Ex Parte Hanes

Patent Trial and Appeal Board

Aug 17, 2016

13260353 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/260,353 09/25/2011
22879 7590 08/19/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
David H Hanes
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.
82852221 1221
EXAMINER
STORK, KYLER
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. HANES
Appeal2015-002860 1
Application 13/260,353
Technology Center 2100
Before JEAN R. HOMERE, JOHN A. EV ANS, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
Per Curiam.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20. App. Br. 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellant's Invention
Appellant's invention is directed to a method and non-transitory
computer readable medium for using a digital photo frame and a digital
photo frame including an interface application 110 for rendering a user
1 Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP. App. Br. 1.
Appeal2015-002860
Application 13/260,353
interface 135 on a digital display device 190. In particular, when a user
accesses the digital display device 190, the application selects one of a
plurality of user profiles 140, then displays on the digital display device 190
content 130 associated with the selected user profile 140. Spec. i-fi-f 15-16,
Fig. 1.
Illustrative Claim
Independent claim 7 is illustrative, and reads as follows:
7. A digital photo frame comprising:
a processor;
a display screen ;
one or more input devices;
a storage device storing a plurality of user profiles and an
interface application, the interface application executable by the
processor to:
determine whether a user is accessing the digital
photo frame;
select a first user profile of the plurality of user
profiles in response to a determination that the user is
accessing the digital photo frame;
identify a set of digital images associated with the
first user profile; and
render the identified set of digital images on the
display screen of the digital photo frame.
Prior Art Relied Upon
Choi et al. US 2008/0209493 Al
("Choi")
Behar et al. US 2009/0322790 Al
("Behar")
Bair US 2010/0024023 Al
Muilenburg et al. US 2010/0082780 Al
("Muilenburg")
2
Aug. 28, 2008
Dec. 31, 2009
Jan.28,2010
Apr. 1, 2010
Appeal2015-002860
Application 13/260,353
Rejections on Appeal
Claims 1-15, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muilenburg, Choi, and Behar. Final Act. 2-8.
Claims 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muilenburg, Choi, Behar, and Bair. Final Act. 8-9.
ANALYSIS
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 5-17, and the Reply Brief, pages 2-11. 2
Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Muilenburg, Choi, and Behar teaches or suggests
a digital photo frame comprising a storage device storing a plurality of user
profiles and an interface application, the inteiface application executable by
a processor to determine whether a user is accessing the digital photo frame
and render the identified set of digital images on a display screen of the
digital photo frame, as recited in independent claim 7?
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed August 26, 2014) ("App. Br."), the Reply
Brief (filed December 1, 2014) ("Reply Br."), the Answer (mailed October
6, 2014) ("Ans."), the Final Office Action (mailed April 15, 2014) ("Final
Act."), the Non-Final Office Action (mailed November 15, 2013) ("Non-
Final Act."), and the original Specification (filed September 25, 2011)
("Spec.") for the respective details. We have considered in this Decision
only those arguments Appellant actually raised in the Briefs. Any other
arguments Appellant could have made but chose not to make in the Briefs
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
3
Appeal2015-002860
Application 13/260,353
First, Appellant argues none of Muilenburg, Choi, and Behar teaches
"[a] digital photo frame comprising ... a plurality of user profiles and an
interface application," as recited in independent claim 7. App. Br. 6-8. In
particular, Appellant asserts Muilenburg teaches a "context aware platform
(CAP) website [that] may be configured to provide web services for entities
in a business hierarchy." App. Br. 7 (quoting Muilenburg Abstract).
Appellant further contends Choi teaches an apparatus for providing
broadcast and Web contents. App. Br. 7 (citing Choi i-f 1 ). Appellant notes
Behar states:
[W]hen the portable computer 100 is not being actively used,
the user may configure the portable computer into the easel
mode, and program the portable computer to act as a digital
photo frame, displaying one or more photos of the user's
choice.
App. Br. 8 (quoting Behar i-f 186) (emphasis in original). Nevertheless,
Appellant argues Behar fails to teach the recited digital photo frame because
the portable computer is a general purpose computer capable of numerous
applications rather than a specialized device for presenting digital
photographs. App. Br. 8 (citing Behar i-f 177).
These arguments are not persuasive. We note the Examiner relies
upon Behar, not Muilenburg or Choi, to teach the recited digital photo
frame. Final Act. 3. The Examiner notes Appellant's Specification
describes a machine capable being a digital photo frame as well as a general
purpose computer such as a desktop, a laptop, and a server. Ans. 3 (quoting
Spec. i-f 12). The Examiner finds the Specification does not attribute a
meaning to digital photo frame inconsistent with the plain meaning. Ans. 3.
