Ex Parte Conrad et al

Patent Trial and Appeal Board

Jul 31, 2014

10318431 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA D. CONRAD,
MICHAEL A. COLGLAZIER, and
RENEE THIBODEAUX
____________

Appeal 2011-011761
Application 10/318,431
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
JAMES A. TARTAL, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Linda D. Conrad, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1–10, 15, 17, 18, 20, 39, 41–43,
45–51, 53–63, 65, 66, and 67–71.1 We have jurisdiction under 35 U.S.C. §
6(b) (2002).

1 Claims 67–71 are said to be “pending, rejected, and the subject of this
appeal.” App. Br. 3. There is no pending rejection of these claims.
Accordingly, we do not reach them. See footnote 3.
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SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND of rejection.2

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for an image processing system for acquiring a
plurality of images of a user at a plurality of locations and
directing production of products including images, the method
comprising:
providing to the user an identification medium
comprising an identifier;
providing a plurality of image capture devices at a
plurality of locations;
capturing the plurality of images of the user with the
plurality of image capture devices;
transmitting the plurality of images and the identifier
from the plurality of image capture devices at the plurality of
locations over a communications network to a storage server;
associating a temporary account that is not dedicated to
the user, the identifier, and the plurality of images in the storage
server in response to the identifier;
storing the plurality of images and the identifier in the
storage server; subsequently
determining an account for the user in an account engine;

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Jan. 10, 2011) and the Examiner’s Answer (“Ans.,” mailed Apr. 28,
2011).
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associating the account for the user, the identifier and the
plurality of images in the storage server; subsequently
receiving input of the account for the user by the user
from a user access device;
determining the plurality of images in response to the
input of the account for the user in the storage server;
permitting the user to view the plurality of images on the
user access device; subsequently
receiving an order for a product including an image from
the plurality of images selected by the user on the user access
device; and
directing production of the product including the image
in response to the order.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Renie
Walker
Catanoso

US 5,655,053
US 6,490,409 B1
US 6,892,388 B1
Aug. 5, 1997
Dec. 3, 2002
May 10, 2005
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The following rejections3 are before us for review:
1. Claims 1–10, 15, 17, 18, 20, 53–63, 65, and 66 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Renie and Catanoso.4
2. Claims 39, 41–43, and 45–51 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Renie and Walker.5

3 There are only two rejections before us for review. Claims 67–71, which
are included in the Brief’s Claims Appendix (App. Br. 21–31), of which the
Examiner acknowledged without comment (Ans. 3), are currently pending.
Their status has been indicated as rejected by the Examiner. See id. at 2.
But how they are being rejected is unclear. There was a rejection under §
103(a) of these claims. See Final Act. 8 (mailed Feb. 25, 2008). But there is
no indication in the record that said rejection of claims 67–71 remains
tenable in light of the many amendments and arguments filed since then.
Said rejection does not appear in the Final Rejection of August 21, 2008, the
Non-Final Action of July 20, 2009, or any Office Action since. In fact, aside
from the mere current indication that claims 67–71 are pending and rejected,
neither the Brief nor the Answer discuss them. As a result, we are not
placed in a position to meaningfully review claims 67–71. Accordingly, we
do not treat them in this appeal. Our decision not to treat claims 67–71
means that we leave it to the Examiner to clarify their status when this
application is returned to the Examiner. We make no comment as to their
patentability.

4 The statement of the rejection inadvertently includes claims 52 and 64. See
Ans. 3. Claims 52 and 64 were cancelled in the Amendment filed May 6,
2010, as implicitly approved by its omission from the cover sheet to the
Final Action of July 20, 2010. The Brief does not include them in the
Claims Appendix (App. Br. 21–31), which was acknowledged without
Examiner comment. Id. at 3.

