Ex Parte Ortman et al

Patent Trial and Appeal Board

Dec 22, 2016

13705563 (P.T.A.B. Dec. 22, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/705,563 12/05/2012 John L. ORTMAN 83095880 7639
22879
HP Tnr
7590 12/27/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
VILLECCO, JOHN M
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. ORTMAN, JONATHAN DAVID GIBSON,
RONALD MONSON, and MATTHEW STUEMPFLE
Appeal 2015-002727
Application 13/705,563
Technology Center 3600
Before EDWARD A. BROWN, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John L. Ortman et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants submit the real party in interest is Hewlett-Packard
Development Company, LP. Appeal Br. 3.
Appeal 2015-002727
Application 13/705,563
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A camera, comprising:
an optical element that moves between a first focus
position and a second focus position upon application of an
electrical signal;
a sensor both to capture first images transmitted by the
optical element in the first focus position and to capture second
images transmitted by the optical element in the second focus
position;
a first storage location to record first images captured by
the sensor;
a second storage location to record second images
captured by the sensor; and
a screen that simultaneously displays a most recent first
image retrieved from the first storage location and a most recent
second image retrieved from the second storage location.
REJECTIONS
1) Claim 4 is rejected under 35U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2) Claims 1—3, 5—7, 9-13, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Helwegen (US 2009/0066833 Al,
pub. Mar. 12, 2009), Wakabayashi (US 2011/0234881 Al, pub.
Sept. 29, 2011), and Suzuki US 7,477,307 B2, iss. Jan. 13, 2009).
3) Claims 8 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Helwegen, Wakabayashi, Suzuki, and
Shirakawa (US 7,443,447 B2, iss. Oct. 28, 2008).
4) Claims 17—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wakabayashi and Helwegen.
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5) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wakabayashi, Helwegen, and Shirakawa.
DISCUSSION
Rejection 1
Appellants do not contest the Examiner’s rejection of claim 4 under
35 U.S.C. § 112, first paragraph, and, thus, waive any argument of error.
See Appeal Br. 8. Therefore, we summarily affirm this rejection. See
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
Rejection 2
In rejecting claim 1, the Examiner finds that Helwegen discloses:
an optical element (liquid based zoom lens 10) that moves between a
first focus position and a second focus position upon application of an
electrical signal ... a sensor (image sensor 20) both to capture first
images transmitted by the optical element in the first focus position and
to capture second images transmitted by the optical element in the
second focus position.
Final Act. 10.
The Examiner finds that Wakabayashi discloses capture of “both a
wide and telephoto image and to display those images in a live view mode.”
Id. citing Wakabayashi, Figs. 3—5, 108—110. The Examiner reasons that
it would have been obvious to combine Wakabayashi’s display with
Helwegen “to simultaneously display the captured images to a user.” Id. at
11. The Examiner finds that Suzuki discloses that, in the art of displaying
images on a display, it is well known to “store first and second captured
images in a first and second storage location before combining those images
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on a display.” Id. citing Suzuki, col. 3,11. 32—36, col. 5,1. 64 to col. 6,1. 54.
The Examiner concludes that it would have been obvious “to include a first
and second memory in the camera of Helwegen and Wakabayashi for aiding
in displaying the combined images so that display delays can be shortened
and memory required for displaying the images is decreased.”2 Id. at 11—12.
Appellants contend that none of the references disclose the first
storage location and second storage location recited in claims 1 and 9.
Appeal Br. 11.3 Appellants describe Helwegen as teaching “a method for
generating as series of images at different zoom angles.” Id. at 12.
Appellants argue that Wakabayashi discloses an apparatus that
simultaneously captures a wide angle image with a first imaging element and
a telephoto image with a second imaging element, and stores both images in
one file. Id. We understand Appellants to be arguing that Wakabayashi’s
process stores both a wide angle image and a telephoto image at one
location. Appellants argue that “Helwegen and Wakabayashi are neither
analogous too [sic], nor indicative of’ the recited first storage location and
second storage location. Id. at 12. Appellants argue that Suzuki discloses a
system of two cameras that each capture images that are stored in the
respective camera and then simultaneously displayed on a single display. Id.
at 13; see also Reply Br. 4. Appellants also contend that combining
Wakabayashi and Helwegen would render Wakabayashi unsatisfactory for
its intended purpose of simultaneous capture of a wide angle image and a
2 We understand the Examiner’s reference to “a first and second memory” to
be a reference to the recited first storage location and second storage
location.
3 In rejecting claim 9, the Examiner relies on the same basic findings from
Helwegen, Wakabayashi, and Suzuki as for claim 1. See Final Act. 13—14.
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Application 13/705,563
telephoto image because Helwegen discloses serial capture of images at
different focus positions. Appeal Br. 13.
The Examiner responds that Suzuki “discloses a display method for
displaying two different images with two different fields of view which uses
two different memories for storing different images.” Ans. 18. When
combined with Helwegen and Wakabayashi, “one of ordinary skill in the art
could have easily used two memories for storing the images captured in
Helwegen for displaying two images of different fields of view
simultaneously, as taught by Wakabayashi.” Id. The Examiner also
responds that the rejection relies on Wakabayashi for displaying two images
simultaneously in a live view display “before the final photographing
operation.” Id. at 17. For the following reasons, we sustain the rejection of
claims 1 and 9.
We first construe the term “storage location” as used in claims 1 and
9. During patent prosecution, we give claim terms their broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054^55 (Fed.
Cir. 1997). Although the claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
The Specification describes that “the term ‘storage location’ is defined
as including, but not necessarily limited to, a non-volatile storage medium.”
Spec. 121. We understand this definition to mean that a “storage location”
includes a non-volatile storage medium, and may also include other
unspecified elements. The Specification provides examples of a “non-
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Application 13/705,563
volatile storage medium.” Id. 115. The Specification further provides that
first storage location 20 and second storage location 24, respectively, record
first and second images captured by sensor 16. Id. 125, Fig. 1. Based on
the foregoing, we determine that one of ordinary skill in the art would
reasonably understand a “storage location” to include a non-volatile storage
medium where image files are stored or recorded.
Wakabayashi discloses a process whereby two images, one taken at
the wide side at step S14 and one taken at the tele side at step SI5, are stored
in one file in memory SDRAM 114. Wakabayashi 1120, Figs. 2 and 3.
Appellants’ argument for distinguishing Wakabayashi, i.e., it discloses a
process where two photos are combined into one file and stored in one
location, is not persuasive with respect to the apparatus recited in claims 1
and 9. Appellants do not provide persuasive argument or technical evidence
to show why it would not have been obvious to one of ordinary skill in the
art, based on the teaching of Suzuki cited by the Examiner, that it was well
known in the art to store images from different views in different locations
prior to simultaneous display, to store Wakabayashi’s wide image in a first
storage location in memory SDRAM 114 and the tele image in a second
storage location in memory SDRAM 114. We are, thus, not persuaded by
Appellants’ arguments, stated above, regarding the disclosure of Helwegen,
Wakabayashi, and Suzuki because the arguments amount to an attack on the
references individually while the rejection is based on the combined
teachings of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(One cannot show nonobviousness by attacking references individually
when the rejection is based on a combination of references.).
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The Examiner relies on Wakabayashi to modify Helwegen “to
continuously capture images at different focus positions for a live view
display.” Final Act. 10—11. We are not persuaded by Appellants’
contention that Wakabayashi would be rendered unsatisfactory for its
intended purpose of simultaneous capture of a wide angle image and a
telephoto image because the rejection does not rely on a modification of
Wakabayashi’s image capture process.
For the foregoing reasons, Appellants have not apprised us of error in
the Examiner’s rejection of claims 1 and 9. We, therefore, sustain the
rejection of claims 1 and 9 under 35 U.S.C. § 103(a). Appellants do not
argue separately for the patentability of claims 2, 3, and 5—7, which depend
from claim 1, and claims 10—13, 15, and 16, which depend from claim 9.
Appeal Br. 14. We also sustain the rejection of claims 2, 3, 5—7, 10-13, 15,
and 16 for the same reasons stated above for claims 1 and 9.
Rejection 3
The Examiner rejects claims 8 and 14 as unpatentable over Helwegen,
Wakabayashi, Suzuki, and Shirakawa. Final Act. 17. Claim 8 depends
ultimately from claim 1, and claim 14 depends ultimately from claim 9.
Appeal Br. 18, 20 (Claims App.). Appellants do not argue separately for the
patentability of claims 8 and 14, but rely on the same arguments raised in
connection with claims 1 and 9. Appeal Br. 15. Therefore, we sustain the
rejection of claims 8 and 14 for the same reasons stated above for claims 1
and 9.