4
Appeal2015-002860
Application 13/260,353
Appellant responds that the machine is a digital photo frame in one
embodiment, then other computational devices in other embodiments. Reply
Br. 2 (quoting Spec. i-f 12). We agree with the Examiner that the portable
computer in Behar teaches the digital photo frame consistent with
Appellant's Specification. Ans. 3 (citing Behar i-f 186). Similar to the
machine described in Appellant's Specification (Spec. i-f 12), the portable
computer of Behar may be configured as a digital photo frame in an
embodiment indicated as the easel mode. Behar i-f 186.
Second, Appellant asserts that, because Choi and Behar fail to teach a
digital photo frame, Choi and Behar cannot teach "determining whether a
user is accessing the digital photo frame," as recited in claim 7. App. Br. 9.
As discussed above, we agree with the Examiner that Behar teaches a digital
photo frame. Ans. 3--4. Furthermore, the Examiner finds Choi teaches
determining user access to a digital display device. Final Act. 3 (citing Choi
i-fi-129--30); see Choi i-f 29 ("user wishes to view all of the Web pages."); see
Choi i-f 30 ("a page of Web contents are requested.").
Third, Appellant contends Choi and Behar do not teach an interface
application to select a first user profile of the plurality of user profiles in
response to a determination that the user is accessing the digital photo frame,
to identify a set of digital images associated with the first user profile and
render the identified set of digital images on the display screen of the digital
photo frame, as recited in claim 7. App. Br. 9. In particular, Appellant
argues Behar teaches handling download links to download selected content,
rather than the recited rendering a set of digital images. App. Br. 9-10
(citing Behar i-f 340).
5
Appeal2015-002860
Application 13/260,353
In response, the Examiner finds Choi teaches selecting a first user
profile of the plurality of user profiles in response to a determination that the
user is accessing the digital display device and rendering the identified set of
digital images on the display screen. Ans. 4 (citing Choi i-fi-129--30); see
Choi i1 29 ("[T]he rendering engine unit 120 divides the screen and renders
the Web contents such that all of the Web pages can be simultaneously
displayed on the split screen."). The Examiner relies on Choi, not Behar, to
teach rendering the identified set of digital images on the display screen.
Ans. 5 (citing Choi i-fi-129--30); Final Act. 3 (citing Choi i-fi-129--30).
Appellant does not rebut these findings. App. Br. 9--10. The Examiner
relies on Behar to teach a digital photo frame on which digital images can be
displayed. Ans. 5 (citing Behar i-f 186, Fig. 4); see Behar i-f 186 ("digital
photo frame, displaying one or more photos of the user's choice.").
Fourth, Appellant asserts the proposed rationale to combine
Muilenburg, Choi, and Behar does not explain how the technologies of the
reference could be combined and the benefit of combining them. App. Br.
10-11. The Examiner finds Muilenburg identifies a user, then provides the
user access to his/her profile. Ans. 6 (citing Muilenburg Fig. 6). The
Examiner further finds Choi selects a user profile from among a plurality of
user profiles and provides the user content based upon the selected user
profile. Ans. 6 (citing Choi i-fi-129--30). The Examiner explains the rationale
to combine Muilenburg and Choi is allowing a user to receive content based
upon the user's profile found based on the user's identification. Ans. 6; see
Muilenburg i-f l 07. The Examiner further explains the rationale to combine
Behar with Muilenburg and Choi is allowing a user to display photos from
6
Appeal2015-002860
Application 13/260,353
an identified user profile in a digital photo frame. Ans. 6 (citing Behar il
186). In view of these teachings in the references, we disagree with
Appellant that the proposed rationale is not addressed in the references and
derived solely from the instant application. Reply Br. 5. It follows
Appellant has not shown error in the Examiner's rejection of claim 7.
Regarding claim 6, Appellant alleges Muilenburg, Choi, and Behar do
not render unpatentable authenticating the user to use the first user profile.
App. Br. 12. The Examiner relies upon Official Notice to teach
authenticating a user to prevent unauthorized access to system profiles.
Non-Final Act. 5, cited in Ans. 7. Appellant does not challenge the
Examiner's taking of Official Notice. App. Br. 12. Accordingly, we find no
error in the Examiner's rejection of claim 6.
Regarding claim 8, Appellant contends the references do not render
unpatentable a storage device to store at least a set of digital images
associated with the first user profile. In particular, Appellant asserts
Muilenburg teaches generating user profiles to track user interaction with
websites over time. App. Br. 13 (citing Muilenburg i-f 107). Appellant
further argues Behar teaches a portable computer in a laptop or easel
configuration and download links for downloading content. App. Br. (citing
Behar i-fi-1 186, 340).