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ISSUES
Did the Examiner err in rejecting claims 1–10, 15, 17, 18, 20, 53–63,
65, and 66 under 35 U.S.C. § 103(a) as being unpatentable over Renie and
Catanoso?
Did the Examiner err in rejecting claims 39, 41–43, and 45–51 under
35 U.S.C. § 103(a) as being unpatentable over Renie and Walker?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1–10, 15, 17, 18, 20, 53–63, 65, and 66 under 35
U.S.C. § 103(a) as being unpatentable over Renie and Catanoso.
Claim 66
Claim 66 depends from cancelled claim 16. As a result there is
considerable speculation as to the scope of claim 66. Since a rejection under
35 U.S.C. § 103(a) should not be based on such speculation, we reverse the
rejection under § 103(a) pro forma and enter below a rejection under 35

5 The statement of the rejection inadvertently includes claims 40 and 44. See
Ans. 8. Claims 40 and 44 were cancelled in the Amendment filed May 6,
2010, as implicitly approved by its omission from the cover sheet to the
Final Action of July 20, 2010. The Brief does not include them in the
Claims Appendix (App. Br. 21–31), which was acknowledged without
Examiner comment. Id. at 3.

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U.S.C. § 112(b). Our decision to reverse pro forma the § 103(a) rejection
should not be construed as meaning that we consider claim 66 on appeal to
be patentable as presently drawn. Rather, the claim should be reviewed to
insure compliance with 35 U.S.C. § 112. See In re Steele, 305 F.2d 859,
862–63 (CCPA 1962).

