Ex Parte Onoda et al

Patent Trial and Appeal Board

Oct 24, 2016

13082371 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/082,371 04/07/2011
91218 7590 10/26/2016
Shinjyu Global IP
1-4-19 Minamimori-machi, Kita-ku
South Forest Building, 11th Floor
Osaka, 530-0054
JAPAN
FIRST NAMED INVENTOR
Senichi ONODA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MDS-US 100720 5979
EXAMINER
MAZUMDER, SAPTARSHI
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
teammurai@ giplaw-osaka. co .jp
shinjyuefiling@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SENICH! ONODA, YOSHIY ASU KADO, and
JUN TAKEMURA
Appeal2015-004322
Application 13/082,371 1
Technology Center 2600
Before JEAN R. HOMERE, HUNG H. BUI, and JOHN F. HORVATH,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-3, 5, 7-11, 18-20, and
22, which are all of the claims pending on appeal. App. Br. 3. Claims 4, 6,
12-17, 21, 23, and 24 are cancelled. Claims App 'x. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Panasonic
Corporation. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed October 7, 2014
("App. Br."); Reply Brief filed February 26, 2015 ("Reply Br."); Examiner's
Answer mailed December 31, 2014 ("Ans."); Final Office Action mailed
April 21, 2014 ("Final Act."); and original Specification filed April 7, 2011
("Spec.").
Appeal2015-004322
Application 13/082,371
STATEMENT OF THE CASE
Appellants' invention relates to an image display apparatus and an
image editing apparatus configured to distinguish between ( 1) still image
data extracted from moving picture data that has already been encoded, and
(2) still image data generated through a normal shooting process. Spec. i-f 8.
Claims 1, 5, and 7 are independent. Claim 1 is illustrative of
Appellants' invention, as reproduced with disputed limitations emphasized
below:
1. An image display apparatus comprising:
a determination unit configured to determine whether a
stored image data is a first still image data, or a second still
image data, based on auxiliary information that distinguishes
between the first still image data and the second still image
data;
the first still image data extracted from encoded moving
picture data, and separate from the encoded moving picture
data;
the second still image data generated through a normal
image capturing process; and
a display management unit configured to display still
image data such that when the determination unit determines
that the stored image data is the first still image data, the
display management unit displays a first still image and a mark
on a display unit, the first still image being displayed based on
the first still image data, the mark indicating that the first still
image data has been extracted from encoded moving picture
data, and
when the determination unit determines that the stored
image data is the second still image data, the display
management unit displays a second still image on a display unit
without the mark, the second still image based on the second
still image data, respectively.
App. Br. 24 (Claims App.).
2
Appeal2015-004322
Application 13/082,371
Examiner ;s Rejection and References
Claims 1-3, 5, 7-11, 18-20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Matsumoto, US 2003/0052986 Al; pub.
Mar. 20, 2003 ("Matsumoto"), Kim, US 2008/0267581 Al; pub. Oct. 30,
2008 ("Kim"), and Migiyama et al., US 2011/0050942 Al; pub. Mar. 3,
2011. Final Act. 4--19; App. Br. 6.
ANALYSIS
With respect to independent claim 1, the Examiner finds Matsumoto
teaches an image display apparatus, shown in Figure 1, comprising:
a determination unit . . . configured to determine whether
a stored image data is [ 1] a first still image data, or [2] a second
still image data, based on stored moving data that distinguishes
between the first still image data and the second still image data
a display management unit configured to display still
image data such that when the determination unit determines that
the stored image data is the first still image data, the display
management unit displays a first still image and a mark on a
display unit, the first still image being displayed based on the
first still image data, the mark indicating that the first still image
data has been extracted from encoded moving picture data, and
when the determination unit determines that the stored
image data is the second still image data, the display
management unit displays a second still image on a display unit
without the mark, the second still image based on the second still
image data, respectively.
Final Act. 5, 8-9 (citing Matsumoto i-fi-153, 54, 57, 69-70, Figs. 3 and 5).
According to the Examiner, "Matsumoto stores still image data from both
normal shooting process and moving image data," including "still image []
3
Appeal2015-004322
Application 13/082,371
created from normal shooting process" and "still image [] generated from
moving image data." Ans. 4 (citing Matsumoto i-fi-154, 60, Fig. 4).
The Examiner acknowledges, however, Matsumoto fails to disclose
certain well known features, including (1) the use of auxiliary information,
i.e., metadata to distinguish between the first still image data and the second
still image data, as evidenced from Migiyama, and (2) the extraction of still
image from encoded moving picture data, as evidenced from Kim in order to
support the conclusion of obviousness. Id. at 5-6 (citing Migiyama i129,
Figs. 3, 4A--4D; and Kim i126).
Appellants dispute the Examiner's factual findings regarding
Matsumoto and the Examiner's rationale for making the combination. In
particular, Appellants contend Matsumoto does not disclose "the first still
image data extracted from encoded moving picture data ... the second still
image data generated through a normal image capturing process." App. Br.
16. According to Appellants, "[t]humbnails, as described by Matsumoto, are
