Ex Parte Cok et al

Patent Trial and Appeal Board

Apr 12, 2017

13074425 (P.T.A.B. Apr. 12, 2017)

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.
13/074,425 03/29/2011 Ronald Steven Cok 41667-350012 9762
24633 7590
HOGAN LOVELLS US LLP
IP GROUP, COLUMBIA SQUARE
555 THIRTEENTH STREET, N.W.
WASHINGTON, DC 20004
EXAMINER
ZUBERI, MOHAMMED H
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
04/14/2017 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):
dcptopatent@hoganlovells.com
HLU S Docke ting @ hoganlovells. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD STEVEN COK and PETER KARL TRAEG
Appeal 2016-007403
Application 13/074,425
Technology Center 2100
Before JOHN A. EVANS, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, and 4—33, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Kodak Alaris Inc.
App. Br. 1.
Appeal 2016-007403
Application 13/074,425
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “pertains to the field of
digital imaging and more particularly to methods for a group of people to
provide content and annotations useful for forming a multi-media image
product.” Spec. 1:12—14.2 The Specification explains that “a multi-media
image collection in a digital storage system” may include multi-media
content received from “from two or more of the plurality of individuals” and
“the multi-media content includes one or more images, audio annotations,
and text annotations.” Abstract.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A method for forming a multi-media image product,
comprising:
using a processor to provide a storage location for a
multi-media image collection in a digital storage system;
associating an identifier with the storage location;
distributing the identifier to a plurality of individuals;
receiving a plurality of multi-media content together with
either the identifier or information associated with the identifier
from two or more of the plurality of individuals to whom the
identifier was distributed, wherein the received multi-media
content includes one or more received images, and audio or text
annotations;
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed March 29, 2011; “Final Act.” for the Final Office Action,
mailed July 30, 2015; “App. Br.” for the Appeal Brief, filed December 17,
2015; “Ans.” for the Examiner’s Answer, mailed June 22, 2016; and
“Reply Br.” for the Reply Brief, filed July 26, 2016.
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Application 13/074,425
storing the received multi-media content in the storage
location and associating the multi-media content with the multi-
media collection;
providing rules for automatically associating at least one
received audio or text annotation with one or more of the
received image, wherein the rules for associating the audio
annotations are different from the rules for associating the text
annotations and wherein the rules automatically limit the
number or length of the text or audio annotation;
automatically limiting at least one received audio or text
annotation by applying the rules to the received audio or text
annotation with the processor;
associating the limited text or audio annotation with a
received image in accordance with the rules;
storing the limited text or audio annotation in the storage
location in association with the associated received image; and
making a multi-media image product with the processor
using at least a portion of the multi-media content stored in the
multi-media collection and associated limited text or audio
annotations, wherein the limited text or audio annotations are
associated with one or more of the received images in
accordance with the rules,
wherein the rules for associating the text annotations
specify that textual annotations can be displayed in locations
not associated with any images but with the multi-media
collection in the multi-media image product.
App. Br. 9 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Atkins et al. (“Atkins”) US 2003/0097410 A1 May 22, 2003
Bodie US 2006/0092291 Al May 4,2006
Gausman et al. (“Gausman”) US 2010/0023553 Al Jan. 28, 2010
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Application 13/074,425
Phone Commenting, Thread & URL Import, Voice Thread Blog
(Dec. 3, 2007), https://web.archive.Org/web/20130118054224/http://
blog.voicethread.com/2007/ (“VoiceThread”)
The Rejections on Appeal
Claims 1,2, 4—7, and 9—31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Atkins and Bodie. Final Act. 3—17; Ans. 4—19.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Atkins, Bodie, and VoiceThread. Final Act. 18; Ans. 19.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Atkins, Bodie, and Gausman. Final Act. 18—19; Ans. 20.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Atkins, Bodie, and Official Notice. Final Act. 19; Ans. 20—21.
ANALYSIS
We have reviewed the rejections of claims 1, 2, and 4—33 in light of
Appellants’ arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants’ assertions regarding error by the
Examiner. We adopt the Examiner’s findings in the Final Office Action
(Final Act. 3—19) and the Answer (Ans. 4—23). We add the following to
address and emphasize specific findings and arguments.
The Rejection of Claims 1, 2, 4—7, and 9 31 Under 35 U.S.C. § 103(a)
Textual Annotations Displayed in Locations Not Associated
with Any Images but with the Multi-Media Collection