We note Appellant's arguments constitute an individual attack against
the references. 3 The Examiner relies upon the combination of Muilenburg
3 See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.").
7
Appeal2015-002860
Application 13/260,353
and Behar to teach the disputed limitations. Ans. 7. The Examiner finds
Muilenburg teaches a storage device to store content associated with the user
profile. Ans. 7 (citing Muilenburg i-fi-f 107-108); see Muilenburg i-f 108
("user preferences related to the product and/or service offered by the
network of affiliated websites"). The Examiner further finds Behar teaches
the content is digital images associated with a user profile. Ans. 7 (citing
Behar i1340); see Behar i1340 ("For photo content, as one example, the
system identifies the content as a picture (.jpg, .gif, .tif, etc.)."). The
Examiner concludes the subject matter recited in claim 8-"storage device
to store at least the set of digital images associated with the first user
profile"-would have been obvious based on the combined teachings of the
references, providing articulated reasoning with rational underpinning. Ans.
8-9. We are not persuaded of error in the Examiner's conclusion of
obviousness. Contrary to Appellant's arguments (Reply Br. 7-8), the claim
does not require the content to be stored separately from the user profile.
Thus, Muilenburg' s disclosure of "user preferences" associated with the user
profile supports the Examiner's conclusion of obviousness. See Muilenburg
i-f 108. It follows Appellant has not shown error in the Examiner's rejection
of claim 8.
Appellant disputes the Examiner's taking of Official Notice in the
rejection of claim 14. App. Br. 14--15. Appellant submits "authenticating a
user accessing a digital photo frame with facial recognition technology or
voice recognition technology" is not common knowledge in the art. App.
Br. 15 (emphasis omitted). However, we agree with the Examiner that the
scope of Official Notice taken was limited to authentication via facial or
8
Appeal2015-002860
Application 13/260,353
voice recognition. Ans. 8-9; Final Act. 7. Appellant fails to cast doubt
regarding the justification of the Official Notice that authentication via facial
or voice recognition is well known. 4 Appellant responds that the rejection of
claim 14 failed to cite any other reference. Reply Br. 9. We find this
argument not persuasive because claim 14 is a dependent claim of claim 12
rejected similarly to claim 1 under Muilenburg, Choi and Behar. Final Act.
2-3, 6-7. The Examiner explains how the Official Notice of authentication
via facial or voice recognition can be combined with the teachings of
Muilenburg, Choi and Behar. Ans. 9; Final Act. 7. Appellant fails to rebut
the Examiner's findings. 5 App. Br. 14--15; Reply Br. 8-9; Ans. 9.
Accordingly, we find no error in the Examiner's rejection of claim 14.
Regarding claims 17 and 20, Appellant asserts the cited references do
not render unpatentable "render a user interface of the digital photo frame
according to the first user profile." App. Br. 15-16. Specifically,
Appellant argues Behar teaches download links to download content. App.
Br. 16 (citing Behar i-f 340). The Examiner finds Behar teaches accessing
4 To adequately challenge the taking of Official Notice, an Applicant must
come forth with information or argument that, on its face, casts doubt
regarding the justification of the Official Notice. See In re Boon, 439 F.2d
724, 728 (CCPA 1971) (an applicant has the right to challenge the Official
Notice and demand production of evidence in support thereof, provided such
challenge is accompanied by adequate information or argument that, on its
face, creates a reasonable doubt regarding the circumstances justifying the
Official Notice); see also MPEP § 2144.03.
5 See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (where an applicant for
a patent has failed to challenge a fact officially noticed by the Examiner, and
it is clear that the applicant has been amply apprised of such finding so as to
have the opportunity to make such challenge, the Examiner's finding shall
be considered conclusive).
9
Appeal2015-002860
Application 13/260,353
download links to display images using a third-party service, such as
FLICKR, on which the user has an account including a profile. Ans. 9--10
(citing Behar i-f 340). In response, Appellant contends Behar solely teaches
the transfer of files for remote storage on web services. Reply Br. 11 (citing
Behar i-f 340). We disagree. Behar teaches display of content, stored in
third-party services, along with access information in a user profile in a user
interface. See Behar i-fi-1 340-341, Fig. 42, items 4206, 4208, 4216. We thus
find no error in the Examiner's rejection of claims 17 and 20.
Regarding the rejections of claims 1-5, 9--13, 15, 16, 18, and 19,
because Appellant has either not presented separate patentability arguments
or has reiterated substantially the same arguments as those previously
discussed for patentability of claim 7 above (App. Br. 11-12, 16-17), claims
1-5, 9--13, 15, 16, 18, and 19 fall therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
DECISION
We affirm the Examiner's obviousness rejections under 35 U.S.C.
§ 103(a) of claims 1-20.
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
10