Ex Parte Finke-Anlauff et al

Board of Patent Appeals and Interferences

Nov 17, 2010

10774670 (B.P.A.I. Nov. 17, 2010)

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.
10/774,670 02/09/2004 Andrea Finke-Anlauff 042933/273645 9433
826 7590 11/17/2010
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
DAYE, CHELCIE L
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
11/17/2010 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 ANDREA FINKE-ANLAUFF, ANNIKA MACKE, DANIELA
SCHULTEN, CHRISTIAN LINDHOLM, SAMI KOSKELA, and
TUOMAS ARTMAN
____________________

Appeal 2009-005668
Application 10/774,6701
Technology Center 2100
____________________

Before JAMES D. THOMAS, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed February 9, 2004. The real party in interest is Nokia
Corp. (App. Br. 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-9, 35-39,
48, and 49 under authority of 35 U.S.C. § 134(a). Claims 10-34 and 40-47
have been withdrawn. (App. Br. 2.) The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal relates to a device and computer –
readable instructions for providing a media application for displaying media
file representations facilitating location and viewing of a media file by a
user. The application associates digital media files with a period of time and
generates media file representations within a media view such that the media
file representations associated with a period of time proximate to a
predefined position within the media view are enlarged media file
representations. (Spec. ¶¶ [0008]-[0009].)3
Representative Claim
Independent claim 1further illustrates the invention. It reads as
follows:
1. A computer readable storage medium having
computer-readable program instructions embodied in the
medium, the computer-readable program instructions
configured to be executed by a processing device to provide
access to media files on a digital device, the computer-readable
program instructions comprising:

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed February 21, 2008; and Reply Brief (“Reply Br.”) filed July 10, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed May 14, 2008.
Specification paragraph numbers reference Publication No. 2005/0187943.
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first instructions for generating a media view that
provides access to at least one digital media file and associates
the at least one digital media file with a period of time; and
second instructions for generating media file
representations within the media view such that the media file
representations associated with a period of time are enlarged
media file representations when the period of time is proximate
a predefined position within the media view.

References
The Examiner relies on the following references as evidence of
unpatentability:
Yang US 6,301,568 B1 Oct. 9, 2001

Hayashi US 2002/0054157 A1 May 9, 2002

Rejections on Appeal
The Examiner rejects claims 1, 4, 5, 35, and 38 under 35 U.S.C.
§ 102(b) as being anticipated by Yang.
The Examiner rejects claims 2, 3, 6-9, 36, 37, 39, 48, and 49 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Yang and
Hayashi.4

4 We note that the Examiner and Appellants acknowledge that claims 48 and
49 are included in Appellants’ appeal – see App. Br. 2 and Ans. 2 – but the
Examiner omits these claims from the statement of the §§ 102 and 103
rejections, and Appellants do not discuss these claims in their Briefs – see
Ans. 3, 5 and App. Br. 4, 5, 8, 10. Claims 48 and 49 depend on claims 1 and
35, respectively. In the Final Rejection Office Action Summary (mailed
July 19, 2007), the Examiner indicates that claims 48 and 49 are rejected.
Since the Examiner has indicated that claims 48 and 49 stand rejected, and
Appellants have failed to discuss these claims, we revise the statement of the
§ 103 rejection to include claims 48 and 49.
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ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding Yang discloses generating media file
representations within the media view such that the media file
representations associated with a period of time are enlarged media file
representations when the period of time is proximate a predefined position
within the media view as recited in Appellants’ claim 1?

