Ex Parte Sivadas

Patent Trial and Appeal Board

Dec 31, 2018

12829122 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/829, 122 07/01/2010
10949 7590 01/03/2019
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Sunil Sivadas
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.
042933/391156 7949
EXAMINER
JIAN, SHIRLEY XUEYING
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNIL SIV ADAS
Appeal 2018-002931
Application 12/829, 122 1
Technology Center 3700
Before BRETT C. MARTIN, PAUL J. KORNICZKY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Nokia Technologies
Oy. Appeal Br. 2.
Appeal2018-002931
Application 12/829, 122
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 of the Examiner's rejection
of claims 1, 3, 4, 6-14, 21, 22, 28-30, and 32-34. Claims 2, 5, 15-20, 23-
27, and 31 were canceled during prosecution. See Claims App'x. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
THE INVENTION
Appellant's claims are directed generally "to responding to changes in
a tracked emotional condition of a user." Spec. 1, 11. 4--5. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
monitoring, by a processor, device inputs to a messaging
application of a device, wherein the device inputs are from a user
and create a content item of a message;
using, by a processor, the device inputs to track an
emotional condition of the user by making a determination as to
an emotional condition of the user, and updating the emotional
condition of the user periodically;
determining by a processor whether a change in the
tracked emotional condition of the user has occurred within a
given time period based, at least in part, on the monitored device
inputs;
in response to a processor determining that a change has
occurred based, at least in part, on the monitored device
inputs, causing a processor operably coupled to at least one
memory, to control a camera to capture a photograph of the
user such that the photograph is stored in the at least one
memory, and inserting, by a processor, the photograph into
the content item of the message; and
in response to a processor determining that a change has
not occurred continuing to monitor device inputs without
causing the camera to capture a photograph and store a
photograph in at least one memory.
2
Appeal2018-002931
Application 12/829, 122
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Van Stuivenberg
Perdomo
Jung
Hoberg
Isobe
US 2006/0252455 Al
US 2008/0027984 Al
US 2009/0024050 Al
US 2010/0022279 Al
US 2011/0093272 Al
REJECTIONS
The Examiner made the following rejections:
Nov. 9, 2006
Jan. 31, 2008
Jan. 22, 2009
Jan.28,2010
Apr. 21, 2011
Claims 1, 3, 7-10, 14, 21, 22, 28-30, and 32 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Hoberg and Van Stuivenberg.
Final Act. 3.
Claims 4, 6, 11, and 13 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hoberg, Van Stuivenberg, and Perdomo. Final Act.
7.
Claims 12 and 34 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hoberg, Van Stuivenberg and Jung. Id.
Claim 33 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hoberg, Van Stuivenberg, and Isobe. Final Act. 8.
ANALYSIS
All of the Examiner's rejections rely on the combination of Hoberg
and Van Stuivenberg. All of the independent claims contain limitations
similar to that found in claim 1 regarding automatic control of a camera to
capture a photograph. Because we disagree with the Examiner regarding the
3
Appeal2018-002931
Application 12/829, 122
combination teaching this limitation, we do not sustain the Examiner's
rejections.
The Examiner finds generally that Hoberg teaches all aspects of claim
1, but fails to teach the automatic capture of a photograph, though it does
teach the insertion of music, emoticons, or other media. Ans. 3--4. The
Examiner then finds that Van Stuivenberg teaches the inclusion of
photographs into messages and also teaches "that emoticons and snapshot
photographs are functional equivalents in conveying a user's mood in
response to an event." Id. at 4. As such, the Examiner concludes that it
would have been obvious to substitute the photographs disclosed in Van
Stuivenberg for the emoticons disclosed in both Hoberg and Van
Stuivenberg. Id.
While we do not disagree with the Examiner's fact findings as to the
references, we do disagree with the conclusion as to obviousness. If the
claim merely required substitution of an emoticon with a photograph, then
the Examiner would be correct. The claims, however, require devices and
methods for automatically capturing a photograph in response to a change in
emotional condition of the user. At best, both Hoberg and Van Stuivenberg
teach retrieving existing data from their devices for inclusion into a message.
This is different from the claims, which require capturing of a new
photograph that did not exist prior to the generation of the message. As
Appellant correctly states, "Van Stuivenberg only intends to control the
camera by traditionally known user input means." Reply Br. 3.
In order for us to sustain the Examiner's rejection, the prior art needs
to disclose more than the existence of a camera and the ability to include
photographs in messages. There must be some control mechanism for
automatically taking a new photo "in response to a processor determining
4
Appeal2018-002931
Application 12/829, 122
that a change has occurred." Neither Hoberg nor Van Stuivenberg includes
disclosure of such automatic control of the camera to capture a new photo in
response to a change. Accordingly, we do not sustain the Examiner's
rejections.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1, 3, 4, 6-14, 21, 22, 28-30, and 32-34.
REVERSED
5