Ex Parte Wirth

Board of Patent Appeals and Interferences

May 3, 2012

10004107 (B.P.A.I. May. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JOHN WIRTH, JR. 8
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10
Appeal 2010-010200 11
Application 10/004,107 12
Technology Center 3600 13
___________ 14
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
Appeal 2010-010200
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STATEMENT OF THE CASE1 1
John Wirth, Jr. (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 1-78 and 83-86, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of browsing and ordering from catalogs 6
via the Internet (Specification 1:4-5). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method of browsing a product catalog via a 11
telecommunications network comprising: 12
[1] for each page of said product catalog, 13
storing in a first device connected to said network 14
a low resolution image file of a predefined size 15
for providing a separate low resolution image of 16
said catalog page, 17
each of said catalog pages containing 18
at least one product image and text 19
for identifying and purchasing products presented 20
on said catalog page, 21
said low resolution catalog page image displaying 22
said product image and text in the format 23
of a printed catalog page, 24

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 2, 2007) and Reply Brief (“Reply Br.,” filed June 2,
2010), and the Examiner’s Answer (“Ans.,” mailed April 2, 2010).
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[2] transmitting from a second device connected to said 1
network 2
at least one request for at least one page of said product 3
catalog, 4
[3] transmitting from said first device 5
in response to said at least one page request 6
said low resolution image file of said requested catalog 7
page, 8
[4] for each product displayed on said low resolution image of 9
said requested catalog page, 10
storing in said first device 11
a plurality of files 12
from which a separate detailed presentation 13
of said product is prepared, 14
[5] transmitting from said second device 15
at least one second request 16
for one of said detailed product presentations, 17
and 18
transmitting from said first device 19
in response to said at least one second request 20
a detailed product presentation file 21
for displaying said detailed product 22
presentation, 23
[6] said presentation comprising at least 24
a high resolution photograph of said product 25
and 26
an order data block containing at least 27
one entry of ordering information for said product 28
and 29
a corresponding link 30
for each ordering information entry 31
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for directly purchasing said product. 1
The Examiner relies upon the following prior art: 2
Parulski US 5,440,401 Aug. 8, 1995
Harold's website (www.harolds.com) 3
HTML Image Spitter 1.36-speed up loading of huge images 4
(www.imagecure.com) 5
Claims 1-78 and 83-86 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Harolds, Parulski, and Image Splitter. 7
ISSUES 8
The issue of obviousness turns primarily on whether the art applied 9
shows it was predictable to use low resolution images on electronic catalog 10
pages and high resolution images on detail pages for each independent claim 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art 15
Harold 16
01. Harold is directed to an online shopping catalog with exemplary 17
images. 18
Image Splitter 19
02. Image Splitter is directed to a tool for fragmenting images to 20
speed up image loading. 21
03. Parulski 22
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03. Parulski is directed to digital image processing systems for 1
facilitating the selection of stored images by storing an index 2
image data file containing a low resolution digitized image of each 3
of a plurality of respectively different higher resolution digitized 4
images. Parulski 1:6-11. 5
04. The selection of high resolution images from a large image 6
database can be accomplished more quickly and easily if the 7
image data is preprocessed and stored so as to facilitate rapid 8
access of subsampled versions of the high resolution image data. 9
The selection of images from the database is facilitated by storing 10
in the same database as the high resolution images, but as a data 11
file that is separate from each of the plurality of high resolution 12
image-representative data files, an index data file. This index data 13
file contains low resolution image-representative data files, one 14
for each of the plurality of high resolution image-representative 15
data files. Because the index data file contains a `subsampled 16
copy` of each image, browsing through a stored `box of slides` to 17
locate a particular image is readily accomplished by displaying 18
only a single file--the index file, thereby providing the viewer with 19
a montage of miniature images by accessing only a single file. 20
Because the index image data needed to create the montage is 21
stored in a single contiguous data file, rather than in a plurality of 22
large, high resolution image files, the time required to access the 23
data needed for the montage of miniature pictures is reduced 24
significantly. Moreover, it is possible to quickly access the low 25
resolution images and display them one at a time, rapidly one after 26
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the other, as an alternative way of locating a desired image. 1
Parulski 1:50 – 2:18. 2
05. Accompanying each low resolution image within the index file is 3
an identifier that points to its associated high resolution image file, 4
so that the viewer may readily call up and display the high 5
resolution image associated with the selected low resolution 6
image. Parulski 2:19-31. 7
ANALYSIS 8
The Examiner applied Harold’s for the bulk of claim 1, which recites 9
conventional electronic catalog browsing. The only aspects of claim 1 10
Harold’s cannot show is the low and high resolution dichotomy between 11
catalog and detail web pages. For this, the Examiner applied Parulski to 12
show that one of ordinary skill knew to employ such a dichotomy and Image 13
Splitter to show that image loading speed is inversely related to image size. 14
Ans. 3-6. 15
We are not persuaded by the Appellant’s argument that the art applied 16
fails to show low resolution images on electronic catalog pages and high 17
resolution images on detail pages for each independent claim. Appeal Br. 18
29-36. The Appellant's contention does not persuade us of error on the part 19
of the Examiner because the Appellant responds to the rejection by attacking 20
the references separately, even though the rejection is based on the 21
combined teachings of the references. Nonobviousness cannot be 22
established by attacking the references individually when the rejection is 23
predicated upon a combination of prior art disclosures. See In re Merck & 24
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One of ordinary skill would 25
have immediately seen that Harold’s electronic catalog web pages are 26
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implementations of an index to Harold’s detail pages. Parulski shows the 1
benefits of using low resolution index images to detail high resolution 2
images. 3
We are not persuaded by the Appellants’ argument that Harold does not 4
show individual products in each catalog image. What constitutes a product 5
is a matter of marketing, not technology. Plural items may constitute a 6
single product, and any image of plural items at least makes a comparable 7
set of images, one per item, at least predictable to those in the marketing and 8
product promotion arts. 9
We are persuaded by the Appellant’s argument that the art applied fails 10
to show the separate files of dependent claims 3, 4, 10, 11, 17 and 18. The 11
Examiner made no findings in this regard. Although Appellant argues that 12
independent claim 19 has similar limitations, we find that claim 19 does not 13
recite separate files as in claims 3, 10, and 17. 14
CONCLUSIONS OF LAW 15
The rejection of claims 1, 2, 5-9, 12-16, 19-78 and 83-86 under 35 16
U.S.C. § 103(a) as unpatentable over Harolds, Parulski, and Image Splitter is 17
proper. 18
The rejection of claims 3, 4, 10, 11, 17 and 18 under 35 U.S.C. § 103(a) 19
as unpatentable over Harolds, Parulski, and Image Splitter is improper. 20
DECISION 21
The rejection of claims 1, 2, 5-9, 12-16, 19-78 and 83-86 is affirmed. 22
The rejection of claims 3, 4, 10, 11, 17 and 18 is reversed. 23
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED-IN-PART 5
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MP 9