Ex Parte Martinik

Patent Trial and Appeal Board

Dec 21, 2016

13706010 (P.T.A.B. Dec. 21, 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.
13/706,010 12/05/2012 Ivo Martinik VYS2658-002 6794
8698 7590 12/23/2016
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
WANG, XI
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
standley docketing @ standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IVO MARTINIK
Appeal 2016-003236
Application 13/706,010
Technology Center 2600
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1 and 3—18. We have jurisdiction under 35 U.S.C. § 6(b). Claim 2
is canceled. See App. Br. 18 (Claims App’x).
We affirm-in-part and enter new grounds of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2013).
1 According to Appellant, the real party in interest is Vysoka Skola Banska
Technicka Univerzita Ostrava. App. Br. 2.
Appeal 2016-003236
Application 13/706,010
STATEMENT OF THE CASE
The Invention
Appellant’s invention relates to “an improvement to the process
whereby the user of the invention may capture images from a computerized
device for later use.” Spec. 1 6. Claims 1,7, 16, and 17 are independent, of
which claims 1 and 7 are illustrative of the subject matter on appeal:
1. A system for capturing and storing images from a
computing device comprising:
a computing device comprising a processor, a storage
system, and graphics control circuitry;
at least one computer display monitor that is associated
with and in electronic communication with said computing
device for display of information contained in the graphics
control circuitry; and
an image capture algorithm which configures the
computing device to monitor a stream of images communicated
from the computing device to a computer display monitor in
electronic communication with the computer device and store
one or more individual images upon the satisfaction of
predetermined capture conditions, said conditions comprising a
change in the content of monitored images which exceeds a
predetermined amount, before each storage.
See App. Br. 18 (Claims App’x).
7. A method of automatically capturing and storing
images, comprising the steps of:
detecting a change in a monitored stream of images
present in the graphics control circuitry of the system of claim
1; and
automatically capturing and storing an image from said
stream of images when the detected change exceeds a
predetermined amount.
See id. at 19 (Claims App’x).
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Application 13/706,010
Rejections on Appeal
Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Olah et al. (US 2003/0005072 Al; published Jan. 2, 2003)
(“Olah”). See Final Act. 3—5.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Olah and Kuo et al. (US 7,139,107 B2; issued Nov. 21, 2006) (“Kuo”).
See id. at 5—6.
Claims 7—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Olah and Oddiraju et al. (US 2012/0044137 Al; published Feb. 23,
2012) (“Oddiraju”). See id. at 6-10.
Claims 5, 6, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Olah and Nygren (US 2002/0106190 Al; published Aug.
8, 2002) (“Nygren”). See id. at 10-12.
ISSUES
The issues presented by Appellant’s contentions are as follows:
Under 35 U.S.C. § 102(b), does the Examiner err in finding that
Olah’s monitoring of a user’s online activity and saving of screen images at
predetermined times discloses “an image capture algorithm . . . to . . . store
one or more individual images upon ... a change in the content of
monitored images which exceeds a predetermined amount,” as recited in
claim 1?
Under 35 U.S.C. § 103(a), does the Examiner err in concluding that
the combination of Olah and Oddiraju teaches or suggests claim 7 because
Olah’s monitoring a modem download or online activity does not teach or
suggest “detecting a change in a monitored stream of images”?
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ANALYSIS
Claims 1, 3—6, and 16—18
The Examiner finds Olah discloses “an image capture algorithm ... to
. . . store one or more individual images upon ... a change in the content of
monitored images which exceeds a predetermined amount,” as recited in
claim 1. More particularly, the Examiner finds Olah discloses (1) initiating
the monitoring of a user’s online activity on a computer system once a
modem download is detected; and (2) periodically capturing and saving
images on the display screen of the computer system. See Ans. 14—15; Final
Act. 4 (citing Olah Figs. 2—4, || 34—37, 44-46). According to the Examiner,
“[w]hen there is online activity discovered, which means that the image
must be changed according to online activity, then the screen capture
execution is activated.” Final Act. 4.
