Ex Parte Flynn et al

Patent Trial and Appeal Board

Aug 26, 2016

12608694 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/608,694 10/29/2009
42419 7590 08/26/2016
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
FIRST NAMED INVENTOR
Timothy J. Flynn
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.
CD-159 6946
EXAMINER
ORR,HENRYW
ART UNIT PAPER NUMBER
2175
MAILDATE DELIVERY MODE
08/26/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. FLYNN,
GEOFFREY T. BROSSARD,
and JAMES MAY ALL
Appeal2015-000194
Application 12/608,694
Technology Center 2100
Before HUNG H. BUI, DANIEL N. FISHMAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000194
Application 12/608,694
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4--10, 12-19, and 21-23, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to a "method [that] provides a label and
electronic view screen image that both apply to [a] device and together give
an appearance of a seamless cover on the electronic device." (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A method of labeling an electronic device, the method
compnsmg:
positioning an electronic image within a label template
displayed in a graphical user interface by a data processor, the
label template including a boundary corresponding to an outer
dimension of a label for the electronic device and a window
within the boundary and corresponding to a view screen or
feature of the electronic device, wherein a first portion of the
electronic image is positioned within the boundary and a second
portion of the electronic image is positioned within the window;
printing the first portion of the electronic image on the label
corresponding to the label template;
generating a new and separate view screen electronic image
by copying or removing the second portion of the electronic
image that is positioned within the window of the label template;
and
1 Appellants identify inventors Timothy J. Flynn and James Mayall as the
real parties in interest. (See App. Br. 2.)
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Appeal2015-000194
Application 12/608,694
transferring the view screen electronic image to the electronic
device for displaying the second portion of the electronic image
on the view screen of the electronic device.
THE REFERENCES AND THE REJECTION
Claims 1, 2, 4--10, 12-19, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Buehler (US 2008/0313552 Al; published
Dec. 18, 2008) and Nayeri (US 6,957,398 Bl; issued Oct. 18, 2005). (See
Final Act. 3-12.)
APPELLANTS' CONTENTIONS
Appellants argue the rejection is improper because the "combination
does not reasonably provide for" the claimed steps of "generating a new and
separate view screen electronic image by copying or removing the second
portion of the electronic image that is positioned within the window of the
label template" and "transferring the view screen electronic image to the
electronic device for displaying the second portion of the electronic image
on the view screen of the electronic device." (App. Br. 11-12.)
ANALYSIS
Appellants describe and claim a system in which an electronic image
is positioned within a label template. (See, e.g., Claim 1.) The template
includes a boundary corresponding to the other dimension of a label for an
electronic device and a window within the boundary corresponding to a
"view screen or feature" of the device. (Id.) A first portion of the image is
positioned within the boundary and a second portion is positioned within the
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Application 12/608,694
window. (Id.) The first portion is printed on a label and the second portion
is copied and transferred to the device to be displayed on the screen. (Id.)
Buehler describes a system for creating custom covers for multiple
electronic devices that includes "selecting a device among a plurality of
devices," "displaying a template associated with the selected device," and
"creating an image on the template to produce a customized template."
(Buehler i-f 7.) The Examiner finds that Buehler teaches "generating a new
and separate view screen electronic image by copying or removing the
second portion of the electronic image positioned that is within the window
of the label template." (See Final Act. 4, emphasis omitted.)
Appellants argue that "Buehler et al. discloses customizing a cover
but does not disclose or suggest creating Appellants' view screen image."
(Reply Br. 2.) We do not agree. The reference teaches that "a user is
provided with the ability to create an image on a template associated with a
selected electronic device in order to produce a customized template."
(Buehler i-f 57.) "One or more than one image may be selected for use with a
template" and "[ o ]nee an image is selected it may be manipulated, edited or
modified in any manner that would be known in the art of graphic design
software" including "cropping." (Id.) Buehler explains that "[i]n one non-
limiting example" of the editing process, "a template may define sections
that [are] transparent or substantially transparent part[ s] of a cover, or
'punch-out' sections or openings of a cover, for example a cover that is
placed on a cell phone surface having a display screen" and that "[i]n
creating an image on such templates, a client may select one or more further
image( s) to be created as a wallpaper or screensaver in a display screen."
(Id. i-f 58; see also id. i-f 108 ("The cover customizer may allow the user to
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Application 12/608,694
design images to put on wallpaper or screensaver that matches or is
complementary to images created at the web pages 112.").) This description
would have taught or suggested to one of skill in the art the creation of the
"claimed view screen image," including by cropping a portion of an image
corresponding to a device's display screen, as well as the step of sending the
cropped image to the device for use as wallpaper or a screen saver to
complement the physical cover.
For these reasons, we sustain the Section 103 rejections of claims 1, 2,
4--10, 12-19, and 21-23.
DECISION
The rejection of claims 1, 2, 4--10, 12-19, and 21-23 is affirmed.
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).
AFFIRMED
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