Ex Parte Holton et al

Patent Trial and Appeal Board

Mar 23, 2018

14925880 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/925,880 10/28/2015
63649 7590 03/27/2018
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Michael Holton
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.
0260142Cl 2512
EXAMINER
SHEN,QUN
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HOLTON, CLIFFORD WONG, and
JONATHAN M. ACKLEY
Appeal2017-009228
Application 14/925,880
Technology Center 2600
Before JEAN R. HOMERE, BETH Z. SHAW, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 21--40, which constitute all claims pending in this application. App.
Br. 2. Claims 1-20 have been canceled. Claims App'x. We have
jurisdiction under 35 U.S.C. § 6(b ). 1
We affirm.
1 Appellants identify the real party in interest as Disney Enterprises, Inc., a
wholly owned subsidiary of The Walt Disney Company. App. Br. 2.
Appeal2017-009228
Application 14/925,880
Introduction
According to Appellants, the claimed subject matter is directed to a
multimedia unit (140) with remote triggering to capture a video containing a
still image. Spec. 5:2-3, 7:10-16, Fig. 1. In particular, upon receiving a
request to capture the still image, a recording element is activated to record
the video containing the still image, wherein the video spans a window
starting before and ending after the still image. Id. at 8:9-9:9. The still
image is subsequently extracted from the captured video for subsequent
display. Id. at 9: 10-16.
Representative Claim
Independent claim 21 is representative, and reads as follows:
21. A method comprising:
providing a multimedia unit having a memory and a recording
element configured to capture still images and videos;
receiving, using the recording element; a triggering signal to take a
still image; and
capturing, using the recording element, the still image and a video
containing the still image, in response to the receiving of the triggering
signal to take the still image, wherein the video spans a window starting
before and ending after the still image.
Prior Art Relied upon
McNitt et al. US 2002/0115047 Al Aug. 22, 2002
Sayers
Torres
US 2004/0008263 Al Jan. 15 2004
US 6,714,192 Bl Mar. 30, 2004
Rejections on Appeal
Claims 21-23, 25-29, 31-35, and 38--40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Torres and
Sayers. Final Act. 3-7.
2
Appeal2017-009228
Application 14/925,880
Claims 24, 30, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination Torres, Sayers, and McNitt. Final
Act. 8.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 6-10, and the Reply Brief, pages 2--4. 2 We are
unpersuaded by Appellants' contentions.
First, Appellants argue that the combination of Torres and Sayers does
not teach or suggest "capturing, using the recording element, the still image
and a video containing the still image, in response to the receiving of the
triggering signal to take the still image," as recited in independent claim 21.
App. Br. 7. In particular, Appellants argue that Torres discloses a
multimedia unit including a single double button containing a video
recording button and a still image recording button, which, when pressed as
a unit, operates the video and still picture functions simultaneously. Id. at 6
(citing Torres 2:13-16, 4:2-5, Fig. 4e). Alternatively, when the buttons in
the single double button are pressed individually, they can separately capture
a video, and a still picture in the order they were pressed. Id. at 7 (citing
Torres 1, 2a, 2b, 3a, and 3b). According to Appellants, although Torres'
disclosure of pressing the single double button causes the simultaneous
recording of both the video and the still image, Torres does so by pressing
2 Rather than reiterate all the arguments of Appellants and all the Examiner's
findings, we refer to the Appeal Brief (filed February 15, 2017), the Reply
Brief (filed June 15, 2017), and the Answer (mailed April 20, 2017) ("Ans.")
for the respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants 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
Appeal2017-009228
Application 14/925,880
two separate buttons simultaneously, whereas the claimed invention requires
recording the video and the still image in response to a triggering signal to
take the still image. Id. Additionally, Appellants argue the Examiner's
reliance upon Sayer's disclosure of a video camera for recording and storing
images digitally on an electronic storage does not cure the noted deficiencies
of Torres. Id. at 8.
These arguments are not persuasive. At the outset, we note
Appellants do not contest the Examiner's construction of "recording
element," under the broadest reasonable interpretation as a video camera
capable of capturing simultaneously a video and a still picture. Ans. 4. We
further note that while the disputed recitation requires capturing both the
video and the still image in response to receiving a signal to take the still
image, the disputed limitation does not preclude receiving more than one
signal. Accordingly, we conclude that the disputed limitation can be
reasonably construed as a video camera capturing a still image and a video
image in response to a signal to take the still image and another signal to
take the video image. As correctly noted by the Examiner, Torres'
disclosure of operating the video camera in video/still picture dual mode by
pressing the single double button teaches the disputed limitation. In other
words, even if the disclosed dual mode operation includes both a still image
signal and a video signal, it suffices that Torres discloses issuing the still
image signal and captures the still picture and video to teach the disputed
limitations.
Second, we find untimely Appellants' argument that Torres' still
image is not contained in the captured video. Reply Br. 2-3. Belated
arguments are technically waived. See Ex parte Borden, 93 USPQ2d 1473,
4
Appeal2017-009228
Application 14/925,880
1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not."). 3
Accordingly, we are not persuaded of error in the Examiner's
obviousness rejection of claim 21.
Regarding the rejection of claims 22--40, because Appellants have
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claim 1 above, those claims fall therewith. See 37 C.F.R.
§ 41.37(c)(l)(vii).
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
21--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
3 We note in passing that one of ordinary skill in the art would have readily
appreciated that Torres' disclosure of capturing a video also teaches
capturing still pictures contained therein because a video generally includes
a plurality of still images (video frames) juxtaposed one next another to
create a sequence of movements.
5