Ex Parte Harris et al

Patent Trial and Appeal Board

May 9, 2016

12550266 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/550,266
108982 7590
Wolfe-SBMC
601 W. Main Avenue
Suite 1300
Spokane, WA 99201
08/28/2009
05/11/2016
FIRST NAMED INVENTOR
Jerry G. Harris
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.
Bl015 1568
EXAMINER
SAMS, MICHELLE L
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY G. HARRIS, SCOTT L. BYER, and
STEPHAN D. SCHAEM
Appeal2014-006474
Application 12/550,266
Technology Center 2600
Before JEAN R. HOMERE, KARA L. SZPONDOWSKI, and
SHARON PENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
FinalRejectionofclaims 1-5, 7-13, 16, 17, 19,and21-25. Claims6, 14,
15, 18, and 20 have been cancelled. (App. Br. 23, 26, 27). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-006474
Application 12/550,266
STATEMENT OF THE CASE
Appellants' invention is directed to a system and method for image
editing using a visual rewind operation. (Spec. i-f 3). Claim 1, reproduced
below with the disputed limitations in italics, is representative of the claimed
subject matter:
1. A system, comprising:
one or more processors; and
a memory coupled to the one or more processors and storing
program instructions executable by the one or more processors to
implement operations including:
capturing image data representing a sequence of frames
displayed by an image editing application during performance
of one or more image editing operations, wherein each frame is
associated with an identifier of the frame and at least some of
the frames represent sub-operations of a single image editing
operation defined by a single interaction with the image editing
application;
capturing data representing a log of interactions and
corresponding changes in application state for the image editing
application during the performance of the one or more image
editing operations;
determining a correlation between each of a plurality of
entries in the log and a respective frame identifier, wherein the
respective frame identifier corresponds to a frame of the
sequence of frames depicting a change in the image due to the
interaction and corresponding changes in application state
represented by the entry;
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Application 12/550,266
storing the captured image data, the log data, and data
representing the correlation between each of the plurality of
entries and the respective frame identifier; and
displaying at least a portion of the sequence of frames,
based on the stored data such that the at least some of the
frames are individually displayable to display the single image
editing operation as a sequence of the sub-operations of the
single image editing operation.
REJECTIONS
Claims 22 and 23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, 7, 8, 11-13, 16, 17, 19, 21, 24, and25 stand rejected
under 35 U.S.C. § 103(a) as being obvious over the combination of Larsen
(US 2008/0250314 Al; published Oct. 9, 2008) and Anami et al. (US
2002/0051000 Al; published May 2, 2002).
Claims 3, 4, and 9 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Larsen, Anami and Zaima et al. (US
2003/0164847 Al; published Sept. 4, 2003).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Larsen, Anami, and Harada et al. (US 5,844,563;
issued Dec. 1, 1998).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Larsen, Anami, and Ralph Steinmetz & Klara
Nahrstedt, Multimedia Fundamentals, Vol. 1: Media Coding and Content
Processing, Chapter 7 (2d ed. 2002) (hereafter "Steinmetz").
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Appeal2014-006474
Application 12/550,266
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Larsen, Anami and Bob McFarlane,
Beginning AutoCAD 2002, p. 129-131 (2002) (hereafter "Mcfarlane").
The Examiner's Answer included a new ground of rejection of claims
12, 13, and 16 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
ANALYSIS
35 U.S. C. § 112 rejection
We summarily affirm the written description rejection of claims 22
and 23. See Manual of Patent Examining Procedure§ 1205.02 ("If a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
that ground of rejection will be summarily sustained by the Board."); see
also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board
affirmed an uncontested rejection of claims under 35 U.S.C. § 112, second
1 1 1 Ji l'"""I 1! 1 ,('-,~ ~. ,........ 1 ,1 llll 1'? 1! ~ ~ paragrapn, ana on appeai me reaera1 Lircuu arnrmea me tloara s aec1s10n
and found that the appellant had waived his right to contest the
indefiniteness rejection by not presenting arguments as to en-or in the
rejection on appeal to the Board).
35 U.S. C. § 1 OJ rejection
Issue 1: Did the Examiner err in finding claims 12, 13, and 16 are
directed to non-statutory subject matter?