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We also add the following factual
findings:
Yang Reference
1. Yang describes a “multimedia object management application”
or system (“MOMA”) (col. 5, ll. 3-7) that allows users to “organize and
manage image/media files with associated properties such as . . . date [and]
time” (col. 5, ll. 44-46, see Fig. 6 – showing date range identifying
thumbnails). The MOMA organizes the media files into albums, which
contain representations (icons or thumbnails) for each of the media files.
The files (representations of files) may be viewed in a notebook, spreadsheet
or thumbnail view.
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2. Yang’s notebook view presents tabs (representing albums), and
each tab displays representations (thumbnails or icons) of media file within
the album with database information associated with the file. (Col. 6, ll. 3-5;
col. 21, ll. 33-46; Figs. 8, 26.) Yang describes a page in the notebook
(representing a media file) may display an enlarged representation of a
particular media file along with data for the media file, navigation buttons
and a slideshow activation button – see Fig. 26.
3. Yang’s spreadsheet view provides text information for each file
in an album, and provides a pop-up thumbnail (preview) for non-text
information. (Col. 6, ll. 5-12; col. 21, l. 48 to col. 22, l. 10; Figs. 8, 27.)
4. Yang describes the thumbnail view as the basic or default
MOMA view method. All the media files in an album can be viewed as
thumbnails, which can be organized according to a customized field name.
(Col. 22, l. 60 to col. 23, l. 5; Fig. 32.) As illustrated in Figure 6, the field
name may be a date range. Additionally, Yang describes filtering the files
(displayed file representations) according to selected criteria – for example,
a date range. (Col. 24, ll. 35-39.) Yang’s files may be viewed either within
the view window, in which the thumbnails are displayed, or in a full screen
view. (Col. 23, ll. 6-11.) The viewer can also display the files in a manual
or an automatic (slide show) mode. (Col. 14, ll. 46-51; col. 23, ll. 12-23.)
Yang further describes that the user can configure the size of the displayed
image. (Col. 14, ll. 46-51; col. 23, ll. 29-31; Fig. 32.)

ANALYSIS
Appellants argue independent claims 1 and 35, as well as dependent
claims 4, 5, and 38 together as a group with respect to the Examiner’s
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anticipation rejection. (App. Br. 5, 8.) Therefore, we select independent
claim 1 as representative of Appellants’ arguments and grouping with
respect to the Examiner’s anticipation rejection. Appellants also argue
dependent claims 2, 3, 6-9, 36, 37, and 39 together as a group with respect to
the Examiner’s obviousness rejection. (App. Br. 8-10.) We also include
claims 48 and 49 in this group – see FN 4, supra. Therefore, we select
independent claim 2 as representative of Appellants’ arguments and
grouping with respect to the Examiner’s obviousness rejection. 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
We have considered only those arguments that Appellants have actually
raised in their Brief. Arguments that Appellants could have made but chose
not to make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to representative claim 1. (Ans. 4, 8-10).
The Examiner also sets forth a detailed explanation of a reasoned conclusion
of obviousness in the Examiner’s Answer with respect to representative
claim 2. (Ans. 5-6, 10-11.) Therefore, we look to the Appellants’ Brief to
show error in the proffered reasoned conclusions. See Kahn, 441 F.3d at
985-86.