Claims 1–10, 15, 17, 18, 20, 53–63, and 65
As correctly characterized by the Appellants (see App. Br. 10), the
independent claims here rejected (claims 1 and 15), and thus also the claims
dependent thereon (claims 2–10 and 53–63 and claims 17, 18, 20, and 65,
respectively), include the feature of an identifier first being associated with a
“temporary account.” Taking claim 1 as representative of the claims here
rejected, said feature is reflected in these claim limitations:
associating a temporary account that is not dedicated to
[a] user, the identifier, and [a] plurality of images in [a] storage
server in response to the identifier;
storing the plurality of images and the identifier in the
storage server; subsequently
. . .
associating the account for the user, the identifier and the
plurality of images in the storage server; subsequently
receiving input of the account for the user by the user
from a user access device;
. . .
permitting the user to view the plurality of images on the
user access device.
The Examiner takes the position that said feature is “inherently”
disclosed in Renie. Ans. 4.
Renie describes a method for acquiring a video for an individual
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consumer as shot at preselected locations in an amusement park. To
accomplish this, a patron to the park may purchase a special ticket with a
plastic “VideoCard” affixed to it. See col. 5, ll. 47–56. “Both the ticket and
plastic card are equipped with a corresponding bar code or equivalent
identifying number . . . . ” Col. 5, ll. 54–56.
The information which is encoded on the customer card
includes a code for each individual card, month, day and year as
well as a sequential number used to insure that no two cards are
identical.
Col. 5, ll. 61–64.
Inserting the customer card into a bar code reading
device instructs the controller to record that individual's specific
car-number location on that specific ride . . . and store the
corresponding camera signals . . . . As the ride vehicle moves
along its track or path, a triggering device, preferably an
infrared sensor, identifies and counts ride vehicles . . . the
customer cards allow the system to eventually link that specific
patron with a list of camera sequence occurrences captured at
specific rides and park locations throughout the day at other
rides . . . .
Col. 6, ll. 27–42. At the end of the day, “the patron inserts the customer card
into a special, well-identified ‘end-production’ bar code reader . . . which
alerts the Controller to begin assembling that particular patron's personalized
videotape.” Col. 7, ll. 3–4. The videotape is given to the patron. In one
embodiment, “[i]f the patron wishes, the finished videotape can be delivered
later to their hotel room if they are staying at a nearby hotel.” Col. 8, ll. 41–
43.
According to the Examiner, the disclosure at column 5, lines 61–63 of
Renie (i.e., “[t]he information which is encoded on the customer card
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includes a code for each individual card, month, day and year as well as a
sequential number used to [e]nsure that no two codes are identical. . . . ”)
amounts to a “temporary account” as claimed.
This is the temporary account. The card is merely distinguished
from other cards, not tied to a particular person. The account is
for the card, not the user. Later, when the user decides to
purchase images, another account that requires the user to pay
for the images or video is required, as can be seen in col 8, lines
42-51, “..If the patron wishes, the finished videotape can be
delivered later to their hotel room...Finished videotapes can be
mailed to the patron's home address for an additional fee...can
also be purchased and be sent as "video postcards" or gifts to
friends...”, as can be seen, later on in the process the user’s
personal data is associated with the souvenir (an account) and
the user pays for the souvenir, if the user does not buy the
souvenir, the account is not changed to include the user's
personal data, thereby meeting the limitations as claimed.
Ans. 10.
We have reviewed the record. We find that the evidence weighs in
favor of the Appellants’ position. We find that the Examiner has not shown
by a preponderance of the evidence that Renie discloses an account,
temporary or otherwise, as claimed.
To establish that Renie discloses an “account,” it is first necessary to
reasonably broadly construe the term as claimed. The Specification provides
no definition for the term and therefore we give it its ordinary and customary
meaning, which in the context of the claimed invention is “[a] formal . . .
business relationship established to provide for regular services, dealings,
and other financial transactions.” See entry 3a. for “account,” American
Heritage Dictionary,
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http://search.credoreference.com/content/entry/hmdictenglang/account/0
(last visited July 25, 2014). Given that meaning, the “temporary account” as
claimed does not cover the “month, day and year as well as a sequential
number” on the Renie cards. We agree with the Appellants that the “month,
day and year as well as a sequential number” on the card are simply
identifiers.
Renie does not teach or even fairly suggest that the images and
identifier would first be associated with a temporary account
and subsequently become associated with a user account, as
recited in the independent claims. In fact, in Renie's system,
accounts are wholly unnecessary, as the user has ordered and
paid for the product prior to receiving an identifier.
The Examiner incorrectly asserts that Renie teaches
temporary accounts and user accounts.
. . .
. . . Renie teaches distributing videos to the correct guest based
solely on the identifier. At the end of a day at the park, the
guest exchanges his customer card (the identifier) for the
finished product (Renie at col. 8, lines 32-41). There is no need
for a user account, as the tape is created on the spot and
associated with the user by means of the identifier.
App. Br. 13.
As we understand it, the Examiner is (a) equating the initial purchase
of the video product and the issuance of a specialized ticket with their park
admission to creating a “temporary account” that does not include
personalized information of the user (Renie, col. 5, ll. 47–63) and (b)
equating the providing of personal information for the delivery of video to a
specific address (home or hotel) for an additional fee to the creation of the
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“user account” (see Renie, col. 8, ll. 36–51). In so equating, the Examiner
found Renie to disclose both the temporary and user accounts as claimed.
As we have stated, the difficulty with this reasoning is that it does not
comport with the “broadest reasonable interpretation” of the claim. One of
ordinary skill in the art reading the claim in light of the Specification would
not reasonably broadly construe the claim term “account” as covering the
card identifiers that Renie discloses.
For the foregoing reasons, the § 103(a) rejection of claims 1–10, 15,
17, 18, 20, 53–63, and 65 is not sustained.

The rejection of claims 39, 41–43 and 45–51 under 35 U.S.C. § 103(a) as
being unpatentable over Renie and Walker.
Claims 41 and 42
Claims 41 and 42 depend from cancelled claim 40. As a result there
is considerable speculation as to the scope of claims 41 and 42. Since a
rejection under 35 U.S.C. § 103(a) should not be based on such speculation,
we reverse the rejection under § 103(a) pro forma and enter below a
rejection under 35 U.S.C. § 112(b). Our decision to reverse pro forma the §
103 rejection should not be construed as meaning that we consider claims 41
and 42 on appeal to be patentable as presently drawn. Rather, the claims
should be reviewed to insure compliance with 35 U.S.C. § 112. See Steele,
305 F.2d at 862–63.

