Ex Parte Fisher et al

Board of Patent Appeals and Interferences

Aug 9, 2012

09781917 (B.P.A.I. Aug. 9, 2012)

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.
09/781,917 02/08/2001 Clay H. Fisher 50N3695.01/1582 9084
24272 7590 08/09/2012
Gregory J. Koerner
Redwood Patent Law
1291 East Hillsdale Boulevard
Suite 205
Foster City, CA 94404
EXAMINER
JERABEK, KELLY L
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
08/09/2012 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 CLAY H. FISHER, STEVEN G. GOLDSTEIN,
NEAL J. MANOWITZ, and DAVID G. LONGENDYKE
____________________

Appeal 2010-010562
Application 09/781,917
Technology Center 2600
____________________

Before: MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010562
Application 09/781,917

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-40, 43-50, and 52-58.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a system and method for
accessing and utilizing ancillary data using an electronic camera device.
(Spec. 1:14-16.)
Independent claim 1 is illustrative.
1. A system for manipulating image data, comprising:

a data source configured to store one or more ancillary
data files, said data source being implemented as a computer in
a distributed computer network of multiple remote
intercommunicating computers;

an imaging device configured to capture said image data,
said imaging device being physically remote from said
computer; and

an ancillary data module for transferring said one or more
ancillary data files in an ancillary data flow from said data
source directly to said imaging device for manipulating said
image data, said ancillary data module performing on-line
management procedures during which a system user
interactively and manually utilizes said imaging device to
remotely view said one or more ancillary data files that are
stored on said computer, to remotely manipulate said one or
more ancillary data files that are stored on said computer, to

1 Appellants are not appealing claims 41, 42, 51, and 59 (App. Br. 5). It
should be noted that claims12 and 32, although not included in the “Status of
Claims,” are included in Appellants’ arguments and thus, are considered part
of this Appeal (App. Br. 36; Ans. 40-41).
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Application 09/781,917

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then remotely select said one or more ancillary data files that
are stored on said computer, and to manually trigger a
download of said one or more ancillary data files from said
computer to said imaging device, said one or more ancillary
data files being selected and downloaded through selection
decisions that are able to be made in all instances only by said
system user, said selection decisions being made in all instances
prior to said download of said ancillary data files, said on-line
management procedures occurring while an active bi-
directional electronic communication path currently exists from
said imaging device to said computer through said distributed
computer network, said one or more ancillary data files
including one or more image data files that said imaging device
combines with said image data to create a new composite image
that integrates both said image data and at least one of said
ancillary data files into a single image.

REFERENCES and REJECTIONS
The Examiner rejected claims 1, 4-9, 11, 13-15, 17, 21, 24-29, 31, 33-
35, 37, 47, 48, 50, and 52 under 35 U.S.C. § 102(b) as anticipated by Squilla
(US 6,396,537 B1, May 28, 2002, filed Nov. 24, 1997).
The Examiner rejected claims 2 and 22 under 35 U.S.C. § 103(a)
based upon the teachings of Squilla and Creamer (US 6,930,709 B1, Aug.
16, 2005, filed Dec. 3, 1998)
The Examiner rejected claims 3, 23, and 46 under 35 U.S.C. § 103(a)
based upon the teachings of Squilla, Qian (US 6,950,130 B1, Sep. 27, 2005,
filed Jan. 5, 1999), and Aihara (US 6,223,190 B1, Apr. 24, 2001, filed Apr.
13, 1998)
The Examiner rejected claims 10, 18-20, 30, and 38-40 under 35
U.S.C. § 103(a) based upon the teachings of Squilla and Anderson (US
6,177,957 B2, Jan. 23, 2001).
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Application 09/781,917

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The Examiner rejected claims 12, 32, 49, and 53-55 under
35 U.S.C. § 103(a) based upon the teachings of Squilla and Aihara.
The Examiner rejected claims 16 and 36 under 35 U.S.C. § 103(a)
based upon the teachings of Squilla and Sarbadhikari (US 5,477,264, Dec.
19, 1995).
The Examiner rejected claim 43 under 35 U.S.C. § 103(a) based upon
the teachings of Squilla and Harada (US 6,195,511 B1).
The Examiner rejected claim 44 under 35 U.S.C. § 103(a) based upon
the teachings of Squilla, Aihara, Qian, Berstis (US 6,721,001 B1, Apr. 13,
2004, filed Dec. 16, 1998), and Silverbrook (US 6,894,694 B1, May 17,
2005, filed Jul. 10, 1998).
The Examiner rejected claim 45 under 35 U.S.C. § 103(a) based upon
the teachings of Squilla, Park (US 6,731,305 B1, May 4, 2004, effectively
filed Jul. 17, 2000), Kondoh (US 6,968,058 B1, Nov. 22, 2005, filed Apr.
16, 1999), and Satoh (US 5,717,496, Feb. 10, 1998).
The Examiner rejected claim 56 under 35 U.S.C. § 103(a) based upon
the teachings of Squilla, Aihara, and Tullis (US 6,535,243 B1, Mar. 18,
2003, filed Jan. 6, 1998).
The Examiner rejected claims 57 and 58 under 35 U.S.C. § 103(a)
based upon the teachings of Squilla, Aihara, and Steinberg (US 6,006,039,
Dec. 21, 1999).

ANALYSIS
Appellants assert the Examiner is incorrect in finding Squilla teaches
all the features of Appellants claimed invention, particularly “one or more
ancillary data files being selected and downloaded through selection
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decisions that are able to be made in all instances only by said system user,
said selection decisions being made in all instances prior to said download of
said ancillary data files” as claimed (App. Br. 17, 19). Further, Appellants
contend, Squilla teaches a personality file is used by respective processors
(76, 14) in an image server (70) and image spot (10) to choose content data
(App. Br. 18). Thus, selection decisions in Squilla are not made in all
instances only by a system user (App. Br. 17-18).
The Examiner finds Squilla does disclose these claimed limitations as
Squilla discloses a user can view content information on a list indicative of
content information and can save data if wanted. Thus, the Examiner
asserts, data files are selected and downloaded in all instances by a system
user. (Ans. 30) Further, the Examiner notes, the portion of Squilla relied
upon by Appellants is a separate embodiment and not the embodiment cited
to provide the teachings of claim 1 (Ans. 31; Squilla, col. 16, ll. 57-59). We
do not agree with the Examiner.
Squilla does not teach “data files being selected and downloaded
through selection decisions that are able to be made in all instances only by
said system user” as claimed (emphasis added). As Appellants assert, the
portion of Squilla relied upon by the Examiner refers to both embodiments
(App. Br. 18). Thus, as Squilla does not teach all the limitations of
Appellants’ claimed invention, it does not anticipate claims 1, 4-9, 11, 13-
15, 17, 21, 24-29, 31, 33-35, 37, 47, 48, 50, and 52.
The Examiner rejected the remaining claims over Squilla in
combination with various references which do not remedy the deficiencies
of Squilla. Thus, we conclude claims 2-3, 10, 12, 16, 18-20, 22-23, 30, 32,
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36, 38-40, 43-46, 49, and 53- 58 are not obvious over the collective
teachings of the cited references.

DECISION
The Examiner’s decision rejecting claims 1-40, 43-50, and 52-58 is
reversed.

REVERSED

Vsh