Ex Parte Teo

Patent Trial and Appeal Board

Aug 30, 2016

13220579 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/220,579 08/29/2011
25096 7590 09/01/2016
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Patrick Teo
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.
032052-8402.USOJ 2082
EXAMINER
PHILIPPE, GIMS S
ART UNIT PAPER NUMBER
2489
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PATRICK TEO
Appeal2015-003862
Application 13/220,579
Technology Center 2400
Before ELENI MANTIS MERCADER, ST JOHN COURTENAY, III, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 123-142,2 which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b)
We affirm.
1 According to Appellant, the real party in interest is Intellectual Ventures I
LLC. (App. Br. 1.)
2 Claims 1-122 were cancelled previously. (App. Br. 12.)
Appeal2015-003862
Application 13/220,579
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to "a camera that acquires fields of view
and combines them together." (Spec. 3.) Claim 123 is illustrative, and is
reproduced below:
123. A method performed by a computing device for
combining images, the computing device having a processor, a
memory, an image sensor, and a housing containing the
processor, the memory, and the image sensor, the method
compnsmg:
capturing, using the image sensor, a first image;
capturing, using the image sensor, a second image;
identifying a first portion of the first image and a second
portion of the second image; and
creating a third image that includes the first portion of the
first image and the second portion of the second image.
Rejections on Appeal
Claims 123-128 and 131-142 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ejiri et al. (US 6,104,840; iss. Aug. 15, 2000)
("Ejiri"). (See Final Office Action (mailed Dec. 24, 2013) ("Final Act.") 3-
5.)
Claims 129 and 130 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ejiri in view of Dunton et al. (US 6,304,284 Bl; pub. Oct.
16, 2001) ("Dunton"). (See Final Act. 5---6.)
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Application 13/220,579
ANALYSIS
Claims 123-130 and 134-142
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
positions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner's Answer in response to Appellant's
Appeal Brief. (Ans. 5-13.) However, we highlight and address specific
findings and arguments for emphasis as follows.
With respect to claim 123, the Examiner finds that "although Ejiri
provides a housing 40 in Fig. 3 comprising a processor 50, a memory 52, it
does not place the image sensor [in digital camera 64] inside the housing."
(Final Act. 4.) Fig. 3 of Ejiri is reproduced below.
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"FIG. 3 is a block diagram illustrating one preferred embodiment of the
composite image generating system." (E j iri, 3: 5-7.) The Examiner finds
that
similar work in the field of image generation may prompt
variations in when the elements are to be combined. This
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Appeal2015-003862
Application 13/220,579
variation will be based on design incentives of or other market
forces if the disposition of the elements inside the housing would
have been predictable to one of ordinary skill in the art. In the
present case the disposition as proposed by the applicant will
result in the same outcome as shown in Ejiri, and the change in
the disposition of the elements is considered an obvious design
choice.
(Id., emphasis added; Ans. 8-9.) In other words, according to the Examiner,
it would have been obvious to one of ordinary skill in the art to have the
image sensor in digital camera 64 in the housing. Appellant contends that
"the distinction between Ejiri and claim 123 is not merely a matter of design
choice because the claimed structure is different from the structure described
in the applied passages ofEjiri, and this difference affects functions which
may be performed by these structures."3 (App. Br. 7-8; Reply 3--4.) For
example, according to Appellant,
these structural differences affect the functionality of the claimed
technology, such as functionality to indicate proper device
orientation for iterative image selection (see e.g.[,] Applicants'
Specification at 5:9-18 ... and immediate display of composite
images (see e.g. Applicants' Specification at 37:2-8 . . . The
system described in the cited passages of Ejiri, which only
performs image combination by providing the images from a
digital camera to a separate combination unit, would not be
operable to perform either of these functions.
(App. Br. 8, emphasis added.)
Appellant's argument is unpersuasive because it is not commensurate
with the scope of the claim. Claim 123 is silent regarding the argued
"functionality to indicate proper device orientation for iterative image
selection ... and immediate display of composite images." (Id.). See In re
3 The issue of whether claim 123 is an improper hybrid claim is not before
us and we do not opine on whether claim 123 is indefinite.
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Appeal2015-003862
Application 13/220,579
Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989) (holding that although the claims
are interpreted in light of the specification, limitations from the specification
are not read into the claims). Further, Appellant has not offered persuasive
argument and/or evidence that the Examiner's interpretation overly broad or
unreasonable.4
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 123 and therefore sustain the 35 U.S.C. § 103 rejection
of claim 123. Independent claims 134 and 139 recite commensurate
limitations at issue and the Examiner cites to the same passages of Ejiri for
this rejection. (Final Act. 3-5.) Thus, we also sustain the 35 U.S.C. § 103
rejection of claim 134 and 139, and of claims 124--130, 132, 135-138, and
140-142 which depend from either claims 123, 134, or 139.
Claims 131 and 132
Claim 131 recites:
131. The method of claim 123 further comprising:
capturing, using the image sensor, a fourth image;
identifying a third portion of the created third image and a
fourth portion of the fourth image; and
creating a fifth image that includes the third portion of the
created third image and the fourth portion of the fourth image.
The Examiner finds, "Ejiri further proposes creating a new image