The Examiner finds claim 12 recites a "tangible computer-readable
medium," but Appellants' disclosure in the Specification defines the claimed
tangible computer-readable medium as an open ended list that includes
magnetic storage medium and optical storage medium, and thus fails to limit
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Application 12/550,266
the claim to only non-transitory tangible media. (Ans. 3--4, citing Spec.
i-f 99). The Examiner finds the modifier "tangible" does not clearly exclude
a transitory propagating signal embodiment. (Ans. 3).
Appellants argue "the term 'tangible' is used to differentiate
patentable subject matter under§ 101 from 'intangible' subject matter that is
not patentable under§ 101." (Reply Br. 3).
We do not agree with Appellants' argument. We agree with the
Examiner's finding that Appellants' Specification does not exclude
transitory propagating signal embodiments. In particular, Appellants'
Specification states "[a] computer-readable storage medium may include any
mechanism for storing information in a form (e.g., software, processing
application) readable by a machine (e.g., a computer). The machine-
readable storage medium may include, but is not limited to . .. " (Spec. i-f 99,
emphasis added). Because Appellants' Specification does not expressly
exclude transitory signals from the tangible computer-readable medium) we
give "tangible cmnputer-readable medium~' its broadest reasonable
interpretation as covering both forms of non-transitory tangible rnedia and
transitory propagating signals per se. Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential). While including "non-transitory" in the
recitation is a viable option for overcoming the presumption that the media
encompasses signals or carrier waves, merely indicating that such media are
physical or tangible will not overcome such presumption. S'ee U.S. Patent &
Tradenwrk Office, Evaluating Suf?ject A1atter E'l(rz,ibility Under 35 USC §
101(August2012 Update) (pp. 11-14), available at http://
www.uspto.gov/patents/law/exam/10l_training_aug2012.pdf at 14.
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Application 12/550,266
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 12, 13, and 16.
35 U.S.C. § 103(a) rejections
Issue 2: Did the Examiner err in finding the combination of Larsen
and Anami teaches or suggests "wherein each frame is associated with an
identifier of the frame and at least some of the frames represent sub-
operations of a single image editing operation defined by a single interaction
with the image editing application" as recited in independent claim 1?
The Examiner finds Larsen captures image data representing a
sequence of frames when it records a video sequence that provides an
animation of a command being applied to a CAD drawing. (Final Act. 6,
citing Larsen i-fi-128, 37). The Examiner also finds that "although Larsen is
silent to 'frames', it is well known in the art of animation that a sequence of
frames makes an animation." (Ans. 6). Further, the Examiner finds that
because the video sequence is recorded while the command is executed, the
recorded frames between the start and end of the command teach the
claimed sub-operations of the image editing operation. (Ans. 6, citing i-fi-123,
28, 37, Fig. 5; see also Final Act. 2-3, 6).
Appellants contend the Examiner improperly relies upon hindsight.
(App. Br. 12). Appellants further contend that Larsen "makes no mention of
'sub-operations of a single image editing operation' being included in
Larsen's 'animated sequence of images"' and that there is no discussion in
Larsen of "frames [that] represent sub-operations of a single image editing
operation defined by a single interaction with the image editing application."
(App. Br. 12-13; Reply Br. 5).
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Application 12/550,266
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings. (Final Act. 2-3, 6-7; Ans. 5---6). We note Appellants
do not explicitly define what is meant by a "sub-operation" in the
Specification. Under the broadest reasonable interpretation, we find the
disputed limitation is taught or suggested by the frames of Larsen's
animation. In particular, Larsen describes recording a video snapshot to
capture changes that occur to an image while a command (e.g., "fill") is
executed. (Larsen i-fi-123, 28, 37, Fig. 5). Commands previously executed
may be stored in a command history, which includes command records. (Id.
i122). Each command record may include one or more snapshots. (Id.). In
other words, each command is represented by a video snapshot, i.e., an
animated sequence of images illustrating the effect of the command. (Id.
i123). We agree with the Examiner's findings that the recorded frames in
the animation between the start and end of the command teach or suggest
"sub-operations of a single image editing operation defined by a single
interaction with the image editing application" as recited in independent
claim 1.
Further, although Appellants contend that the Examiner's findings are
no more than impermissible hindsight, this contention is not persuasive
because Appellants do not identify, nor do we discern, any knowledge that
the Examiner relied upon that was gleaned only from Appellants' disclosure
and that was not otherwise within the level of ordinary skill at the time of the
invention.
Accordingly, we are not persuaded the Examiner erred in finding
Larsen teaches or suggests the disputed limitation.
