Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 23, 2016

11510139 (P.T.A.B. Aug. 23, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/510,139 08/25/2006 Edward K. Y. Jung SE1-0481-US 4989
80118 7590 08/23/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
TREHAN, AKSHAY
ART UNIT PAPER NUMBER
2663
MAIL DATE DELIVERY MODE
08/23/2016 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 EDWARD K. Y. JUNG, ROYCE A. LEVIEN, ROBERT W.
LORD, MARK A. MALAMUD, and JOHN D. RINALDO, JR.
____________

Appeal 2015-000441
Application 11/510,139
Technology Center 2600
____________

Before MAHSHID D. SAADAT, JOHN A. EVANS, and ALEX S. YAP,
Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Non-final
Rejection of claims 1, 4, 6–8, 10–13, 15–26, 29, 33–35, 45–68, 72, and 73,
which are all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Searete, LLC (Br. 4).
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STATEMENT OF THE CASE
Appellants’ invention relates to methods and devices for processing
captured image data (Abstract). Exemplary claim 1 under appeal reads as
follows:
1. A composite image selection method comprising:
obtaining access to a collection of captured images;
providing a computerized user-interface that is capable of
display of a representation of various visual elements that are
part of a captured image from the collection such that the
representation of various visual elements can be viewed from
multiple locations on the display;
allowing a user to have viewing access to the display of
the representation of various visual elements in order to make a
selection of a possible component element to be incorporated as
part of a composite work, the possible component element
available for selection is indicated at least partially by a tactile
indication;
providing an input technique that enables an
identification of the user's selection of the possible component
element; and
establishing a record of the selection made by the user,
which record facilitates future availability of the selection.

The Examiner rejected claims 1, 4, 6–8, 10–13, 15–26, 29, 33–35, 45–
51, 53–63, and 65–68 under 35 U.S.C. § 103(a) as unpatentable over Adobe
(Adobe Photoshop 5.0 User Guide, 1998), Shimizu (US 2004/0119841 A1;
published June 24, 2004), and Meissner, II (US 7,196,317 B1; issued Mar.
27, 2007) (see Final Act. 6–32).
The Examiner further added Steinberg (US 6,750,902 B1; issued June
15, 2004) to reject claims 52 and 64 (see Final Act. 32); Pierson (US
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2006/0226298 A1; published Oct. 12, 2006) to reject claims 69, 72, and 73
(see Final Act. 33–38); Frohlich (US 2004/0037540 A1; published Feb. 26,
2004) to reject claim 70 under 35 U.S.C. § 103(a) (see Final Act. 38).2

ANALYSIS
In rejecting claim 1, the Examiner relies on Adobe as disclosing the
recited method steps and further finds Shimizu teaches a composite work
made from various visual elements is viewed from multiple location (Final
Act. 6–8 (citing Fig. 16, ¶¶ 72–84, 93, 94)). The Examiner finds Meissner
teaches the claimed “tactile indication” as a user interface including “haptic
elements such as tactile stimulus or vibrator” (Final Act. 5–6 (citing
Meissner col. 17, l. 56 – col. 18, l. 39)). The Examiner further finds it would
have been obvious to one of ordinary skill in the art to combine the
teachings of Shimizu and Meissner with Adobe in order to enhance the
image by post image processing and using a tactile user interface (see Final
Act. 8–9).
Appellants argue the proposed combination does not teach or suggest
“allowing a user to have viewing access to the display of the
representation of various visual elements in order to make a selection of
a possible component element to be incorporated as part of a composite
work” because the Examiner has used incorrect claim interpretation and

2 The rejection of claims 45–49 and 64–66 under 35 U.S.C. § 101 (see Final
Act. 4–5) is not repeated or addressed in the Examiner’s Answer. Any
rejection not repeated and discussed in the answer may be taken by the
Board as having been withdrawn. Ex Parte Emm, 118 USPQ 180 (Bd. App.
1957).
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improper mapping of claim elements to the cited portions of Adobe (Br. 16–
23). The Examiner explains that “visual element/component element”
includes “any visual image effect/parameter that can be applied to an image”
and that “composite work” includes “any image which is made up of a
plurality of applied visual image effects/parameters to the pixels within the
image” (Ans. 3). Appellants’ contention is not persuasive of Examiner
error. We agree with the Examiner’s interpretation of the claim terms and
findings regarding the image effect or parameters, such as contrast, color,
and luminance, which a user adjusts by selecting a button or moving a slide
bar (see id.).
Acknowledging that Adobe provides for editing an image by adding
elements that are on different layers, Appellants contend “allowing a user to
have viewing access to the display of the representation of various visual
elements in order to make a selection of a possible component element
to be incorporated as part of a composite work” is not taught or suggested
by Adobe (Br. 31–32). In response, the Examiner restates specific findings
with respect to Adobe and Meissner and explains that Adobe’s different
ways to edit an image allows a user to select edit components to be included
in a composite work (Ans. 3–5). We agree with those findings and adopt
them as our own.
Appellants further contend the proposed combination is improper and
based on unsupported conclusions and the Examiner has not provided an
objective rationale (Br. 32–39). Regarding the modifications made to
Adobe, Appellants contend “if the cited portions of Adobe Photoshop 5.0
User Guide (NPL) were modified and/or combined to cure the
aforementioned deficiencies,” an impermissible change in the principle of
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operation of Adobe would be required (Br. 39). Appellants cite to different
parts of Adobe and further contend the proposed modifications would render
Adobe unfit for its intended purpose (Br. 40–44).
Regarding the alleged change in the principle of operation of Adobe
or whether the proposed modifications would render Adobe unfit for its
intended purpose, we also agree with the Examiner’s findings and
explanation (see Ans. 5–6) and adopt them as our own. As explained by the
Examiner, “[t]he intended purpose of both Adobe and Shimizu is to provide
a user-interface for editing/retouching an image” wherein “[t]he finalized
image consists of a collection/composite of user-edited visual
effects/parameters which form a composite work” (id.).
We also agree with the Examiner’s findings with respect to the stated
reason as to why one of ordinary skill in the art would have combined the
composite image editing of Adobe and Shimizu with the tactile indication of
Meissner (see Final Act. 8–9). Consistent with the guidelines stated in KSR
International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Examiner
identifies (id.) improvements made by the combination for enhancing image
adjustment or editing for a user. Indeed, the Supreme Court has indicated
that:
[It is error to] assum[e] that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem. . . . Common sense teaches
. . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted). Therefore, the Examiner has
articulated how the claimed features are suggested by the proposed
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combination of the reference teachings with some rational underpinning.
See KSR, 550 U.S. at 418.
For the above-stated reasons, we are not persuaded by Appellants’
arguments that the Examiner erred in finding the combination of Adobe,
Shimizu, and Meissner teaches or suggests the disputed features of claim 1.
Therefore, we sustain the 35 U.S.C. § 103(a) rejection of independent claim
1, and claims 4, 6–8, 10–13, 15–26, 29, 33–35, 45–68, 72, and 73 that are
not argued separately or with sufficient specificity (see Br. 44–47).

DECISION
We affirm the decision of the Examiner to reject claims 1, 4, 6–8, 10–
13, 15–26, 29, 33–35, 45–68, 72, and 73.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED