Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Feb 1, 2022

2021000318 (P.T.A.B. Feb. 1, 2022)

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. 14/465,915 08/22/2014 Dong-Hyun YEOM 4500-1-327 1022 33942 7590 02/01/2022 Cha & Reiter, LLC 17 Arcadian Avenue Suite 208 Paramus, NJ 07652 EXAMINER PYO, MONICA M ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 02/01/2022 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONG-HYUN YEOM, GEON-SOO KIM, SANG-MIN HUH, and MIN-KYUNG HWANG ________________ Appeal 2021-000318 Application 14/465,915 Technology Center 2100 ____________ Before JAMES R. HUGHES, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, 9-12, 14-17, 19, 20, 22, and 23. Claims 8, 13, 18, and 21 are canceled. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Samsung Electronics Co., Ltd., as the real party in interest. Appeal Br. 3. Appeal 2021-000318 Application 14/465,915 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to a file management technique for mobile terminals and other electronic devices. Spec. 4:13-14. Specifically, the application describes uploading a copy of an original file from a mobile terminal to a remote storage device and replacing the original file with an optimized file that may be smaller in size than the original file. See id. at 4:14-23. The original file can be provided back to the mobile terminal when the optimized file is displayed and a predetermined input is sensed. See id. at 5:17-19. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method in an electronic device, the method comprising: establishing a network connection with a storage device; transmitting an image file to the storage device from the electronic device after establishing the network connection with the storage device; identifying, in response to the transmitting of the image file, a lower resolution image file corresponding to the image file; in response to identifying the lower resolution image file, storing, in a memory of the electronic device, the lower resolution image file as replacement of the image file; receiving a user input for receiving the image file from the storage device, wherein the user input is associated with a portion of a display included in the electronic device where the lower resolution image file is displayed; displaying, in response to the user input, an enlarged lower resolution image file while receiving the image file from the storage device; and Appeal 2021-000318 Application 14/465,915 3 displaying, in response to the receiving of the image file, the received image file on the display as a replacement of the enlarged lower resolution image file. The Examiner’s Rejections Claims 1, 6, 11, and 16 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2-4. Claims 1-7, 9-12, 14-17, 19, 20, 22, and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Lee (US 2011/0047190 A1; Feb. 24, 2011) and Krishnamurthy (US 2013/0212540 A1; Aug. 15, 2013). Final Act. 5-8.2 ANALYSIS Written Description The Examiner finds the Specification fails to provide written description support for the following claim 1 limitations: identifying, in response to the transmitting of the image file, a lower resolution image file corresponding to the image file; in response to identifying the lower resolution image file, storing, in a memory of the electronic device, the lower resolution image file as replacement of the image file; 2 Although the Examiner’s statement of the rejection identifies “U.S. 2011/0047190 (hereinafter Lee) in view of U.S. 2012/0131446 (hereinafter Park),” the Examiner cites only to Lee and “Krishnamurthy” throughout the explanation of the rejection. See Final Act. 5-8. Appellant identifies US 2013/0212540 A1 as the “Krishnamurthy” referred to in the rejection. Appeal Br. 16 n.1. The Examiner’s citations in the Final Action are consistent with the disclosure in US 2013/0212540 A1, and the Examiner has not corrected Appellant as to the basis for the rejection. Ans. 6-8. Accordingly, we treat the Examiner’s obviousness rejection as being based upon Lee and Krishnamurthy (US 2013/0212540 A1). Appeal 2021-000318 Application 14/465,915 4 . . . displaying, in response to the user input, an enlarged lower resolution image file while receiving the image file from the storage device; and displaying, in response to the receiving of the image file, the received image file on the display as a replacement of the enlarged lower resolution image file. Final Act. 3-4; Ans. 4-6. Appellant argues the Examiner errs because Figures 4, 14A, and 14B, along with the accompanying description in the Specification, provide support for the disputed limitations. See Appeal Br. 12-16; Reply Br. 3-7. In particular, Appellant argues that steps 430 and 440 in Figure 4, which describe generating an optimized file and replacing the original file with the optimized file, support the “identifying” step recited in claim 1 