Ex Parte Hoppenot et al

Patent Trial and Appeal Board

Mar 22, 2018

12976196 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/976,196 12/22/2010
62095 7590 03/23/2018
FAY SHARPE I XEROX - ROCHESTER
1228 EUCLID A VENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Yves Hoppenot
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.
20101105USNP-XER2576US01 6988
EXAMINER
MUELLER, KURT A
ART UNIT PAPER NUMBER
2157
MAILDATE DELIVERY MODE
03/23/2018 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 YVES HOPPENOT, TOMMASO COLOMBINO,
LUCA MARCHESOTTI, GABRIELA CSURKA, and
GREGOIRE GERARD
Appeal2017-009200
Application 12/976,196 1
Technology Center 2100
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-12 and 14--28, which constitute all of the claims pending in this
application. Claims 13 and 29 have been allowed. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the Applicant, Xerox Corporation, which is identified in the
Appeal Brief as the real party in interest. App. Br. 1.
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Application 12/976,196
THE INVENTION
The disclosed and claimed invention is directed to "image retrieval"
with "particular application in connection with a computing system in which
one or more tangible objects are used to represent a search query."
Spec. i-f 1. 2
Claim 1, reproduced below with the relevant language emphasized, is
illustrative of the claimed subject matter:
1. A system for developing a query comprising:
a display device for displaying elements which are
selectable as query elements for forming a query, the selectable
elements comprising graphical elements;
a physical space on the display in which a physical object
is positionable;
the physical object being positioned in the physical space
as a physical representation of the query and which is recognized
as having an identifier stored in memory;
a position sensor for detecting a physical manipulation of
the physical object in the physical space which represents
absorbing one of the displayed selectable graphical elements as
a query element into the query, the physical manipulation
detected including at least one of positioning of the physical
object on the displayed graphical element and the movement of
the physical object over the displayed graphical element;
a query generator for generating the query based on the
absorbed query element, the query being associated in memory
with the identifier for the physical object, the query being
formulated for conducting a search in a database of visual assets
2 We refer to the Specification filed Dec. 22, 2010 ("Spec."); Final Office
Action mailed Nov. 8, 2016 ("Final Act."); Appeal Brief filed Feb. 8, 2017
("App. Br."); Supplemental Appeal Brief (with Claims Appendix) filed Mar.
1, 2017 ("Supp. App. Br."); Examiner's Answer mailed May 30, 2017
("Ans."); and the Reply Brief filed June 12, 2017 ("Reply Br.").
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Application 12/976,196
selected from images and color palettes and displaying the visual
assets retrieved from the database as being responsive to the
generated query.
Supp. App. Br., Claims Appendix, 21.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Gedik et al. US 2005/0096841 Al May 5, 2005
(hereinafter "Gedik")
Satou US 7,839,300 B2 Nov. 23, 2010
Todd Bishop, Microsoft Surface brings computing to the table
(May 29, 2007, 10:00 PM),
https ://www.seattlepi.com/business/ article/Microsoft-Surface-
brings-computing-to-the-table-1238947. php (hereinafter
"Bishop").
REJECTIONS
Claims 1---6, 8-12, and 14--28 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Bishop and Gedik. Final Act. 4--16. 3
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Bishop, Gedik, and Satou. Final Act. 16.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
3 The Final Action denotes claims 1---6, 8-12, and 14--27 standing rejected
over Bishop and Gedik. However, the body of the rejection includes claim
28. Compare, Final Act. 4, with id. at 14--15.
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Application 12/976,196
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant's arguments regarding the pending claims.
The Examiner finds Bishop's computer recognizing an object placed
on a display screen and a physical manipulation of the object on the display
screen, where the display includes images, teaches the claimed "a query
generator for generating the query based on the absorbed query element, the
query being associated in memory with the identifier for the physical object,
the query being formulated for conducting a search in a database of visual
assets selected from images and color palettes and displaying the visual
assets retrieved from the database as being responsive to the generated
query." Final Act. 5---6. The Examiner finds Bishop's table "allows for the
interaction of physical objects and electronic information, and by the user's
action, allows for the context sensitive actions based on the particular
physical object and the particular electronic information." Ans. 5.
Appellant argues that none of Bishop's functions based on detectable
objects (photographs callable by placing a card on a table, icons selectable
by placing a phone on the table, or alphanumeric information selectable by
placing a credit card on the table) teaches or suggests the claimed displaying
of selected visual assets in response to generating a query based on the
absorbed query element. App. Br. 11-12; Reply Br. 17.
We are persuaded by Appellant's argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Bishop teaches the query generator as recited in claim 1.
The cited sections of Bishop (Final Act. 5---6) teach recognizing
"objects placed on the surface," including "plac[ing] a card on the table to
call up a virtual stack of digital photos" that can be rotated, realized, and
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Application 12/976,196
spread, and "dragging icons of [diners'] meals to their credit cards." Bishop
1. However, the sections of Bishop cited by the Examiner and on the record
before us do not teach any details of a query generator or the function of
generating a query. Therefore, we agree with Appellant that the Examiner's
finding that Bishop teaches the disputed limitation is in error because it is
not supported by a preponderance of the evidence. See In re Caveney, 761
F.2d 671, 674 (Fed. Cir. 1985) (Examiner's burden of proving non-
patentability is by a preponderance of the evidence); see also In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.").
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103 rejection ofclaim 1, along with the§ 103 rejection of
claims 16 and 24, which recite limitations commensurate in scope to the
disputed limitation discussed above, and dependent claims 2---6, 8-12, 14,
15, and 17-28. Because we agree with at least one of the arguments
advanced by Appellants, we need not reach the merits of Appellants' other
arguments.
Moreover, because the Examiner has not shown that the additional
references cure the foregoing deficiency regarding the rejection of the
independent claims 1, we will not sustain the obviousness rejection of
dependent claim 7.
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DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1-12 and 14--28.
REVERSED
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