Rejection 4
The Examiner finds that Wakabayashi discloses the limitations of
claim 17 except “specifically . . . controlling timing of an application of an
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electrical signal to an optical element to alternately change a focus of the
optical element between a first focus position and a second focus position.”
Final Act. 6—7. The Examiner finds that Helwegen discloses a processor for
controlling an optical element that moves between a first focus position and
a second focus position upon application of an electrical signal. Id. at 7.
The Examiner concludes it would have been obvious to use the “single
optical element and image sensor of Helwegen instead of the plural optical
elements and image sensors of Wakabayashi to capture the wide and tele
images for simultaneous display.” Id.
Appellants, relying on several dictionary definitions, contend that the
limitation “alternately change a focus of the optical element between a first
. . . and second focus position” requires a series of changes back and forth
between the two focus positions, not a single change between the first and
second focus positions. Appeal Br. 9; Reply Br. 2. Appellants argue that
Helwegen does not disclose alternately changing focus because it discloses
only one change from a first zoom angle to a second zoom angle not a series
of changes. Id.
The Examiner responds that “alternately” may be reasonably
construed as “moving from one focus position to another.” Ans. 15; see
Final Act. 4. The Examiner maintains that Helwegen discloses the limitation
because it discloses switching from one focus position to the other. Id.
The Specification describes that the processor controls “a timing of an
application of an electrical signal to an optical element to alternately change
a focus of the optical element between a first focus position and a second
focus position” in the context of streaming images to a screen. Spec. 148
(emphases added), Fig. 7. An ordinary meaning of “streaming” is “relating
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Application 13/705,563
to or being the transfer of data (as audio or video material) in a continuous
stream especially for immediate processing or play back.”4
Helwegen discloses optical device 1 that “comprises a liquid based
zoom lens 10 placed in front of an image sensor 20” that “records am [sic]
image captured by the zoom lens 10.” Helwegen 122. Optical device 1 also
includes processor 30 “coupled to driver circuit 40, which is arranged to
control the zoom lens 10 in response to instructions from the processor 30.”
Id. Optical device 10 is initiated by a user taking an image at a first zoom
angle, and then “processor 30 evaluates the first zoom angle and instructs the
driver circuit to move the zoom lens to a second zoom angle, after which the
processor 30 will automatically activate the recording [of] a second image of
the object 100 at a second zoom angle after recording the first image.” Id. at
127.
We are persuaded by Appellants’ argument that the term “alternately”
in claim 17 requires a series of changes back and forth between the two
focus positions for several reasons. Appellants’ construction, based on
ordinary dictionary definitions of “alternately,” is consistent with the use of
the term “alternately” in the Specification. As discussed above,
“alternately” changing a focus of the optical element between a first focus
position and second focus position is in the context of streaming images to a
display. An ordinary meaning of “streaming” indicates a continuous transfer
of images that requires more than one change of focus positions. The
Examiner relies on Helwegen to disclose this limitation, but does not direct
us to any disclosure in Helwegen of a series of changes back and forth
4 See, e.g., https://www.merriam-webster.com/dictionary/streaming (last
accessed December 14, 2016).
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between the first zoom angle and second zoom angle. Consequently, the
Examiner’s finding that Helwegen discloses the recited processor to control
timing to alternately change a focus of the optical element between a first
focus position and a second focus position is not supported by Helwegen.
As the rejection of claim 17 is based on an unsupported factual finding, the
conclusion of obviousness cannot stand. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967). Therefore, we do not sustain the rejection of claim 17,
and claims 18 and 19, which depend from claim 17.
Rejection 5
The Examiner rejects claim 20 as unpatentable over Wakabayashi,
Helwegen, and Shirakawa. Final Act. 9. Claim 20 depends ultimately from
claim 17. Appeal Br. 22 (Claims App.). The Examiner does not rely on
Shirakawa to cure the deficiencies in the combination of Wakabayashi and
Helwegen stated above in connection with claim 17. Final Act. 9. We,
therefore, do not sustain the rejection of claim 20 for the same reasons stated
above in connection with claim 17.
DECISION
The Examiner’s decision rejecting claims 1—16 is affirmed.
The Examiner’s decision rejecting claims 17—20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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