because “[t]he act of replacing inherently involves identifying something to be replaced, and identification of a replacement.” Appeal Br. 13-14. Appellant further argues that in the example shown in Figures 14A and 14B, “[i]n response to the pinch out gesture the file 1400 (optimized file) is first zoomed ‘displaying, in response to the user input, an enlarged lower resolution image file’ and when zoomed in excess of a reference zoom, the original file 1410 is requested or ‘while receiving the image file from the storage device.’” Id. at 15. Appellant has persuaded us of Examiner error. Adequate written description support depends on “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). We find that the steps of generating an optimized file and replacing the original Appeal 2021-000318 Application 14/465,915 5 file with the optimized file, as shown in Appellant’s Figure 4, would have reasonably conveyed possession of the claim 1 subject matter of identifying a lower resolution image file and, in response to this identification, storing the lower resolution image file. In particular, the Specification describes generating an optimized file by, among other things, changing a resolution of an original file. Spec. 18:26-19:7. The Specification further describes replacing the original file by, for example, “deleting the original file from the memory (e.g., volatile and/or non-volatile memory) of the electronic device 100 and retaining only the optimized file in the memory of the electronic device 100.” Id. at 19:13-17. Here, an ordinarily skilled artisan would have understood that for the optimized file to replace the original file, the electronic device must necessarily identify the optimized file to retain in memory for this purpose. In another embodiment, the Specification describes receiving the optimized file from the storage device. See id. at 20:13-21:17, Fig. 5. In this case, it would have been clear to an ordinarily skilled artisan that part of the replacement process would involve identifying the optimized file. Otherwise, the electronic device would not know that the file received from the storage device is the optimized file for replacing the original file. We further find that the embodiment shown in Appellant’s Figures 14A and 14B would have reasonably conveyed possession of the claim 1 subject matter of “displaying, in response to the user input, an enlarged lower resolution image file while receiving the image file from the storage device” and “displaying, in response to the receiving of the image file, the received image file on the display as a replacement of the enlarged lower resolution image file.” In particular, the Specification describes performing Appeal 2021-000318 Application 14/465,915 6 “a pinch gesture on the optimized file” to zoom in such that “[w]hen the user desires the optimized image file to be zoomed in excess of a reference zoom ratio, the electronic device 100 may request the original file corresponding to the optimized file 1400 from the storage device 10.” Spec. 24:17-21. An ordinarily skilled artisan would have understood that in order to perform a pinch gesture on the optimized file it would have to be displayed. Accordingly, the Specification would have sufficiently conveyed “displaying, in response to the user input, an enlarged lower resolution image file [the zoomed in optimized file] while receiving the image file from the storage device.” The Specification also describes that “[a]fterwards, the electronic device 100 may display the original image file 1410 in place of the optimized image file 1400” (id. at 24:24-25), which provides adequate written description support for “displaying, in response to the receiving of the image file, the received image file on the display as a replacement of the enlarged lower resolution image file.” For these reasons, we do not sustain the written description rejection of claim 1. We also do not sustain the written description rejection of independent claims 6, 11, and 16, each of which recite commensurate subject matter-at least with respect to displaying an enlarged lower resolution image file and displaying a received image file3-for which the Examiner relies on the same findings. 