zone" as
no image may be placed onto the page in these areas in order to keep the
images from touching one another.
Therefore, it would have been obvious to one of ordinary skill in the
art at the time of invention to modify Atkins to utilize an exclusion zone
(strict area style and buffer space rules applied to a respective partition in a
respective template) as taught in a related embodiment, for the advantage of
producing an image arrangement that is suitable for the size and shape of
each page (see Atkins i-f 38).
Furthermore, utilizing Atkins's "strict area style" and "buffer space"
rules does not affect the normal functions of image insertion as taught by
Atkins in Figure 3. Atkins's function of inserting the image would be the
same, merely a scaling factor would be applied to ensure that the images do
not touch one another, and since these functionalities do not interfere with
one another, the results of the combination would be predictable.
It would have been obvious to one of ordinary skill in the art to apply
the "strict area style" and "buffer space" of the related embodiment of
Atkins to the insertion features shown in Figure 3 of Atkins since the
claimed invention is merely a combination of old elements, in combination
each element would have performed the same function as it did separately,
and one of ordinary skill in the art would have recognized that the results of
the combination were predictable.
Therefore, the combination of Atkins's embodiments teaches:
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Application 12/845,845
"storage media to store a representation of exclusion zones that
exist on a page, where the exclusion zones define corresponding areas
on the page that are free of images to be inserted into the page for
arrangement in a collage" (see memory taught at i-fi-197, 38-39, and
64---65, as the memory would inherently store the location of the
images as well as the area in which the rules and scaling have been
applied);
"at least one processor to" (i-f 97):
"determine locations of the exclusion zones on the page" (see
i-fi-164---65, application of scaling for a respective cell in order to ensure
that the images done touch);
"generate a first representation of a first layout on the page,
where the first layout has plural partitions that divide the page, where
the first representation of the first layout specifies one or plural cuts in
the page that define the partitions" (see Fig. 8A; see also i1 66,
wherein showing two different layouts of the same image collection);
"generate a second representation of a second layout of the
page, where the second layout has plural partitions that divide the
page, where the plural partitions of the second layout have an
arrangement different from the plural partitions of the first layout, and
where the second representation of the second layout specifies one or
plural cuts in the page that define the partitions in the second layout"
(see Fig. 8B; see also i1 66, wherein showing two different layouts of
the same image collection); and
"output the first and second layouts as corresponding templates
into which the images are to be subsequently inserted in the page,
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wherein the exclusion zones are provided in respective partitions of
each of the first and second layouts" (see Figs. 8A, 8B, 11, element
112; see also i-fi-166, 75, 76, wherein the user is able to generate a
layout template for the album, and then the user is able to use the add
comment button 116 to insert selected images into the layout
template, further as the "strict area style" and "buffer spaces" are
applied, none of the images touch one another in figures 8a/b and thus
the exclusion zones are applied to the template).
OTHER ISSUES
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. We have made a new rejection regarding
independent claims 1, 10, and 19 under the provisions of 3 7 C.F .R.
§ 41.50(b). However, we have not reviewed the remaining dependent claims
2-8, 11-18, and 20-28 to the extent necessary to determine \vhether these
claims are unpatentable over Atkins, or other prior art. We leave it to the
Examiner to determine the appropriateness of any further rejections based on
these or other references. Our decision not to enter a new ground of
rejection for all claims should not be considered as an indication regarding
the appropriateness of further rejection or allowance of the non-rejected
claims.
DECISION
We reverse the Examiner's rejections of claims 1-8 and 10-28 as set
forth above.
We newly reject claim 1, 10, and 19 under 35 U.S.C. § 103(a).
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37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record ....
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).
REVERSED
37 C.F.R. § 41.50(b)
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