Appellants argue that the Examiner erred in rejecting independent
claim 1 because Atkins does not teach that “textual annotations can be
displayed in locations not associated with any images but with the multi-
media collection in the multi-media image product,” as recited in claim 1.
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Application 13/074,425
App. Br. 5—6; Reply Br. 5—6. Appellants concede that Atkins teaches
“an online site separate from the users’ digital image files for receiving
text annotations.” App. Br. 6 (citing Atkins Ull, 39); Reply Br. 6 (citing
Atkins H 11, 39). Appellants contend, however, that “Atkins does not teach
that the text annotations are displayed separately from images in the multi-
media collection, but still are displayed in the corresponding multi-media
image product as now claimed.” App. Br. 6; see Reply Br. 6. Appellants
also contend that Atkins teaches “leaving comments directly next to the
images” comprising an online photo album or “in a website separate from”
the online photo album. App. Br. 6 (citing Atkins H 61—62). Appellants
additionally contend that comments concerning an album according to
Atkins are “unlikely” to be “directly associated” with the album because
Atkins explains that typical chat-style messaging may generate “excessive
message traffic . . . annoying many of the participants.” Reply Br. 6 (citing
Atkins H 63—64).
Appellants’ contentions do not persuade us of Examiner error. The
Examiner finds that Bodie teaches “making a multi-media image product”
using “limited text or audio annotations” associated with “received images”
according to claim 1. Final Act. 5—6 (citing Bodie H 30, 36, Fig. 3);
Ans. 6—8 (citing Bodie H 30, 36, Fig. 3). More particularly, Bodie teaches
associating captions (corresponding to the claimed “textual annotations”)
with digital photos and “overlaying the caption on the image for displaying
or printing.” Bodie 136. Further, the Examiner finds that Atkins teaches
that a user may leave comments (corresponding to the claimed “textual
annotations”) about a particular photo or an album (corresponding to the
claimed “multi-media image product”). Final Act. 3^4 (citing Atkins H 11,
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Application 13/074,425
39); Ans. 4—5, 22—23 (citing Atkins Ull, 37—39, 63). Atkins discloses that
(1) a user may “comment about the shared collection” of digital photos, i.e.,
an album, and (2) multiple users may exchange “online comments about the
album(s) or digital photo(s).” Atkins H 11, 37, 39.
“[T]he test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d
413, 425 (CCPA 1981). Here, the combination of disclosures in Atkins and
Bodie teaches or suggests that “textual annotations can be displayed in
locations not associated with any images but with the multi-media collection
in the multi-media image product,” as recited in claim 1. See Final Act. 3—7;
Ans. 4—8. Comments concerning an album according to Atkins would
appear apart from photo captions in a multi-media image product according
to Bodie. See Atkins H 11, 37, 39; Bodie H 30, 36; see also Ans. 22—23.
Under a broad but reasonable interpretation of claim 1, that satisfies the
requirement for “display[] in locations not associated with any images but
with the multi-media collection in the multi-media image product.”
“[D] tiring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
Appellants’ contention that comments concerning an album according
to Atkins are “unlikely” to be “directly associated” with the album
disregards Atkins’ disclosure that “all the digital photos and comments . . .
reside in a single centralized repository.” Atkins 62; see Reply Br. 6. As
for Atkins’ explanation that typical chat-style messaging may generate
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Application 13/074,425
“excessive message traffic . . . annoying many of the participants,” Atkins
discloses an alternative “chat model” that “allows the back-and-forth
responses among only those users who want to actively pursue the
notification links . . . Atkins Tflf 63—64; see Reply Br. 6.
Summary for Independent Claim 1
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Atkins and Bodie. Hence, we sustain the rejection of claim 1.
Independent Claim 24 and
Dependent Claims 2,4—7,9-23, and 25-31
Appellants do not make any separate patentability arguments for
independent claim 24 or dependent claims 2, 4—7, 9—23, and 25—31. App.
Br. 5—6; Reply Br. 5—7. Because Appellants do not argue the claims
separately, we sustain the rejection of claims 2, 4—7, and 9—31 for the same
reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Rejections of Claims 8, 32, and 33 Under 35 U.S.C. § 103(a)
For the obviousness rejections of dependent claims 8, 32, and 33
based in part on Atkins and Bodie, Appellants assert that each claim
“is allowable as it is dependent upon allowable base claim 1.” App. Br. 7;
Reply Br. 7. Appellants do not make any separate patentability arguments
for these dependent claims. App. Br. 5—7; Reply Br. 5—7. Because
Appellants do not argue the claims separately, we sustain the rejections of
claims 8, 32, and 33 for the same reasons as claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1,2, and 4—33.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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