(could be considered as the claimed 4th image) wherein multiple portions of
overlapping adjacent images provide an additional image." (Final Act. 5;
Ejiri, 2:25-36.) Appellant contends:
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal2015-003862
Application 13/220,579
the cited portion of Ejiri only discusses "a plurality of partially-
overlapping adjacent images [taken] at a fixed location along a
plurality of axes," which does not disclose creating a composite
third image from two captured images and creating a new
composite fourth image by combining the composite third image
with another captured image. The discussion in Ejiri of a
plurality of captured images does not amount to a disclosure,
either explicit or implicit, of three captured images, at least
because the term employed by Ejiri, ''plurality" is fully satisfied
by only two captured images. The cited passage of Ejiri contains
no language to suggest that an image which is a composite of two
captured images would be composited with a third captured
image, as recited.
(App. Br. 10, emphasis added; Reply 5---6.) The Examiner disagrees:
Ejiri clearly show in Figs. IA and IB the combination of more
than just two images as argued by the Appellant. Ejiri never
limited the "plurality" of images to "just two images" while
Appellant is narrowing the scope of Ejiri which uses the term
"plurality" to mean "two" .... In addition, Ejiri further suggest
a filming range in Fig. 1 A where the camera will be taking
images sequentially. The Appellant should note that filming will
require, in some cases, 24 frames per second or 30 frames per
second. Contrary of the Appellant argument, Ejiri will never
restrict performing image stitching by limiting the plurality of
images to just "two images". In fact, Ejiri wants to provide
corrected panoramic view of astronomical images. It should be
clear to the Appellant that the "series of individual images" as
referred to by Ejiri in col. 1, lines 57-61 should be more thanjust
"two images". To the Examiner, in order to provide the corrected
panoramic view of astronomical images, Ejiri will create the
argued "composite third image from two captured images and
creating a new composite fourth image by combining the
composite third image with another captured image."
(Ans. 12-13, emphasis in original.)
Appellant has not persuaded us that the Examiner has erred. As an
initial matter, we agree with the Examiner that "Ejiri never limited the
'plurality' of images to 'just two images."' (Ans. 12.) We agree with the
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Appeal2015-003862
Application 13/220,579
Examiner's finding that the term "plurality" in Ejiri refers to two or more.
Appellant has not offered persuasive argument and/or evidence that the
Examiner's interpretation is unreasonable. In addition, we agree with the
Examiner's finding that Ejiri teaches the limitations at issue. Appellant
further argues:
even if the system in the cited passages of Ejiri is capable of
combining more than two images, the combination of three
images does not amount to first "creating a third image that
includes the first portion of the first image and the second portion
of the second image" and then "identifying a third portion of the
created third image and a fourth portion of the fourth image; and
creating a fifth image that includes the third portion of the created
third image and the fourth portion of the fourth image," as claim
131 recites.
(Reply 5---6, emphasis in original.)
However, Appellant has failed to address the Examiner's specific
findings. Appellant merely asserts the references do not disclose the
limitation at issue. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art."); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Because
Appellant fails to advance separate, substantive arguments addressing the
Examiner's specific findings, on this record, we are not persuaded the
Examiner erred.
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 131 and therefore sustain the 35 U.S.C. § 103 rejection
of claim 131 and of claim 132, which depends from claim 131.
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Appeal2015-003862
Application I3/220,579
Claim I33 recites:
Claim 133
I33. The method of claim I23 further comprising locking a
focus of the image sensor such that the first image and the
second image are captured at a same focal length.
Appellant contends that the Examiner fails "to identify any portion of
Ejiri that disclose these features" of claim I33. We find that it would have
been obvious to a person of ordinary skill in the art, in view of Ejiri, that the
first and second images are captured at a same focal length. Ejiri teaches
that a "composite image is generated from partially overlapping adjacent
images taken at a single location along a plurality of axes." (Ejiri, Abstract;
I :20-25, 2: I2-36.) The overlapping adjacent images are then stitched
together to "generate a stitched panoramic image" as shown in FIGs. IA and
IB. (Ejiri, 4:63-5:6.) FI Gs IA and IB of Ejiri are reproduced below.
,., .. --
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FIG IA depicts "a composite picture or images generated from a plurality of
partially overlapping images that are taken at a single location." (Ejiri,
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Appeal2015-003862
Application 13/220,579
2:63---67.) It would have been obvious to a person of ordinary skill in the art
that these adjacent images would need to be captured at the same focal
length (if the camera is at about the same position) in order for the images to
be stitched together. Moreover, FIG IA shows that the images are captured
at the same focal length. The building in the images would appear to be of
different sizes if the images are captured in different focal length because the
position of the camera is fixed. For the foregoing reasons, we are not
persuaded of Examiner error in the rejection of claim 133 and therefore
sustain the 35 U.S.C. § 103 rejection of claim 133.
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Application 13/220,579
DECISION
We affirm the Examiner's decision rejecting claims 123-142 under 35
U.S.C. §103(a).
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
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