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Arguments Concerning the Examiner’s Rejection
of Claim 1 under 35 U.S.C. § 102(b)
Appellants contend that Yang does not disclose Appellants’ recited
second instructions for generating media file representations within the
media view such that the media file representations associated with a period
of time are enlarged media file representations when the period of time is
proximate a predefined position within the media view. (App. Br. 5-8;
Reply Br. 2-4.) Specifically, Appellants argue that “it is the position of the
period of time relative to a predefined position within the media view that
determines whether or not associated media file representations will be
enlarged” (Reply Br. 4), and the sizing of media file representations in Yang
is “unrelated to the position of a time within any type of ‘media view’”
(App. Br. 8).
The Examiner finds that Yang discloses each feature of Appellants’
claim 1, and provides a detailed explanation as to why Appellants’
arguments fail to overcome the Examiner’s anticipation rejection. (Ans. 4,
8-10.) Specifically, the Examiner finds that Yang discloses a media object
management application “MOMA” that organizes media files according to
properties such as date and time, and displays media file representations.
The Examiner also finds that Yang displays enlarged representations of the
media files (e.g., a full screen slide show image relative to a thumbnail
image) when a time period associated with the representation (i.e., a media
file representation associated with a time period) is near the center of the
screen. (Ans. 8-10.)
Based on the record before us, we do not find error in the Examiner’s
anticipation rejection of representative claim 1. We agree with the Examiner
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that Yang discloses the disputed features. We begin our analysis by
construing Appellants’ disputed claim limitations.
We give claim terminology the “broadest reasonable interpretation
consistent with the [S]pecification” in accordance with our mandate that
“claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). We note that
Appellants’ representative claim 1 recites “such that the media file
representations associated with a period of time are enlarged media file
representations when the period of time is proximate a predefined position
within the media view.” Appellants do not explicitly define, in their
Specification or in claim 1, an “enlarged media file representation” or a
“predefined position within the media view.” Consequently, we find that
the Appellants’ disputed claim limitation at most recites an intended use or
purpose of the storage medium having second instructions (for generating
(displaying) media file representations within the media view). Appellants’
claim does not positively recite that a media file representation is actually
enlarged, nor does the claim define or limit the manner of determining when
“the period of time” is near (proximate) a particular “predefined position
within the media view.” We note that “[a]n intended use or purpose usually
will not limit the scope of the claim because such statements usually do no
more than define a context in which the invention operates.” Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the
claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
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Thus, Appellants’ claim recites an intended use or purpose of the
storage medium having second instructions that may never actually occur.
The storage medium is an apparatus, not a process. Accordingly, if the prior
art structure is capable of performing the intended use, it meets the claim
limitation. A claim containing a “recitation with respect to the manner in
which a claimed apparatus is intended to be employed does not differentiate
the claimed apparatus from a prior art apparatus” if the prior art apparatus
teaches all the structural limitations of the claim. Ex parte Masham, 2
USPQ2d 1647, 1648 (BPAI 1987). Similarly, while features of an apparatus
may be recited either structurally or functionally, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997). “[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Put simply, how an apparatus invention is used is not germane
to whether it is anticipated by the prior art.
Moreover, even if we were to attribute some weight to Appellants’
statement of intended use, arguendo, we agree with the Examiner that Yang
discloses the disputed feature. Appellants’ explain that:
Additionally, the file management application may
provide for a timeline view that is typically displayed in
conjunction with the media view or a combined media view and
calendar view. The timeline view provides for a timeline
presentation (referred to as a “time bar”) of media items and, in
certain embodiments, calendar events and reminders. See
¶ 0028.
(App. Br. 3.) Appellants’ also explain that:
The computer-readable program instructions of
independent Claim 1 also include second instructions for
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generating media file representations within the media view
such that the media file representations associated with a period
of time are enlarged media file representations when the period
of time is proximate a predefined position within the media
view. For example, as shown in the media view 200 of Fig. 2,
the media file representations (230A, 250A, 270A...) may have
respective sizes that are determined by the distance from the
vertical centerline of the associated time period, time frame or
event. See ¶ 0049. Alternatively, the size of a media file
representation can be determined in terms of the distance from
any predefined position within the media view. See ¶ 0050.
(App. Br. 4; see also Reply Br. 3-4.) Appellants’ Specification (at
paragraphs 49 and 50), in pertinent part, describes that:
FIG. 2 provides for a media view in which the media items are
presented in a “cylindrical” media view. The “cylindrical”
media view 200 provides for the size of the media file
representation to be determined by the distance from the
vertical centerline of the associated time period, time frame or
event . . . . [W]hile the FIG. 2 illustrated embodiment
determines size of the media file representation in terms of the
distance from the vertical centerline of the associated time
period, time frame or event (i.e., a column in FIG. 2), it is also
possible, and within the inventive concepts herein disclosed, to
determine size of the media file representation in terms of the