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Claims 39, 43, and 45–47
Independent claims 39 and 43, and thus also claims 45–47 depending
from claim 43, include the same feature of an identifier first being associated
with a “temporary account” as discussed above with respect to
representative claim 1. The Examiner’s position is the same. Accordingly
we do not sustain the rejection of claims 39, 43, and 45–47 for the same
reasons as discussed above.

Claims 48–51
We reach a different conclusion as to independent claim 48 and
claims 49–51 depending therefrom. The Appellants’ arguments are focused
on limitations to establishing a temporary account. “Even assuming that a
user could be said to have a user account in such systems, there
would be no rationale for also providing a temporary account. . . . ” App.
Br. 18. However, these claims do not require providing a temporary
account.
These claims call for forming a “holding” account. And a “holding”
account is formed only “if a user account is not associated with the unique
identification” (claim 48). The forming of a “holding” account is presented
in conditional language; that is, it is not required. Normally the prior art
need not describe a conditional step set forth in a method claim if, after
giving the claim its broadest reasonable construction, the method as claimed
does not invoke them. Cf. Ex parte Katz,
2010-006083, 2011 WL 514314, at *4 (BPAI 2011) (non-precedential)
(citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
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2004)). See also Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243
Fed.Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“[i]t is of course true
that method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.” In the
instant case, when the method claims are given their broadest reasonable
interpretation, they are broad enough to cover a method which does not
create a “holding” account but rather stops once “a user account is
associated with the unique identification: associating the images of the user
with the user account in the association engine” (claim 48).
The Appellants’ arguments which are directed to limitations more
clearly recited in, for example, claim 1 are not commensurate in scope when
applied to the subject matter covered by claims 48–51, wherein similar
limitations are expressed but only conditionally. Cf. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the
outset because, . . . they are not based on limitations appearing in the claims
. . . .”) Accordingly, the Appellants’ arguments do not persuade us as to
error in the rejection of claims 48–51 and therefore it is sustained.

NEW GROUND OF REJECTION
Claims 41, 42, and 66 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
The Brief indicates that claims 41, 42, and 66 are pending, rejected,
and subject to this appeal (App. Br. 3) and includes them in the Claims
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Appendix (id. at 21–31); acknowledged by the Examiner without comment
(Ans. 3). However, they depend from cancelled claims. See Amdt. filed
May 6, 2010. Because they depend from cancelled claims, claims 41, 42,
and 66 are indefinite under 35 U.S.C. § 112, second paragraph.

CONCLUSIONS
The rejection of claims 1–10, 15, 17, 18, 20, and 53–63, and 65 under
35 U.S.C. § 103(a) as being unpatentable over Renie and Catanoso is
reversed.
The rejection of claim 66 under 35 U.S.C. § 103(a) as being
unpatentable over Renie and Catanoso is reversed pro forma.
The rejection of claims 39, 43, and 45–47 under 35 U.S.C. § 103(a) as
being unpatentable over Renie and Walker is reversed.
The rejection of claims 48–51 under 35 U.S.C. § 103(a) as being
unpatentable over Renie and Walker is affirmed.
The rejection of claims 41 and 42 under 35 U.S.C. § 103(a) as being
unpatentable over Renie and Catanoso are reversed pro forma.
Claims 41, 42, and 66 are newly rejected under 35 U.S.C. § 112,
second paragraph.

DECISION
The decision of the Examiner to reject claims 1–10, 15, 17, 18, 20, 39,
43, 45–51, 53–63, 65, and 67–71 is affirmed-in-part.
Claims 41, 42, and 66 are newly rejected.

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NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 ground of rejection
to avoid termination of the appeal 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 examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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