10174602 (B.P.A.I. Jun. 8, 2012)

Ex Parte Ortiz et al

Board of Patent Appeals and InterferencesJun 8, 2012

10174602 (B.P.A.I. Jun. 8, 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. 10/174,602 06/19/2002 Juan E. Ortiz 84740/EIS 7034 1333 7590 06/08/2012 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER BRUCKART, BENJAMIN R ART UNIT PAPER NUMBER 2478 MAIL DATE DELIVERY MODE 06/08/2012 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 JUAN E. ORTIZ, MARK D. DAWSON, DALE F. MCINTYRE, MICHAEL J. TELEK, and JOHN K. MCBRIDE ____________ Appeal 2009-015399 Application 10/174,6021 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, STEPHEN C. SIU, and ANDREW J. DILLON, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Eastman Kodak Company. Appeal 2009-015399 Application 10/174,602 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-20, which are all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. The present invention relates to a method for setting up a system for sharing images among a plurality of users in a first image sequence. See generally Abstract. Claim 1 is illustrative: 1. A method for setting up a system for sharing images among a plurality of users in a first image sequence, comprising: providing a plurality of digital images to a controlling computer having software for controlling the sharing of said plurality of digital images between a plurality of designated users in a first image sequence; providing a list of electronic addresses of said plurality of designated users; forwarding an invitation to said plurality of designated users in said list for gaining access to said plurality of digital images over a communication network by said controlling computer; forwarding user software to said designated users that accept said invitation; and automatically controlling the forwarding of said plurality of digital images in a predetermined sequence between said designated users that accepted said invitation by said controlling computer. Appeal 2009-015399 Application 10/174,602 3 Appellants appeal the following rejection: Claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Rodman (US Patent Pub. No.: 2002/0103864 A1, Aug. 1, 2002, filed Dec. 26, 2001) and Ogdon (US 6,161,137, Dec. 12, 2000). ANALYSIS Our representative claim, claim 1, recites, inter alia, “automatically controlling the forwarding of said plurality of digital images in a predetermined sequence between said designated users.” Independent claim 20 recites a commensurate limitation. Thus, the scope of each of the independent claims includes a predetermined sequence between designated users. Issue: Did the Examiner err in finding that Rodman and Ogdon, particularly Rodman, discloses a predetermined sequence between said designated users, as claimed? Based upon our review of the record, we find the weight of the evidence supports the Appellants’ position as articulated in the Briefs. Specifically, Appellants contend that in Rodman “all conference data exists at all endpoints 105, 110 and at the conference server 150 or the conference data is broadcast between the conference server 150 and all endpoints 105, 110, not forwarded between designated users.” (App. Br. 6.) We agree with Appellants. Appeal 2009-015399 Application 10/174,602 4 While the Examiner found that in Rodman “[t]he ‘presenter’ controls the forwarding of the digital images (i.e., ‘presentation slides’) between the user (i.e., the presenter hits the ‘next slide’, which causes the conference server 150 to transmit to the conference participants the next slide)” (see Ans. 10), the Examiner has not shown a predetermined sequence between the designated users (i.e., participants) that accepted the invitation. For example, in the present invention the controlling computer 14 forms a predetermined sharing sequence between participating users. For instance, the user computer 16 would be the first user to see the imagette sequence. After computer 16 sees the imagette, the imagette sequence proceeds from computer 18 and henceforth onto computer 20 to complete a round. (See Spec., 13:13-21; see also Fig. 4.) Appellants’ Fig. 4 is depicted below: Fig. 4 illustrates the image flow of images being shared between multiple users. Appeal 2009-015399 Application 10/174,602 5 The Specification discloses that “[t]he controlling computer 14 controls the communication of imagette sequences and data among the designated users as illustrated by arrows A, B, C, D, E, and F.” (Spec., 10:22-24; Fig. 4.) We find that claim 1 requires “controlling the forwarding of said plurality of digital images in a predetermined sequence between said designated users” (see Claim 1), and the Examiner has merely shown a sequence, i.e., next slide, to all conference participants at the same time. In other words, in Rodman the conference participants all see the slides at the same time, as opposed to one after the other, as required by claim 1. Furthermore, the Examiner has not shown that Ogdon makes up for the deficiencies of Rodman. Since we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants’ other arguments. It follows that Appellants have shown that the Examiner erred in finding that Rodman and Ogdon renders claims 1-20 unpatentable. Accordingly, we reverse the rejection of claims 1-20. DECISION We reverse the Examiner’s § 103 rejection. REVERSED Vsh