Ex Parte Kim

Patent Trial and Appeal Board

Jun 22, 2017

13270372 (P.T.A.B. Jun. 22, 2017)

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.
13/270,372 10/11/2011 Na-young Kim P3806US 8685
8968 7590 06/26/2017
DRINKER BIDDLE & REATH LLP
ATTN: PATENT DOCKET DEPT.
191 N. WACKER DRIVE, SUITE 3700
CHICAGO, IL 60606
EXAMINER
PETERSON, CHRISTOPHER K
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
DB RIPDocket @ dbr. com
IPDockets @ dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NA-YOUNG KIM1
Appeal 2017-004498
Application 13/270,372
Technology Center 2600
Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the Final
Rejection of claims 19, 21—23, 26—29, and 32—35.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection.
1 Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest. App. Br. 2.
2 Claims 1—18, 20, 24, 25, 30, and 31 were previously cancelled. App. Br. 2.
Appeal 2017-004498
Application 13/270,372
INVENTION
The invention is directed to a digital image photographing apparatus
and method of controlling the same. Spec. 1. Claim 19 is illustrative and is
reproduced below:
19. A method of controlling a digital image photographing
apparatus including a touch screen, the method comprising:
generating a live view image corresponding to an image
signal from an optical unit and an image pick up unit;
displaying the live view image on the touch screen; and
selectively performing a single photographing operation to
generate a captured still image or successive photographing
operations to generate a plurality of captured still images
according to a detected touch duration on the touch screen, by
either determining that the touch detected on the touch screen
continues for longer than a first time period and performing the
single photographing operation, or determining that the touch
detected on the touch screen continues for a second time period
longer than the first time period and performing the successive
photographing operations until the touch is released to generate
the plurality of captured still images when the touch detected on
the touch screen continues for the second time period,
wherein the plurality of captured still images generated by
the successive photographing operations are recorded as a
plurality of still image files, respectively.
Lindahl et al.
Onoda
REFERENCES
US 2011/0058056 Al Mar. 10, 2011
US 2010/0201835 Al Aug. 12, 20103
3 The Examiner’s statement of rejection incorrectly cites the Onoda
reference as US 2004/0027467.
2
Appeal 2017-004498
Application 13/270,372
REJECTION AT ISSUE
Claims 19, 21—23, 26—29, and 32—35 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Onoda and Lindahl. Final
Act. 2-10.
ISSUES
Did the Examiner err in finding that the combination of Onoda and
Lindahl teaches or suggests “selectively performing a single photographing
operation to generate a captured still image ... by either determining that the
touch detected on the touch screen continues for longer than a first time
period and performing the single photographing operation” as recited in
claim 19?
Is claim 19 patentable over the prior art of record?
ANALYSIS
Appellant argues that “the whole point of Onoda is to adaptively set a
continuous shooting speed based on detected movement” (App. Br. 8—9),
and Onoda “never discusses a single shooting mode” (Reply Br. 4).
Appellant contends Onoda’s continuous shooting process acquires still
images at 20 frames per second and sequentially records the still images,
which is the opposite of performing a “single photographing operation.”
Reply Br. 4 (citing Onoda 151).
3
Appeal 2017-004498
Application 13/270,372
We are persuaded by Appellant’s arguments. However, Chen4 teaches
“performing a single photographing operation to generate a captured still
image” by determining that a touch detected on a touch screen continues for
a specific duration, such as three seconds. Fig. 2A; || 20-24. Onoda
teaches that repeating the photographing operation until a shutter button is
released was within the level of ordinary skill in the art. Fig. 3, steps 108
and 109; 1 53.
Performing a single photographing operation by determining a
duration of a touch as taught by Chen, then repeating the operation until the
touch is released as taught by Onoda, represents the predictable use of prior
art elements according to their established functions that does no more than
yield the predictable result of selectively performing a single photographing
operation or successive photographing operations according to a detected
touch duration on the touch screen. See KSR Int 7 Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007); Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1330 (Fed. Cir. 2009) (evidence of “common sense reasoning
appears in the record, namely the facts that step (D) merely involves
repeating earlier steps, and that [a person of ordinary skill] could repeat
those steps, if desired”).
On Page 4 of the Final Action mailed May 6, 2014, the Examiner
cited Chen (PCT/CN08/730037 or WO 2010/000118 Al, published Jan. 7,
2010), and used Chen (US 2011/0075012 Al, published Mar. 31, 2011), the
4 WO 2010/000118 Al, published Jan. 7, 2010 was previously cited by the
Examiner. Citations are to the English language equivalent, US
2011/0075012 Al, published Mar. 31, 2011,
4
Appeal 2017-004498
Application 13/270,372
national stage application of the PCT and presumed to be the same, as a
translation.
In the current rejection of claim 19, the Examiner did not cite Chen’s
teaching of performing a single photographing operation after determining a
duration of a touch. Thus, we modify the Examiner’s rejection for
independent claims 19, 23, 29, and 35 to incorporate the teachings of Chen
and Onoda, and label this as a new ground of rejection.5
We adopt the Examiner’s uncontested findings of fact as our own.
We find that “wherein the touch is detected on an area of the touch screen
where the live view image is displayed,” as recited in claim 21, is taught by
Chen’s description of the photographing procedure that is performed as long
as the user keeps touching the focus frame 12A on the touch screen 12.
Chen || 20, 24, and Figs. 1, 2A. Because the Examiner did not rely on Chen
to teach the claimed touch “detected on an area of the touch screen where
the live view image is displayed,” we modify the Examiner’s rejection for
dependent claims 21, 26, and 32.
Accordingly, we reject claims 19, 21—23, 26—29, and 32—35 under 35
U.S.C. § 103(a) as being unpatentable over Chen and Onoda.
DECISION
The Examiner’s decision to reject claims 19, 21—23, 26—29, and 32—
35 is reversed.
5 The Examiner relied on Lindahl to teach a touch screen and a touch being
detected on an area of the touch screen where the live view image is
displayed. Final Act. 4. We find Lindahl’s teachings to be cumulative to
Chen’s teachings of a touch screen.
5
Appeal 2017-004498
Application 13/270,372
We enter the following new grounds of rejection against the claims
under 37 C.F.R. § 41.50(b):
We reject claims 19, 21—23, 26—29, and 32—35 under 35 U.S.C.
§ 103(a) as being unpatentable over Chen and Onoda.
Since we have entered a new ground of rejection against the claims,
our decision is not a final agency action.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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).
REVERSED: 37 C.F.R, $ 41.50(b)
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