Appellant contends Olah does not disclose the “image capture
algorithm” as recited in claim 1. See App. Br. 8—9; Reply Br. 2—3. More
particularly, Appellant argues that Olah discloses capturing images in
response to predefined time periods or network activity, but not based on “a
change in the content of monitored images,” as required by claim 1. See
App. Br. 8—9; Reply Br. 2—3. According to Appellant, Olah’s disclosure of
online activity “is not analogous to a change in images communicated from
the computer device to a computer display monitor” because “a modem
download (or online activity) does not necessarily result in a change” in
what is displayed, and “the content of images transmitted from a computer
device to a computer display monitor may change without any modem or
network activity.” App. Br. 9.
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We find Appellant’s arguments persuasive. Olah discloses
monitoring a stream of images, as well as storing individual images based on
certain predefined points in time. See Olah Figs. 2-4, || 34—37, 44-46.
Olah further discloses initiating the monitoring of a user once a modem
download is detected, after which captured images may be retrieved. See id.
43, 45. But as Appellant contends, there is no evidence that Olah
discloses storing captured images based on “a change in the content of
monitored images” as required by claim 1. See App. Br. 8—9; Reply Br. 2—3.
Rather, Olah discloses that captured images are saved either manually (i.e.,
at predefined points in time) or randomly, independent of “a change in
content of monitored images.” See Olah Figs. 2 (item 16), 3; H 34, 42.
In view of the foregoing, we find the Examiner errs in the rejection of
claim 1. Accordingly, we do not sustain the rejection of claim 1, as well as
the rejection of dependent claims 3 and 4, each of which includes the same
deficiency discussed above for the rejection of claim 1. See App. Br. 18
(Claims App’x); Ans. 13—16; Final Act. 4—5. Nor do we sustain the
rejections of claims 5, 6, and 16—18, each of which include the same
deficiency discussed above for claim 1 that has not been cured by Kuo,
Nygren, or an adequate rationale to fill the gaps in the cited prior art. See
App. Br. 18—19, 20-21 (Claims App’x); Ans. 17—20; Final Act. 10-12.
Claims 7—15
Appellant contends the Examiner errs in concluding that the
combination of Olah and Oddiraju teaches or suggests claim 7 under
35 U.S.C. § 103(a) because Olah’s monitoring of a modem download or
online activity does not teach or suggest “detecting a change in a monitored
stream of images.” See App. Br. 11—12. We find Appellant’s argument
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unpersuasive because it does not persuasively address or rebut the
Examiner’s specific findings with respect to Oddiraju, which the Examiner
combined with the teachings of Olah to teach or suggest claim 7. The
Examiner found, and we agree, that Oddiraju teaches “detecting a change in
a monitored stream of images” by disclosing an “[ajutomatic screen capture
control system configured to detect. . . changes,” such as “a change in what
is being displayed on [a] display screen.” Final Act. 7 (citing Oddiraju
154).
Because Oddiraju teaches the disputed limitation, Appellant has not
persuaded us of error in the Examiner’s rejection of claim 7. Accordingly,
we sustain the rejection of claim 7 as well as the rejections of claims 8—15,
which Appellant argues together with claim 7. See App. Br. 11—12.
NEW GROUNDS OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1, 3—6, and 16—18
We enter a new ground of rejection within 37 C.F.R. § 41.50(b) for
claims 1,3, and 4 under 35 U.S.C. § 103(a) as unpatentable over Olah and
Oddiraju.
As per claim 1, we adopt as our own the Examiner’s findings,
conclusions, and reasoning (see Final Act. 3—\\ Ans. 13—15) except, as
discussed above, the finding that Olah discloses “an image capture algorithm
. . . to . . . store one or more individual images upon ... a change in the
content of monitored images which exceeds a predetermined amount.” We
find that Oddiraju teaches or suggests this limitation by disclosing an
automatic screen capture control system configured to automatically store a
screenshot of what is being displayed on a display screen if a preselected
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Application 13/706,010
minimum percentage of what is being displayed on the display screen
changes. See Oddiraju | 54. It would have been obvious to one of ordinary
skill in the art at the time of the invention have modified Olah to include the
teachings of Oddiraju in order to make the review of screen captures less
tedious and time consuming. See Oddiraju || 1, 50.