distance from any predefined position within the media view
and to have other displayed media file representations vary in
size according to the distance from the predefined position.
(Spec. ¶¶ 49-50 (emphasis added).) Based on a broad but reasonable
interpretation of Appellants’ disputed claim limitation in light of Appellants’
Specification and their explanation in their Briefs, we find that Appellants’
recited second instructions determine the media file representation size “in
terms of the distance from [the predefined position] of the associated time
period.” (Supra – Spec. ¶¶ 49-50.) In other words, the distance of the
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representation from a predetermined position associated with a particular
time period, such as a date on a calendar or time line.
As detailed in the Findings of Fact section supra, Yang describes
generating/displaying a window (media view) and associating media files
with a period of time. Yang also describes displaying thumbnails (media file
representations) within the window (media view). Yang further describes
enlarging the thumbnails manually or automatically. (FF 1-4.) Yang’s
thumbnails may be filtered and organized according to a date range (FF 1,
4), and the files may then be displayed in a slide show (FF 2, 4).
Alternatively, the thumbnail may be selected by a user and an enlarged
image may be displayed in the window (FF 4) or on a page of a notebook
view (FF 2). Yang also describes a preview when a user positions a cursor
over or selects non-text information in a spreadsheet view. (FF 3.) We see
no functional distinction between appellants disputed claim limitation and
Yang’s disclosure of organizing media files in order of date and enlarging
the file representations (e.g., from a thumbnail to a larger image in a slide
show when the representation is near a user determined (predetermined)
position in the window).
Appellants’ arguments (supra) seem to imply that an image is
automatically enlarged when the image is near a certain predetermined
position in a view – “it is the position of the period of time relative to a
predefined position within the media view that determines whether or not
associated media file representations will be enlarged” (Reply Br. 4).
However, Appellants’ argument is not commensurate with the scope of their
claim. The claim merely recites generating media file representations “such
that” (emphasis added) the representations “are enlarged” when “the period
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of time is proximate a predefined position within the media view.”
Appellants do not define nor limit the position or the process of determining
when to enlarge a representation. Consequently any position (or positions)
within a view may be broadly but reasonably interpreted to be the recited
“predefined position.” For, example, as noted by the Examiner, the center of
the window is such a predefined position when a full screen view is utilized.
(Ans. 10.) Further, the claim does not preclude user intervention as
Appellants seem to suggest. The claim does not recite automatically
enlarging the representation, and we note that a claimed invention is not
patentable if it merely automates a prior art process. See In re Venner, 262
F.2d 91, 95 (CCPA 1958); cf. Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007). Further, the claim utilizes the open-ended
term “comprising,” which reinforces this interpretation. See Genentech, Inc.
v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
We therefore find that Yang discloses generating thumbnails (media
file representations) associated with a period of time (e.g., a date range
identifier) within a window (media view), as well as enlarging the
thumbnails when the thumbnail associated with the period of time is near
(proximate) a predefined position within the window – e.g., a user selected
position within the window, such as the center. Thus, a broad but reasonable
interpretation of Appellants’ claim 1 reads on at least one embodiment of
Yang. We find Appellants’ contrary arguments unpersuasive, for the
reasons set forth above. Appellants do not provide any persuasive evidence
or argument that Yang fails to disclose the disputed feature. Thus, we find
Yang discloses Appellants’ disputed claim limitation as recited in
Appellants’ independent claim 1. Appellants do not separately argue
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independent claim 35 or dependent claims 4, 5, and 38 (supra). We,
therefore, find Yang anticipates Appellants’ claims 4, 5, 35, and 38 for the
reasons set forth with respect to representative claim 1. It follows that
Appellants do not persuade us of error in the Examiner’s anticipation
rejection of claims 1, 4, 5, 35, and 38, and we affirm the Examiner’s
rejection of these claims.
Arguments Concerning the Examiner’s Rejection
of Claim 2 under 35 U.S.C. § 103(a)
Appellants contend that that neither Yang, nor Hayashi teach the
disputed feature discussed with respect to claim 1. (App. Br. 8-10; Reply
Br. 4.) As we explain supra, Yang fully describes the disputed limitation
which we construe to mean generating media file representations associated
with a period of time within a media view, and enlarging the media file
representations when the representations associated with the period of time
are near a predefined position within the view.
Thus, we find Yang teaches (and Yang and Hayashi collectively
teach) Appellants’ disputed claim limitation as recited in Appellants’
independent claim 1 and dependent claim 2. Appellants do not separately
argue dependent claims 3, 6-9, 36, 37, 39, 48, and 49 (supra). We,
therefore, find Yang and Hayashi collectively render Appellants’ claims 3,
6-9, 36, 37, 39, 48, and 49 obvious for the reasons set forth with respect to
representative claim 2. It follows that Appellants do not persuade us of error
in the Examiner’s obviousness rejection of claims 2, 3, 6-9, 36, 37, 39, 48,
and 49, and we affirm the Examiner’s rejection of these claims.

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CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1, 4, 5, 35, and 38 under 35 U.S.C. § 102(b).
Appellants have not shown that the Examiner erred in rejecting claims
2, 3, 6-9, 36, 37, 39, 48, and 49 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1, 4, 5, 35, and 38 under
35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 2, 3, 6-9, 36, 37, 39, 48,
and 49 under 35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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