Ex Parte Jung et al

Patent Trial and Appeal Board

Nov 25, 2013

11901240 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/901,240 09/13/2007 Edward K.Y. Jung SE1-1067-US 4563
80118 7590 11/26/2013
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
VILLECCO, JOHN M
ART UNIT PAPER NUMBER
2661
MAIL DATE DELIVERY MODE
11/26/2013 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 2012-004260
Application 11/901,240
Technology Center 2600
____________________

Before THU A. DANG, JAMES R. HUGHES, and
JEFFREY S. SMITH, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Pursuant to 37 C.F.R. § 41.52, Appellants filed a Request for
Rehearing (Req. Reh’g)1 alleging a misapprehension or oversight by this
Board in a Decision on Appeal mailed September 3, 2013. In that Decision
the Board affirmed the Examiner’s rejection of claims 72, 73, 75-99, 101,
103, 104, and 106 under 35 U.S.C. § 103(a).

1 We refer to Appellants’ Request for Rehearing (“Req. Reh’g.”) filed
November 4, 2013; Appeal Brief (“Br.”) filed July 27, 2011; Supplemental
Appeal Brief (“Supp. App. Br.”) filed October 10, 2011; and our Decision
on Appeal (“Dec.”) mailed September 3, 2013.
Appeal 2012-004260
Application 11/901,240

2

ANALYSIS
In a Request for Rehearing received November 4, 2013, Appellants
contend that: 1) the Board’s claim interpretation impermissibly broadened
the claims (Req. Reh’g. 2-4); 2) the Board’s claim interpretation constitutes
an improper new ground of rejection (Req. Reh’g. 4-5); and 3) the Board’s
and the Examiner’s findings fail to meet the “KSR Standard” (Req. Reh’g.
5-6).
We have carefully reviewed the Decision in light of Appellants’
allegations of error. We find Appellants’ contentions to be without merit
and we decline to make any substantive change to our Decision.
With respect to Appellants’ first point of error, Appellants contend
that the Board misapprehends or misconstrues “sending a request” (claim
72), in that:
The Board has alleged that the claimed “request” is
essentially generic, unbounded by the words of the claim
following it . . . . In reading those words out of the claim, the
Board manufactured a way to avoid the reality that the cited
portions of the Cragun reference describe only requests for
“permission” and a “request to register” with an ad hoc network
. . . .
. . . . The difference between the specific request of the
claims and the two types of requests in Cragun is ignored by the
Board through its interpretation. The Board justifies this
broadening of the claim to make it appear closer to Cragun by
asserting that the ignored words are “statements of intended
use” and “non-functional descriptive language.” Both of these
assertions are incorrect.
(Req. Reh’g. 3.) As indicated in the Decision, the Board broadly but
reasonably interpreted the claim language – “sending a request from a
second image capture device to a first image capture device” (claim 72) – as
Appeal 2012-004260
Application 11/901,240

3

sending data between devices (from a second device to a first device). (Dec.
7-8.) The Board further broadly but reasonably interpreted the claim
language – “for the first image capture device to send a first image to the
second image capture device” (claim 72) – as “functional” language1
relating an intended purpose of the data (request) to be sent between devices,
i.e., what the data ultimately causes to happen. (Dec. 6-8.)
Contrary to Appellants’ arguments, the Board did not broaden the
claim – we merely interpreted it giving the claim language its “broadest
reasonable interpretation consistent with the [S]pecification” in accordance
with our mandate that “claim language should be read in light of the
[S]pecification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations and internal quotation marks omitted). Appellants chose to draft
the claim such that the distinction over the prior art lies in the data contained
in the request and its purpose, the Board simply clarified the breadth of the
claim language. Although Appellants make several additional arguments
concerning the Board’s interpretation, statements of intended use or purpose,

1 The “sending” of “a first image to the second image capture device” from
“the first image capture device” (claim 72) (the “second sending”) is not
affirmatively recited in the claim and, therefore, is functional in nature – it is
not a positively recited method step. Here, the second sending need not
actually occur – only the sending of the request (the purpose of which is to
request the second sending). While claims are not necessarily indefinite for
using such functional language, where a claim fails “to provide a clear-cut
indication of the scope of subject matter embraced by the claim,” the claim
may run afoul of § 112, second paragraph. Halliburton Energy Servs. v. M–I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (citation and internal quotation
marks omitted).
Appeal 2012-004260
Application 11/901,240

4

and non-functional descriptive material (Req. Reh’g. 3-4), none of these
arguments persuade us that we misapprehended any points of law or fact in
our original Decision.
With respect to Appellants’ second point of error, Appellants contend
that the Board’s claim interpretation constitutes an improper new ground of
rejection. (Req. Reh’g. 4-5.) It is well-established that the Board may
affirm an examiner’s rejection so long as appellants have had “a fair
opportunity to react to the thrust of the rejection.” In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (quoting In re Kronig, 539 F.2d 1300, 1302–03
(CCPA 1976)) (internal quotation marks omitted). See In re Adler, 723 F.3d
1322, 1328 (Fed. Cir. 2013). Appellants’ misconstrue the relevant law.
As explained in the Decision, Appellants, in their Appeal Brief,
merely argued that the claims differed from Cragun and Bates, and chose not
to provide any detailed explanation of this difference. (Dec. 9-10.) The
Board understood Appellants to argue that the claims should be read to
distinguish the recited method from the prior art because of the data
contained in the request. In response to this argument, the Board provided
its detailed interpretation of the claim (Dec. 6-8) as well as explaining the
Examiner’s findings that Cragun broadly describes sending a request to
share images and ultimately sharing images if a device joins the network
(Dec. 8). The Board’s claim interpretation and thorough response did not
change the thrust of the Examiner’s rejection and Appellants had a fair
opportunity to respond. Thus, Appellants have not specifically explained
how we “misapprehended” the relevant law and, therefore, have not pointed
out any particular points overlooked or misapprehended by the Board in its
Decision.
Appeal 2012-004260
Application 11/901,240

5

With respect to Appellants’ third point of error, Appellants contend
the Board’s (and the Examiner’s) findings fail to meet the “KSR Standard.”
(Req. Reh’g. 5-6.) Here, Appellants merely reiterate the arguments made in
their Appeal Brief (Br. 36-37) in their Request for Reconsideration (Req.
Reh’g. 5-6). Specifically, Appellants contend that the Examiner’s rationale
for combining Cragun and Bates “is a conclusory statement that falls short
of the required ‘articulated reasoning with some rational underpinning’ of
KSR.” (Req. Reh’g. 6.) As we explained in our Decision, the Examiner
provided a proper rationale in that the combination improved functionality,
which we found to have “some rational underpinning.” (Dec. 9.) We
further explained that one skilled in the art would have been able to combine
the techniques taught by Bates, authenticating a device utilizing a captured
image, and the techniques taught by Cragun, sharing images among devices
attached to a network. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Again, Appellants have not specifically explained how we
“misapprehended” the relevant law and, therefore, have not pointed out any
particular points overlooked or misapprehended by the Board in its Decision.
For these reasons, we find Appellants’ arguments unpersuasive of error,
either in our Decision or the Examiner’s rejection, and we decline to modify
our Decision.

CONCLUSION
In view of the foregoing discussion, we deny Appellants’ request for
rehearing. We decline to modify our original Decision.

REQUEST FOR REHEARING – DENIED
Appeal 2012-004260
Application 11/901,240

6

msc