Ex Parte Koivisto et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11288768 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARI M. KOIVISTO, TERO JOKELA,
TIMO T. KOSKINEN, and ANDREI POPESCU
_____________

Appeal 2010-005398
Application 11/288,768
Technology Center 2100
____________

Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005398
Application 11/288,768

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 13-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is directed to:
A]n analysing module 202 to analyse contents of a content
item from which an icon is to be created, a content item portion
selection module 204 to select a portion of the content item on
the basis of a predetermined algorithm, and an icon finalization
module 206 to establish and store an icon from the selected
portion of the content item.
Spec. 5:5-9; also see Fig. 2.
Claim 13, reproduced below, is representative of the subject matter on
appeal.
13. An electronic device comprising:

memory for storing content items and associated icons,

a display for displaying an icon associated with a content item,
and

an icon generation module configured to:

analyze at least some contents of a content item to find a
portion appropriated [sic] for icon generation,

automatically select by an algorithm a portion of the
analyzed content item appropriate for icon generation, and

specify an icon from the selected content item portion.

Appeal 2010-005398
Application 11/288,768

3
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hatanaka US 5,680, 558 Oct. 21, 1997

Semanticons: Visual Metaphors as File Icons, submitted to Computer
Graphics Forum, pp. 1-9 (2/2005) (hereinafter “Semanticons”).

The following rejection is before us for review:
The Examiner rejected claims 13-24 under 35 U.S.C. § 103(a) as
being unpatentable over Hatanaka in view of Semanticons.

ISSUES
The pivotal issues are whether the Examiner erred in finding that the
combination of Hatanaka and Semanticons teaches the limitation:
1. “automatically select by an algorithm a portion of the analyzed
content item appropriate for icon generation” as recited in claim
13;
2. “to determine if an image exists in the content item” as recited in
claim 15;
3. “analyze a content item with multiple pages one page at a time
such that a second page following a first page is analyzed if, on the
basis of analyzing the first page, the contents of the first page do
not comprise a portion meeting at least one predetermined
selection criterion to be selected for icon creation” as recited in
claim 17;
Appeal 2010-005398
Application 11/288,768

4
4. “determine empty areas in the selected content item portion,
remove the empty areas, and scale down a remaining portion to fit
a given size for the icon” as recited in claim 18.

PRINCIPLE OF LAW
“Accommodating a prior art mechanical device that accomplishes [a
desired] goal to modern electronics would have been reasonably obvious to
one of ordinary skill.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007).
An artisan is presumed to possess both skill and common sense. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).

ANALYSIS
Claims 13, 14, 16, 19, 20-22, and 23
Appellants argue that the combination of Hatanaka and Semanticons
does not teach the limitation of “automatically select by an algorithm a
portion of the analyzed content item appropriate for icon generation” (App.
Br. 12-14).
Appellants specifically argue that in Semanticons (section 3.2) “the
content is not used to generate an icon, but only to determine a context
which is used to retrieve an image from a database to be processed”(App.
Br. 12-13).
We do not agree with Appellants’ argument. Semanticons teaches
automatically analyzing the content of a file, by the system removing
common English words and extracting the most frequently occurring terms,
Appeal 2010-005398
Application 11/288,768

5
to determine the context (pg. 3, “Generating context using file content”)
and based on that context retrieving, and thereby generating, an image that
corresponds to that content (pg. 3, “3.2 Image Retrieval”).
Thus, Semanticons teaches the disputed limitation of “automatically
select by an algorithm a portion of the analyzed content item appropriate for
icon generation” as recited in claim 13.
Accordingly, we affirm the Examiner’s rejection of claim 13 and the
rejection of claims 14, 16, 19, 22, and 23 which were not separately argued
(see App. Br. 14).
Claim 15
Appellants argue that the combination of Hatanaka and Semanticons
does not teach an icon generation module configured “to determine if an
image exists in the content item” as recited in claim 15 (App. Br. 14-15).
Appellants argue that Hatanaka (col. 3, l. 50-col. 4, l. 65) “merely
disclosed that an operator selects part of an image”, and there is no teaching
or suggestion in Hatanaka of determining if an image exists in the content
item (App. Br. 15).
While we agree with Appellants that Hatanaka teaches that an
operator selects an image, it would have been obvious to automate this
function. See Leapfrog, 485 F.3d at 1161. This is especially the case since
Semanticons teaches already automating the function of searching relevant
context, and thus, it would be common sense to also automate the function
of searching for images because a person of ordinary skill is also a person of
ordinary creativity. See KSR, 550 U.S. at 421.

Appeal 2010-005398
Application 11/288,768

6
Claim 17
Appellants argue that the combination of Hatanaka and Semanticons
does not teach the limitation to “analyze a content item with multiple pages
one page at a time such that a second page following a first page is analyzed
if, on the basis of analyzing the first page, the contents of the first page do
not comprise a portion meeting at least one predetermined selection criterion
to be selected for icon creation” as recited in claim 17 (App. Br. 15-16).
Appellants explain that the cited section by the Examiner (Hatanaka, col. 4,
ll. 62-67) “merely discloses that a user may change a page” (App. Br. 16).
We do not agree with Appellants’ argument. We agree with the
Examiner that Hatanaka discloses an extraction unit with the ability to check
other pages in order to find a page that meets the criteria of the operator (col.
4, ll. 46-67) (Ans. 9).
Accordingly, we affirm the Examiner’s rejection of claim 17.

Claim 18
Appellants argue that the combination of Hatanaka and Semanticons
does not teach the limitation to “determine empty areas in the selected
content item portion, remove the empty areas; and scale down a remaining
portion to fit a given size for the icon” as recited in claim 18 (App. Br. 16).
We do not agree with Appellants’ argument. We agree with the
Examiner (Ans. 9-10) that “Semanticons discloses a region extraction
functionality (Page 4; 3.3 Region Extraction). Semanticons looks at
unimportant regions (white space, empty areas) and removes that region;
instead of just scaling the image down with all the unimportant regions”.
Accordingly, we affirm the Examiner’s rejection of claim 18.
Appeal 2010-005398
Application 11/288,768

7
Note to the Examiner should there be further prosecution:
Claim 24 is written in means-plus-function format and, thus, invokes
35 U.S.C. § 112, 6th paragraph. The Examiner should consider whether the
Specification does or does not describe the corresponding structure so that
the scope of the claim can be determined.
The Examiner may want to consider the USPTO guidelines described
at
http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_112_6
th_09_02_2008.pdf, regarding the applicability of Aristocrat Techs.
Australia Pty. Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir.
2008).
CONCLUSIONS
The Examiner did not err in finding that the combination of Hatanaka
and Semanticons teaches the limitation:
1. “automatically select by an algorithm a portion of the analyzed
content item appropriate for icon generation” as recited in claim 13;
2. “to determine if an image exists in the content item” as recited
in claim 15;
3. “analyze a content item with multiple pages one page at a time
such that a second page following a first page is analyzed if, on the basis of
analyzing the first page, the contents of the first page do not comprise a
portion meeting at least one predetermined selection criterion to be selected
for icon creation” as recited in claim 17;
4. “determine empty areas in the selected content item portion,
remove the empty areas, and scale down a remaining portion to fit a given
size for the icon” as recited in claim 18.
Appeal 2010-005398
Application 11/288,768

8

ORDER
The Examiner’s rejection of claims13-24 is affirmed.
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

llw