Ex Parte Al-Salman et al

Patent Trial and Appeal Board

Mar 28, 2017

12832612 (P.T.A.B. Mar. 28, 2017)

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.
12/832,612 07/08/2010 AbdulMalik S. AL-SALMAN 6002-40002/K003 4772
25570 7590 03/30/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
MCLEAN, NEIL R
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABDULMALIK S. AL-SALMAN, ALI Y. EL-ZAART,
KHALID A. AL-HOKAIL, YOUSEF A. AL-SUHAIBANI, and
ABDULAZIZ O. ALQABBANY
Appeal 2014-008823
Application 12/832,6121
Technology Center 2600
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify King Abdulaziz City for Science and Technology as
the real party in interest. App. Br. 2.
Appeal 2014-008823
Application 12/832,612
THE INVENTION
The disclosed and claimed invention is directed to a braille copy
machine using image processing techniques. Spec. ^ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A Braille copy machine, comprising:
a processor configured to detect at least one Braille cell
from a scanned image of an original Braille document, wherein
the detecting comprises determining a coordinate and a code for
the at least one Braille cell; and
an embosser configured to create an embossed copy of the
original Braille document based on the determined coordinate
and code for the at least one Braille cell.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Yasuda US 5,920,649 July 6, 1999
Butler US 2005/0129283 A1 June 16,2005
Optical Braille Recognition System User Manual, Document Version 3.7.0,
January 2004, © 1998-2004 by Neovision s.r.o. (hereinafter “OBR User’s
Manual”)
REJECTIONS
Claims 1—4, 6-11, 13, 15-17, and 19 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Yasuda in view of Butler. Final
Act. 4-9.
Claims 5, 12, 14, 18, and 20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Yasuda in view of Butler and OBR
User’s Manual. Final Act. 9-11.
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1-5, 8, 9,
and 11-14. However, based on the current record, Appellants have
persuaded us the Examiner erred in rejecting claims 6, 7, 10, and 15-20.
Claims 1—5, 8, 9, 11, 13, and 14
Appellants argue the Examiner erred in finding Butler teaches “an
embosser configured to create an embossed copy of the original Braille
document based on the determined coordinate and code for the at least one
Braille cell,” as recited in claim 1. App Br. 3-6. Specifically, Appellants
contend that although Butler teaches “a Braille embosser integrated in a
multifunction device,” Butler only mentions the embosser as an afterthought
and Butler does not teach or suggest creating an embossed copy based on the
determined coordinates and codes. Id. at 4-5. That is, according to
Appellants, “Butler does not disclose that the embosser is capable of
producing an embossed copy based on a coordinate and code for a Braille
cell” and “Butler is silent as to how the embosser creates an embossed
copy.” App. Br. 6.
Appellants further argue “there is no teaching or suggestion in these
[prior art] documents of creating an embossed copy based on the coordinate
and code.” App. Br. 5.
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Application 12/832,612
Additionally, in the Reply Brief, Appellants argue the Examiner has
not provided a sufficient rational for combining the teachings of Yasuda and
Butler. Reply Br. 4.
The Examiner finds Yasuda teaches, inter alia, “determining a
coordinate . . . and a code for the at least one Braille cell.” Final Act. 5
(citing Yasuda 1:37-39, 8:45^18). The Examiner further finds Butler
teaches various types of output, including a Braille embosser which can be
used to allow a blind user to determine which documents are hers. Final
Act. 5 (citing Butler ^ 6,1, 18, 31, 32). The Examiner finds the
combination of the teachings of the two references teach the embosser
limitation recited in claim 1 and that “[t]he suggestion/motivation for doing
so is to provide a finished product” which can be read by a blind person. Id.;
see also Ans. 3 (finding the embosser limitation “is taught by the
combination of Yasu[d]a in view of Butler” (emphasis omitted)).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellants’ arguments are directed to the
reference individually and not the combined teachings, we are not persuaded
by Appellants’ arguments that the Examiner erred. Instead, for the reasons
discussed below, we agree with and adopt the Examiner’s findings.
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Our reviewing court guides that “the question under 35 USC § 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807-08 (Fed. Cir. 1989). Moreover, “[e]very patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that [which is] disclosed. . . .” In re Bode, 550 F.2d 656, 660
(CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)).
Those persons “must be presumed to know something” about the art “apart
from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Additionally, the skilled artisan is “[a] person of ordinary creativity,
not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Furthermore, there is no requirement in an obviousness analysis for the prior
art to “contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978).
The Examiner finds—and Appellants do not challenge—Yasuda
teaches, inter alia, “determining a coordinate . . . and a code for the at least
one Braille cell.” See Final Act. 5. The Examiner further finds, and we
agree, Butler teaches using an embosser to print a document or portion of a
document so that a blind person can determine which documents belongs to
her. See Final Act. 5. And contrary to Appellants’ arguments, this is not an
“afterthought.” Instead, the use of the embosser to make tactile readable
markings—that is Braille characters—is mentioned in the Abstract, the
claims, and various sections of the specification. See, e.g., Butler Abstract,
18, 31, 32, claims 1, 8. Accordingly, Butler teaches and suggests using
an embosser to print Braille characters so it could be read by a blind person.
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We further agree with the Examiner that person of ordinary skill in the art
would have based the document sent to the Butler embosser for embossing
with Braille cells on the coordinates and code determined by the Yasuda
embosser. Accordingly, the combination of the Butler embosser using the
coordinate and codes determined in Yasuda teaches or suggests the
embosser recited in claim 1.
Appellants’ argument that the bodily incorporation of the Butler
embosser into the Yasuda system will not result in the claimed invention is
similarly unavailing. “The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead,