As per claim 3, which incorporates the limitations of claim 1, we find
these incorporated limitations to be obvious in view of Olah and Oddiraju
for the same reasons discussed above as per claim 1. Regarding the further
limitation of claim 3, we do not adopt the Examiner’s finding that Olah
discloses “after said initial change, the monitored images remaining
predominantly unchanged for a period of time.” See Final Act. 4—5 (citing
Olah || 44^45); Ans. 16 (citing Olah Fig. 3, || 35—36). However, we find
that Oddiraju teaches or suggests this limitation. See Oddiraju 154. In
particular, Oddiraju discloses capturing and storing a screenshot if there is a
preselected minimum percentage of change in the content being displayed,
which implies or suggests that a screenshot is not captured and stored if the
amount of change in the content is less than the preselected minimum
percentage. See id. Further, given this disclosure of Oddiraju, one of
ordinary skill in the art would understand that after capturing and storing a
screenshot, another screenshot will not be captured or stored until the
preselected minimum percentage of change in content is met again. See id.;
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that an
obviousness analysis “can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ”); Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (holding
that an obviousness analysis “may include recourse to logic, judgment, and
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Application 13/706,010
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion”).
Accordingly, during such a period of time between screenshots, one of
ordinary skill in the art would also understand that Oddiraju’s monitored
content would not exhibit the preselected minimum percentage of change
and thus “remain[] predominantly unchanged,” as recited in claim 3. See id.;
KSR, 550 U.S. at 418; Perfect Web, 587 F.3d at 1329. We conclude that the
combination of Olah and Oddiraju would have been obvious with regard to
claim 3 for the same reasons articulated supra in the new ground of rejection
for claim 1.
As per claim 4, we adopt as our own the Examiner’s findings,
conclusions, and reasoning (see Final Act. 3—5; Ans. 13—16) except as
discussed above with respect to claim 1. We conclude that the combination
of Olah and Oddiraju would have been obvious with regard to claim 4 for
the same reasons articulated supra in the new ground of rejection for claim
1.
We enter a new ground of rejection within 37 C.F.R. § 41.50(b) for
claims 5, 6, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Olah,
Nygren, and Oddiraju.
As per claims 5, 6, 17, and 18, we adopt as our own the Examiner’s
findings, conclusions, and reasoning (see Final Act. 10-12; Ans. 19—20)
except as discussed above with respect to claim 1. We conclude that the
combination of Olah and Nygren with Oddiraju would have been obvious
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with regard to claims 5, 6, 17, and 18 for the same reasons articulated supra
in the new ground of rejection for claim 1.
We enter a new ground of rejection within 37 C.F.R. § 41.50(b) for
claim 16 under 35 U.S.C. § 103(a) as unpatentable over Olah, Kuo, and
Oddiraju.
As per claim 16, we adopt as our own the Examiner’s findings,
conclusions, and reasoning (see Final Act. 5—6; Ans. 17—19) except as
discussed above with respect to claim 1. We conclude that the combination
of Olah, Kuo, and Oddiraju would have been obvious with regard to claim
16 for the same reasons articulated supra in the new ground of rejection for
claim 1.
DECISION
The decision of the Examiner to reject claims 7—15 under 35 U.S.C.
§ 103(a) is affirmed.
The decision of the Examiner to reject claims 1,3, and 4 under
35 U.S.C. § 102(b) is reversed.
The decision of the Examiner to reject claims 5, 6, and 16—18 under
35 U.S.C. § 103(a) is reversed.
We enter new grounds of rejection for claims 1,3, and 4 under
35 U.S.C. § 103(a) over Olah and Oddiraju.
We enter new grounds of rejection for claims 5, 6, 17, and 18 under
35 U.S.C. § 103(a) over Olah, Nygren, and Oddiraju.
We enter new grounds of rejection for claim 16 under 35 U.S.C.
§ 103(a) over Olah, Kuo, and Oddiraju.
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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 Appellant, 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 prosecution 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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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