all extracted still images," i.e., "extracted from the original captured image
data." Id. at 17-18 (citing Matsumoto i153). As such, Appellants argue
" [a Jn image extracted from still image data [as disclosed by Matsumoto] is
not generated through a normal image capturing process as recited in the
claims." Id. at 18. Appellants further argue the "thumbnail image" as
disclosed by Matsumoto cannot be both ( 1) first still image data extracted
from encoded moving picture data, and (2) second still image data generated
through a normal image capturing process. Reply Br. 3.
In addition, Appellants contend ( 1) the Examiner has failed to present
any type of rationale available under M.P.E.P. § 2143 (citing KSR Int'! Co.
v. Teleflex Corp., 550 U.S. 398, 406-7 (2007)); and (2) the Examiner's
4
Appeal2015-004322
Application 13/082,371
stated rationale for combining the teachings of Matsumoto, Migiyama, and
Kim, i.e., "to get auxiliary information which provides moving image file
related to still image so that co-relation could be found between moving and
still image" is conclusory and is based on impermissible hindsight because
the "co-relation ... between moving and still image" has been improperly
gleaned from Appellants' own Specification. App. Br. 18-21 (citing
Appellants' Spec. i-f9); Reply Br. 4---6.
We do not find Appellants' arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants'
arguments supported by a preponderance of evidence. Ans. 2-22. As such,
we adopt the Examiner's findings and explanations provided therein. Id.
For additional emphasis, we note Appellants cannot show nonobviousness
by attacking references individually where the rejection is based on
combinations of references. In re Keller, 642 F.2d 413 (CCPA 1981).
The test of obviousness is not whether the claimed invention is expressly
suggested in anyone or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d at 425.
Contrary to Appellants' arguments, Migiyama and Kim, and not Matsumoto,
are relied upon for teaching "extraction of still image from encoded moving
picture." Ans. 3 (citing Migiyama i129; Kim i126); see also Kim's Figure 7.
As further recognized by the Examiner, "Matsumoto stores still image data
from both normal shooting process and moving image data," including "still
image [] created from normal shooting process" and "still image [] generated
from moving image data." Id. at 4 (citing Matsumoto i1i154, 60, Fig. 4).
These features are well known in the art and any effort to combine these old
5
Appeal2015-004322
Application 13/082,371
features along with the use of auxiliary information (metadata) to distinguish
between different type of still image data, as evidenced from Migiyama,
would have been obvious to those skilled in the art because these features
perform the same known function and yield no more than one would expect
otherwise. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). A
skilled artisan would "be able to fit the teachings of multiple patents together
like pieces of a puzzle" since the skilled artisan is "a person of ordinary
creativity, not an automaton." Id. at 420-21.
We recognize that the Examiner must articulate some "reasoning with
some rational underpinning to support the legal conclusion of obviousness."
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). However, the Examiner's
reasoning need not appear in, or be suggested by, one or more of the
references on which the Examiner relies upon. Instead, a reason to combine
teachings from the prior art "may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved." WMS
Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). "Under the
correct [obviousness] analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). Here, the Examiner has provided
rationale supporting motivation by a skilled artisan to achieve the claimed
subject matter, i.e., (1) to get easy identification of still images which are
extracted from moving images, and (2) by "adding the extraction of still
image from encoded moving image data as taught by Kim as part of
6
Appeal2015-004322
Application 13/082,371
Matsumoto's moving image ... to provide still image from moving image
during moving image capture as well as during reproduction." See Ans. 14,
16. Appellants have not demonstrated which rationale is erroneous or why a
person of ordinary skill in the art would not have reached the conclusions
reached by the Examiner. See DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)
("[T]he proper question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art references.").
Consequently, we are not persuaded that the Examiner failed to articulate a
rationale for combining the references. Nor do we find any evidence in the
record to support Appellants' contention that the rejection is based on
"impermissible hindsight." That argument, however, is essentially a
repackaging of the argument that there is insufficient evidence of a
motivation to combine the references, with which we disagree. See In re
Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (Appellants' hindsight
argument is of no moment where the Examiner provides a sufficient, non-
hindsight reason to combine the references).
Lastly, we note Appellants have not demonstrated the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013).
7
Appeal2015-004322
Application 13/082,371
For these reasons, we sustain the Examiner's obviousness rejection of
independent claim 1 and similarly, independent claims 5 and 7 and their
respective dependent claims 2, 3, 8-11, 18-20, and 22, which Appellants do
not argue separately. App. Br. 22.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-3, 5, 7-11, 18-20,
and 22 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-3, 5,
7-11, 18-20, and 22.
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).
AFFIRMED
8