10071590 (B.P.A.I. Jun. 23, 2009)

Ex Parte McIntyre et al

Board of Patent Appeals and InterferencesJun 23, 2009

10071590 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DALE F. MCINTYRE and ANDREW T. COOPER ____________ Appeal 2008-003897 Application 10/071,590 Technology Center 2100 ____________ Decided1: June 24, 2009 ____________ Before JAMES D. THOMAS, LANCE LEONARD BARRY, and THU A. DANG, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date. Appeal 2008-003897 Application 10/071,590 2 STATEMENT OF THE CASE The Patent Examiner rejected claims 1-11 and 14-16. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). INVENTION The invention at issue on appeal automatically updates non-image metadata stored at a first location using a first image application. The metadata are associated with a digital image of a user. More specifically, the invention provides new information regarding the digital image in a second image application and automatically updates the metadata at the first location to reflect the new information. (Spec. 20.) ILLUSTRATIVE CLAIM 10. A method for updating non-image information stored at a first location, said non-image information being associated with a digital image of a user, comprising steps of: providing at least one digital image of a user to a remote image server; said user granting access to at least one third party to said at least one digital image stored at said remote image server; said third party providing new non-image information with respect to said at least one digital image in a second non- related image software application running at said remote image server; notifying said user of the existence of said new non- image information with respect to said at least one digital image; and Appeal 2008-003897 Application 10/071,590 3 automatically updating said non-image information at said first location with said new non-image information if said user decides to do so. PRIOR ART Houchin et al. US 5,983,229 Nov. 9, 1999 Parks et al. US 5,025,396 June 18, 1991 REJECTION Claims 1-11 and 14-16 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Houchin and Parks. CLAIM GROUPING When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. 37 C.F.R. Â§ 41.37(c)(1)(vii). Here, the Appellants argue claims 1-7, 14, and 15 as a group (2d Supp. Br. 13-14) and claims 8, 9, and 16 as another group (id. 6-8). All these claims are subject to the same ground of rejection. Therefore, we select claims 1 and 16 as the sole claims on which to decide the appeal of the respective groups. "With this representation in mind, rather than reiterate Appeal 2008-003897 Application 10/071,590 4 the positions of the parties in toto, we focus on the issues therebetween." Ex Parte Zettel, No. 2007-1361, 2007 WL 3114962, at *2 (BPAI 2007). GRANTING ACCESS, A SECOND NON-RELATED IMAGE SOFTWARE APPLICATION RUNNING AT THE REMOTE IMAGE SERVER, AND NOTIFYING A USER The Examiner makes the following findings. Houchin discloses that applications can manage image data as well as non-image data across network (See column 1 lines 45- 51). Therefore . . . an artisan of ordinary skill in the pertinent art would understand that this also includes image data being accessed or copied by a third party since the purpose of allowing applications to run on a network is to grant access to files and resources not stored locally. (Ans. 10.) [A]n application [may] . . . add extension data to the hypothetical image file . . . . The new extension data is then added to the buffer in memory per step 46. Finally, the incremented value of the number of extensions field, the buffer of extension data and the extensions offsets are written to the file per step 48 (see col. 3, lines 36-58, Houchin). Moreover, the application is disclosed as running on a remote site for the same reasons as [aforementioned] . . . . (Id. at 11.) Houchin discloses verifying extension data (See figures 3 and 4). An artisan of ordinary skill in the pertinent art would understand that one way of verifying information is to ask the user. Asking the user accomplishes 2 goals (1) users can clear up any errors, if they are the reason the system cannot read data (in this case extension data) and (2) users can verify that the data is in fact not valid. (Id. at 12.) The Appellants make the following arguments. "Houchin fails to teach or suggest at least said user granting access to at least one third Appeal 2008-003897 Application 10/071,590 5 party to said at least one digital image stored at said remote image server . . . ." (2d Supp. Br. 8.) "[N]one of Houchin's embodiments disclose [sic] a second non-related image software application running on a remote site for providing non-image information." (Id. at 7.) "Houchin discloses that an application makes decisions (See Col. 4, lines 7-10), however, nowhere does the Houchin device notify a user of the existence of said new non-image information." (Id. at 8.) ISSUE Therefore, the issue before us is whether the Appellants have shown error in the Examiner's findings that Houchin teaches a user granting access to at least one third party to at least one digital image stored at a remote image server, a second non-related image software application running at the remote image server, or notifying the user of the existence of new non-image information regarding the at least one digital image. LAW The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001). "'A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)). "'On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima Appeal 2008-003897 Application 10/071,590 6 facie case with evidence of secondary indicia of nonobviousness.'" In re Kahn, 441 F.3d 977, 985-86 (Fed.Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed.Cir. 1998)). ANALYSIS As aforementioned, the Examiner has found that Houchin teaches a user granting access to at least one third party to at least one digital image stored at a remote image server, a second non-related image software application running at the remote image server, and notifying the user of the existence of new non-image information regarding the at least one digital image. These findings establish a prima facie case of obviousness. The Appellants have not addressed the Examiner's specific findings. CONCLUSION Not having addressed the Examiner's specific findings, the Appellants have shown no error therein. AUTOMATICALLY UPDATING NON-IMAGE INFORMATION As aforementioned, the Examiner finds that in Houchin "the buffer of extension data and the extensions offsets are written to the file per step 48 (see col. 3, lines 36-58, Houchin)." (Answer 11.) He further finds that "Parks discloses automatically updating (automatically update the coded data, see col. 10, lines 3-6, Parks)." (Id. at 4.) The Appellants argue that "[a]t best, Parks performs a backup is automatically performed. See Col. 10, lines 4-5. Nevertheless, Parks does not disclose automatically updating said non-image information at said first storage location." (2d Supp. Br. 14.) Appeal 2008-003897 Application 10/071,590 7 ISSUE Therefore, the issue before us is whether the Appellants have shown error in the Examiner's finding that the combined teachings of Houchin and Parks would have suggested automatically updating non-image information at a first storage location. LAW "The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). FINDINGS OF FACT ("FFS") 1. Houchin "provides a flexible image format (e.g. FlashPix), the ability to manage extension data (additional image, audio, or non-image data) that is added to the core image format data by using an extension persistence property." (Col. 2, ll. 18-22 (emphasis added).) 2. The reference's "FIG. 2 depicts the steps an application must take to add extension data to the hypothetical image file." (Col. 3, ll. 36-37.) More specifically, "[t]he new extension data is then added to the buffer in memory per step 46. Finally, the incremented value of the number of extensions field, the buffer of extension data and the extensions offsets are written to the file per step 48." (Id. at ll. 54-59.) Appeal 2008-003897 Application 10/071,590 8 3. Houchin also discloses "[a] storage media having stored thereon an image file comprising: a header; image data; extension data . . . ." (Col. 6, ll. 28-32 (emphasis added).) 4. Parks teaches that "[b]ackup is not required for Coded Data. It is done automatically by [the] O[bject Access Method]." (Col. 10, ll. 4-5.) ANALYSIS Houchin teaches that software applications can add extension data to image files. (FF 1-2.) The extension data comprise non-image data (FF 1) and are stored in a storage media (FF 3). Figure 2 of the reference shows that the applications can add the extension data without any input from a user. (FF 2.) Therefore, we agree with the Examiner's finding that "Houchin discloses a method for automatically updating non-image data stored at a first storage location . . . ." (Answer 4.) For its part, Parks teaches that an operation that stores data can be performed automatically. (FF 4.) CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Appellants have shown no error in the Examiner's finding that the combined teachings of Houchin and Parks would have suggested automatically updating non-image information at a first storage location. Appeal 2008-003897 Application 10/071,590 9 DECISION We affirm the rejection of claims 1-11 and 14-16. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED erc Milton S. Sales Patent Legal Staff Eastman Kodak Company 343 State Street Rochester, NY 14650-2201