Thompson, Mark et al.

Patent Trials and Appeals Board

Jan 16, 2020

12782404 - (D) (P.T.A.B. Jan. 16, 2020)

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.
12/782,404 05/18/2010 Mark Thompson H0003-002002 4594
26653 7590 01/16/2020
KRISTOFER E. ELBING
187 PELHAM ISLAND ROAD
WAYLAND, MA 01778
EXAMINER
TARKO, ASMAMAW G
ART UNIT PAPER NUMBER
2482
MAIL DATE DELIVERY MODE
01/16/2020 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 MARK THOMPSON, ROBERT M. LUPA,
and PHILIP A. MUNIE
____________________

Appeal 2018-004283
Application 12/782,404
Technology Center 2400
____________________

Before ALLEN R, MacDONALD, CAROLYN D. THOMAS, and
DAVID CUTITTA, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 1–32. Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Hunter Systems Group,
Inc., Ltd. Appeal Br. 1.
Appeal 2018-004283
Application 12/782,404

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A mug shot acquisition system for acquiring mug shot
images of a subject posed in front of a background, including a
processor and a storage device including instructions
configured to run on the processor, comprising:
[A.] an image acquisition interface operative to receive digital
mug shot images from an imaging device that is positioned
to acquire images of the subject posed in front of the
background,
[B.] a user interface presented on a display and responsive to
system user input, including:
[i.] a control to cause a mug shot image to be acquired by
the imaging device,
[ii.] an image viewing display responsive to the image
acquisition interface and operative to display the
received digital mug shot images,
[ii.] one or more standards-based image adjustment
software tools
[a.] operative to provide feedback to the user about
compliance of acquired images to at least one
predetermined mug shot uniformity standard, and
[b.] operative to prevent the user from exporting the
digital mug shot images that fail to meet the
predetermined mug shot uniformity standard, and
[c. operative] to allow the user to adjust the digital
mug shot images to meet the predetermined mug
shot image uniformity standard,
[C.] a software interface constructed to allow a transfer of
control to the mug shot acquisition system from another
application that is running on an operating system platform
and wherein the software interface also includes a user
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Application 12/782,404

3
interface presented on the same display and also responsive
to system user input, and
[D.] an image export interface operative to export digital mug
shot images adjusted based on the standards-based image
adjustment software.

REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Lawrence US 2004/0024694 A1 Feb. 5, 2004
Xiong “Mugshot Database Acquisition In
Video Surveillance Networks Using
Incremental Auto-Clustering Quality
Measures;” Proceedings of the IEEE
Conference on Advanced Video and
Signal Based Surveillance (AVSS'03).
2003

REJECTIONS
The Examiner rejects claims 1–3, 8, 17, 18, 20, 22, and 24–30 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Xiong and
Lawrence. Non-Final Act. 3–7. We select claim 1 as the representative
claim for this rejection. The contentions discussed herein as to claim 1 are
determinative as to this rejection.
The Examiner rejects claims 4–7, 9–16, 19, 21, 23, 31, and 32 under
35 U.S.C. § 103(a) as being unpatentable over various combinations of
Xiong, Lawrence, and numerous other references. Non-Final Act. 7–10.

2 All citations herein to the references are by reference to the first named
inventor/author only.
Appeal 2018-004283
Application 12/782,404

4
The contentions discussed herein as to claim 1 are determinative as to these
rejections.
Therefore, except for our ultimate decision, we do not address claims
2–32 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
We determine that the Examiner’s June 29, 2016, non-final rejection
is silent as to the “operative to provide feedback to the user” limitation of
claim 1.
B.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Lawrence discloses using images from cameras to assess risk and
Xiong discloses automatic evaluation of mug shot candidates.
Neither of them discloses 1) “one or more standards-based image
adjustment software tools operative to provide feedback to the
user about compliance of acquired images to at least one
predetermined mug shot uniformity standard[.]”
Appeal Br. 5 (emphasis added).
C.
The Examiner responds:
Xiong teaches one or more standards-based image
adjustment software tools operative to provide feedback to the
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Application 12/782,404

5
user about compliance of acquired images to at least one
predetermined mug shot uniformly standard (Section 1 last
paragraph, “as mug shot candidates with high intrinsic value are
produced, they are only added to the mugshot database if, by
doing so, the overall quality of the database is increased
. . .” . . . (abstract; sections 1, 5 and 6). Therefore, this
argument is not persuasive.
Ans. 14 (additional emphasis added).
D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejections do not adequately
explain the Examiner’s findings of fact.
Particularly, we agree with Appellant that the language of claim 1
requires the software tools be “operative to provide feedback to the user,”
and we disagree with the Examiner’s belated reasoning in the Answer that
Xiong alone without more is sufficient to show such a feedback function.
Ans. 4. Our concern is that we find nothing in the Examiner’s reasoning that
even arguably shows the Xiong reference describes “feedback to the user.”
We conclude, consistent with Appellant’s arguments, that there is
insufficient articulated reasoning to support the Examiner’s finding that
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Application 12/782,404

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Xiong teaches, “standards-based image adjustment software tools operative
to provide feedback to the user,” as required by claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–32 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejections of claims 1–32 as being unpatentable under
35 U.S.C. § 103(a) are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–32 103(a) Xiong, Lawrence 1–32
Overall
Outcome

1–32

REVERSED