Ex Parte Kurosawa

Board of Patent Appeals and Interferences

Mar 14, 2012

10686526 (B.P.A.I. Mar. 14, 2012)

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.
10/686,526 10/16/2003 Shigeru Kurosawa FQ5-616 KAT.045 3993
21254 7590 03/15/2012
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
ROSARIO, DENNIS
ART UNIT PAPER NUMBER
2624
MAIL DATE DELIVERY MODE
03/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHIGERU KUROSAWA
____________________

Appeal 2009-015374
Application 10/686,526
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015374
Application 10/686,526

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STATEMENT OF CASE1
The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellant invented a portable communication apparatus equipped
with an image-capturing device. Specification 1:3-7.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A portable communication apparatus comprising:
[1] an image-capturing section for capturing an image
depending on an operation of a shutter key and for sensing
images in real-time;
[2] a display that includes a viewfinder display that displays
said real-time sensed images and that includes a reference
frame that indicates a predetermined optimal size of characters
to achieve a predetermined success rate for character
recognition for a character positioned within the reference
frame; and
[3] a character recognition section for recognizing a
character from a captured image.

REFERENCES
The Examiner relies on the following prior art:
Saruwatari
Kubo
US 5,912,705
US 6,639,626 B1
Jun. 15, 1999
Oct. 28, 2003

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sept. 2, 2008) and the Examiner’s Answer (“Ans.,” mailed Nov.
14, 2008).
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Application 10/686,526

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Horii US 2002/0058536 A1 May 16, 2002

REJECTIONS
Claims 1-5, 10, 12-15, 18, and 20 stand rejected under 35 U.S.C.
§102(b) as being anticipated by Saruwatari.
Claims 6-8 and 17 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Saruwatari and Kubo.
Claims 9, 11, 16, and 19 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Saruwatari and Horii.

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s contentions that the Examiner has erred.
We disagree with the Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

The rejection of claims 1-5, 10, 12-15, 18, and 20 over Saruwatari
The Appellant contends that Saruwatari fails to describe “a reference
frame that indicates a predetermined optimal size of characters to achieve a
predetermined success rate for character recognition for a character
positioned within the reference frame,” as required by limitation [2] of claim
1. App. Br. 10-13. The Appellant specifically argues that Saruwatari
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describes an adjustable size area for the reference frame, and asserts that the
claimed invention requires a “predetermined reference frame” and therefore
Saruwatari teaches against the claimed invention. App. Br.10- 11.
We disagree with the Appellant. Limitation [2] requires a reference
frame that indicates a predetermined optimal size image. Although
limitation [2] requires a predetermined optimal size, it does not require a
predetermined reference frame. As such, the Appellant’s argument that
Saruwatari fails to describe a “predetermined reference frame” is not
persuasive.
Furthermore, Saruwatari describes a photographing apparatus.
Saruwatari 1:12-13. The photographing apparatus sets a small designated
area in the viewfinder of the camera capable of character recognizing the
image in the area. Saruwatari 2:22-25. Two diagonal points are designated
whereby the rectangular character area is designated. Saruwatari 5:54-56,
Fig. 8A, and Fig. 8B. Additionally, the designated character area may be
magnified to an optimal size, such as the size of the viewfinder, for more
accurate character recognition. Saruwatari 8:14-21. That is, Saruwatari
describes a reference frame designated by a rectangular character area and
this character area can be further magnified for optimal character
recognition. As such, Saruwatari describes this limitation and anticipates
claim 1.

The rejection of claims 6-8 and 17 over Saruwatari and Kubo
The Appellant contends that the combination of Saruwatari and Kubo
fails to teach or suggest “a timer that delays an image-capturing operation of
the image-capturing section by a predetermined time period after an
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operation of the shutter key has been completed,” as required by claims 6, 8,
and 17. App. Br. 14-15. The Appellant specifically argues that the timing
operation described by Kubo would not apply to the environment of
Saruwatari because Saruwatari does not have two CCD sensors and
therefore there is not a reasonable rationale to combine the references. App.
Br. 15.
We disagree with the Appellant. Claims 6, 8, and 17 only require a
timer that delays the image capturing process after the operation of the
shutter key has been completed. Kubo describes a time delay for a
predetermined period of time after a user has pressed the shutter. Kubo
9:60-67 and Fig. 7. As such, Kubo explicitly describes this feature. The
Appellant’s argument that Kubo cannot be reasonably combined with
Saruwatari because Kubo performs a delay operation through the use of two
CCD sensors is also unpersuasive. Kubo describes the functionality of
delaying the image capturing process upon selection of the shutter, as
discussed supra. Although the structures of Saruwatari and Kubo are
slightly different, a person with ordinary skill in the art would have been
motivated to combine a timer feature with Saruwatari image capturing
apparatus with predictable results. The concept of a “timer” is well known
to a person with ordinary skill in the photographic arts. Therefore, the
combination of Saruwatari and Kubo would have yielded nothing more than
predictable results.

The rejection of claims 9, 11, 16, and 19 over Saruwatari and Horii
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The Appellant contends that Horii is non-analogous to the primary
reference Saruwatari. App. Br. 16. We disagree with the Appellant. Our
reviewing court articulated that
[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here the Examiner found
Saruwatari and Horii are in the same field of endeavor, where the field of
endeavor is the photographic arts or image capturing arts. Ans. 15.
Although the Appellant argues that Saruwatari involves a camera and Horii
involves a mobile phone, the Horii reference describes a mobile phone that
includes a camera device. Horii ¶¶ 0025-0026. Since the cited art is in the
same field of endeavor, we do not find the Appellant’s argument persuasive.
The Appellant further contends that there is no motivation to combine
Saruwatari and Horii and the Examiner relied upon improper hindsight in
constructing the rejection of these claims. App. Br. 16 and Reply Br. 10.
We disagree with the Appellant. The Examiner found that a person with
ordinary skill in the art would have been motivated to combine Saruwatari
and Horii in order to simplify communication. Ans. 15. The Appellant
argues that the Examiner’s “rationale is merely a circular argument wherein
the reason for modification is simply because one would thereby have
achieved the benefit of having made the modification.” App. Br. 16.
However, the Appellant has not provided any further rationale or guidance
as to how the Examiner’s finding are merely a circular argument. Since the
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Appellant has failed to provide any persuasive rationale or evidence to rebut
the Examiner’s findings and conclusion and the Appellant has further failed
to provide any persuasive rationale or evidence to illustrate how the
combination of Saruwatari and Horii would yield anything more than
predictable results, we do not find the Appellant’s argument persuasive.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-5, 10, 12-15, 18, and 20
under 35 U.S.C. §102(b) as being anticipated by Saruwatari.
The Examiner did not err in rejecting claims 6-8 and 17 under 35 U.S.C.
§103(a) as being unpatentable over Saruwatari and Kubo.
The Examiner did not err in rejecting claims 9, 11, 16, and 19 under 35
U.S.C. §103(a) as being unpatentable over Saruwatari and Horii.

DECISION
The Examiner’s decision rejecting claims 1-20 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) (2010).

AFFIRMED

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