3 Appellant argues that claims 11 and 16 do not recite limitations commensurate with the “identifying” limitation in claim 1 (Appeal Br. 16), but the point is moot because we do not sustain any written description rejections. Appeal 2021-000318 Application 14/465,915 7 Obviousness The Examiner finds the combination of Lee and Krishnamurthy teaches or suggests all the limitations of claim 1. Final Act. 5-8. In particular, the Examiner finds Krishnamurthy teaches “receiving a user input for receiving the image file from the storage device, wherein the user input is associated with a portion of a display included in the electronic device where the lower resolution image file is displayed” and “displaying, in response to the user input, an enlarged lower resolution image file while receiving the image file from the storage device.” Final Act. 5-6. Appellant argues the Examiner errs because “Krishnamurthy does not teach any input for enlarging a lower resolution picture and requesting an original picture, where the original picture replaces the enlarged lower resolution picture.” Appeal Br. 17 (emphasis omitted). Appellant has persuaded us of Examiner error. Claim 1 requires “a user input” that causes both “receiving the image file from the storage device” and “displaying. . . an enlarged lower resolution image file while receiving the image file from the storage device.” For the “user input” and “displaying. . . an enlarged lower resolution image file” limitations, the Examiner appears to rely (Final Act. 6; Ans. 7) on Krishnamurthy’s disclosure that a “user may perform functions such as scrolling, zooming, and panning the digital images in a faster manner” (Krishnamurthy ¶ 4 (emphasis added)). For the “receiving the image file from the storage device” limitation, the Examiner appears to rely (Final Act. 6; Ans. 7) on Krishnamurthy’s disclosure that “if the user accesses a particular cached image (which is of reduced resolution/thumbnail view of the cached image) for a longer duration, the original image may be cached in the set of cached Appeal 2021-000318 Application 14/465,915 8 images” (Krishnamurthy ¶ 45). We find the Examiner’s findings fall short of teaching the disputed limitations. Even if Krishnamurthy’s zoom function suggests “displaying. . . an enlarged lower resolution image file,” the Examiner has not shown Krishnamurthy teaches or suggests using the zoom function to trigger “receiving the image file from the storage device,” as recited in claim 1. Specifically, the Examiner has not identified any connection in Krishnamurthy between the general ability of a user to perform a zoom function (see Krishnamurthy ¶ 4) and caching an original image corresponding to a reduced resolution image (see id. ¶ 45). Rather, Krishnamurthy specifically describes that the trigger for caching an original image is accessing a reduced resolution image for “a longer duration.” See id. In the Answer, the Examiner highlights (Ans. 6-7) Krishnamurthy’s disclosure that “[o]nce a digital image is rendered on the display, navigation by the user, such as a finger movement on the display or scrolling done by the user, results in new digital images being fetched from the disk, decompressed, scaled and rendered on the display” (Krishnamurthy ¶ 4). But here, an ordinarily skilled artisan would not have understood “navigation by the user, such as a finger movement” (id.) to include a zoom function that would result in “an enlarged lower resolution image file,” as claimed. In Krishnamurthy, navigation refers to moving from one set of images to the next, not altering the version of a particular image. See, e.g., Krishnamurthy ¶ 39 (“The set of cached images 302 is updated based on the navigation pattern.”). Further, an ordinarily skilled artisan would not have understood fetching “new” images (id. ¶ 4) to include fetching original images Appeal 2021-000318 Application 14/465,915 9 corresponding to reduced resolution images. Rather, one would have understood “new” to mean different images entirely, given the context of Krishnamurthy’s invention, which allows a user to “move from one image to another by selecting a direction.” Id. at Abstr. So, the Examiner’s reliance on Krishnamurthy’s navigation functionality fails to teach zooming in to a reduced resolution image to receive an original image. Accordingly, the Examiner has not shown Krishnamurthy teaches or suggests using a user input, such as a zoom function, for not only enlarging a lower resolution image file, but also for triggering the receipt of an image file from a storage device, as claimed. Nor has the Examiner specifically explained why it would have been obvious to one of ordinary skill in the art to combine any features in Krishnamurthy that would result in the disputed subject matter. See Final Act. 5-6; Ans. 6-8. For these reasons, we do not sustain the obviousness rejection of independent claim 1. We also do not sustain the rejection of independent claims 6, 11, and 16, which recite commensurate subject matter for which the Examiner relies on the same findings. We also do not sustain the rejection of dependent claims 2-5, 7, 9-10, 12, 14, 15, 17, 19, 20, 22, and 23 for the same reasons. CONCLUSION The Examiner’s decision rejecting claims 1-7, 9-12, 14-17, 19, 20, 22, and 23 is reversed. Appeal 2021-000318 Application 14/465,915 10 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 11, 16 112 Written Description 1, 6, 11, 16 1-7, 9-12, 14-17, 19, 20, 22, 23 103 Lee, Krishnamurthy 1-7, 9-12, 14-17, 19, 20, 22, 23 Overall Outcome 1-7, 9-12, 14-17, 19, 20, 22, 23 REVERSED