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Appeal2014-006474
Application 12/550,266
Issue 3: Did the Examiner err in finding the combination of Larsen
and Anami teaches or suggests "displaying at least a portion of the sequence
of frames, based on the stored data such that the at least some of the frames
are individually displayable to display the single image editing operation as
a sequence of the sub-operations of the single image editing operation" as
recited in independent claim 1?
The Examiner finds "Larsen fails to specifically disclose displaying at
least some of the sub-operations frames individually." (Final Act. 8). The
Examiner relies on Anami' s operation panel for displaying the image of a
graphic at respective process steps. (Final Act. 8, citing Anami Fig. 5, i-fi-1 62,
66, 67; Ans. 7). The Examiner finds "it would have been obvious to one of
ordinary skill in the art to modify the display of Larsen with the operation
panel of Anami in order to control the display of the video sequence of
Larsen[, so that] the user could use the buttons to display a step by step
sequence of the video sequence of Larsen." (Final Act. 8).
Appellants contend "Anami discusses that images of a graphic can be
displayed at different steps of a multi-step process for visually adjusting the
graphic[, but] Anami makes no mention ... of 'sub-operations,' much less
'frames [that] are individually displayable to display the single image editing
operation as a sequence of the sub-operations of the single image editing
operation[.]" (App. Br. 15).
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings. (Final Act. 8; Ans. 6-7). As discussed supra, we
agree with the Examiner that Larsen's animation teaches or suggests the
claimed "sub-operations." Similarly, Anami describes its adjustment
procedure as an "animation showing respective processes stepwise."
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Appeal2014-006474
Application 12/550,266
(Anami if 66). Anami's operation panel is used to display the image of a
graphic at respective process steps. (Id.) We therefore agree with the
Examiner that the combination of Larsen and Anami teaches or suggests
displaying at least some of the frames (i.e., steps) individually as recited in
the claim. That is, Appellants' arguments regarding Anami do not
persuasively take into account what the coUecti ve teachings of the prior art
would have suggested to one of ordinary skill in the art and are therefi..1re
ineffective to rebut the Examiner's prima facie case of obviousness. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Additionally, we find that the
Examiner has articulated how the claimed features are met by the proposed
combination of the reference teachings with some rational underpinning
consistent with the guidelines stated in KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398 (2007). Appellants have not pointed to any persuasive reason,
supported by sufficient facts, explaining why the combined functionality of
Anami' s display panel with Larsen as described by the Examiner would not
result in the features recited in claim 1.
Accordingly, for the reasons set forth above, we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1. Appellants
present the same arguments with respect to the "capturing ... " and
"displaying ... " limitations of independent claim 17, which we do not find
persuasive for the same reasons as set forth above, and therefore we sustain
the Examiner's 35 U.S.C. § 103(a) rejection of claim 17. (App. Br. 16-20).
Appellants do not provide separate substantive arguments for dependent
claims 2-5, 7-11, 19, and 21-25, so the Examiner's 35 U.S.C. § 103(a)
rejection of these claims is sustained for the same reasons. (App. Br. 15-16,
18, 20-21).
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Application 12/550,266
Issue 4: Did the Examiner err in finding the combination of Larsen
and Anami teaches or suggests "displaying ... such that the single user
interaction is displayed in reverse order as a series of sub-operations" as
recited in in independent claim 12?
Appellants make similar arguments as with respect to claim 1, and
further contend the references do not teach or suggest the disputed
limitation. We are not persuaded for the same reasons as discussed with
respect to claim 1. Further, as discussed supra, the Examiner relies on
Anami' s operation panel for displaying the image of a graphic at respective
process steps. (Final Act. 9-10; Ans. 8-9). We agree with the Examiner
that the R button on Anami's operation panel (Anami i-f 67, Fig. 5) permits
the user to view the previous process step, in other words, to view the
animation in reverse order. (Ans. 9).
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of independent claim 12. Appellants do not provide separate substantive
arguments for dependent claims 13 and 16, so the Examiner's 35 U.S.C.
§ 103(a) rejection of these claims is sustained for the same reasons. (App.
Br. 18).
DECISION
The Examiner's 35 U.S.C. § 112 rejection of claims 22 and 23 is
affirmed.
The Examiner's 35 U.S.C. § 101 rejection of claims 12, 13, and 16 is
affirmed.
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Appeal2014-006474
Application 12/550,266
The Examiner's 35 U.S.C. § 103(a) rejections of claims 1-5, 7-13,
16, 1 7, 19, and 21-25 are 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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