the relevant issue is “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In reNievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”).
Furthermore, the Supreme Court has determined the conclusion of
obviousness can be based on the interrelated teachings of multiple patents,
the effects of demands known to the design community or present in the
marketplace, and the background knowledge possessed by a person having
ordinary skill in the art. KSR, 550 U.S. at 418; id. at 416 (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”). “[T]he analysis need
not seek out precise teachings directed to the specific subject matter of the
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challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418. In
other words, “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” Id. at 417. We agree with the
Examiner the prior art contains known solutions that have been used to
improve one device and that a person of ordinary skill in the art would have
recognized that these same solutions could have been used to improve other
prior art devices in a predicable way. Appellants have not persuasively
shown that it would have been “uniquely challenging or difficult for one of
ordinary skill in the art” to make the modifications suggested by the
Examiner and base have the created Braille document based on the
coordinate and codes. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Therefore,
we are not persuaded by Appellants’ arguments that the Examiner erred in
combining the prior art references.
Additionally, Appellants’ argument that there is no teaching or
suggestion in the prior art (see App. Br. 5) is based on an incorrect statement
of law. In KSR, the Supreme Court rejected the rigid application of the
teaching, suggestion, or motivation (“TSM”) test in favor of a more
expansive and flexible approach to the determination of obviousness. 550
U.S. at 415. As the Supreme Court stated, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. Thus, to the
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extent Appellants’ argument is premised on strictly applying the TSM test, it
is not persuasive of Examiner error.
Finally, we are not persuaded that the Examiner erred by Appellants’
new argument in the Reply Brief regarding the lack of a sufficient rationale.
Appellants identify what they assert is a new finding in the Answer: “For
instance, Yasu[d]a discloses the method of scanning a copy of a Braille
document and creating an output, that is to say, the coordinate and code have
already been identified, processed and outputted (with emphases).” Reply
Br. 2 (citing Ans. 3). However, that finding is substantially the same as
findings made by the Examiner in the Advisory Action. Compare Ans. 3,
with Adv. Act. 2 (“For instance, Yasu[d]a discloses the method of scanning
a copy of a Braille document and creating an output based on a determined
coordinate code such as the x-y coordinate system.”); see also Final Act. 5
(substantially the same finding). Because Appellants did not raise that
argument in the opening brief and good cause has not been shown why it
should be considered, we will not consider this argument. See 37 C.F.R.
§ 41.41(b)(2).
Moreover, even if we did consider the waived argument, we are not
persuaded by it that the Examiner erred. Rejections based on obviousness
must be supported by “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. The Examiner provided a sufficient reason for the combination—to
provide a finished product that can be read by a blind person. Therefore, we
determine that Examiner’s finding provides a rational underpinning to
support the legal conclusion of obviousness.
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Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claim 13, which is argued on the substantially the same
grounds (App. Br. 7-8), and dependent claims 2-3, 8, 9, 11, and 14, which
are not separately argued (App. Br. 6, 16).
With regard to dependent claim 5, Appellants argue “the rejection of
claim 5 is in error for the same reasons as those discussed above with respect
to claim 1.” App. Br. 15. Because we determine that the rejection of claim
1 is not erroneous for the reasons discussed above, we sustain the rejection
of claim 5.
Claims 6 and 7
Appellants argue the Examiner erred in finding Yasuda teaches the
additional limitations recited in claim 6. App. Br. 10-12; Reply Br. 5-7.
Appellants argue even if Yasuda teaches rotating—which Appellants
dispute—the various figures cited by the Examiner are silent regarding the
determining steps recited in claim 6:
Moreover, Yasuda, does not disclose “determining, from the
scanned image, a first number of rows having more than a
predetermined number of dots” and “determining for the second
image position a second number of rows having more than the
predetermined number of dots” and “determining for the third
image position a third number of rows having more than the
predetermined number of dots.” Yasuda does not disclose three
steps of determining rows having more than a predetermined
number of dots at three different image positions. Nor has the
Examiner identified any such teaching in Yasuda. The passages
and figures cited by the Examiner in the rejection of claim 6 are
completely silent with regard to the recited determining steps.
App. Br. 11-12.
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The Examiner finds Yasuda Figures 18a-e teach or suggest the two
determining steps recited in claim 6. Final Act. 7; Ans. 5. The Examiner
further finds Yasuda teaches that “the processor automatically rotates the
scanned image of the original Braille document.” Ans. 5 (citing Yasuda
15:25-30).
Figures 18a-e “are typical diagrams showing an example of a
template image used in producing a binary-coded image representing
projected points or a binary-coded image representing recessed points.”
Yasuda 5:64-67. However, the figures do not show rotating an image. In
addition, although Yasuda discusses a single rotation, see Yasuda 15:25-30,
that single rotation is different from the multiple rotations by predefined
amounts recited in claim 6. Therefore, we agree with Appellants that the
Examiner’s finding that Yasuda teaches or suggest the additional limitations
of claim 6 is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(Examiner’s burden of proving non-patentability is by a preponderance of
the evidence); see also 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, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 6, along with the rejection of dependent claim
7, which depends from claim 6.
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Application 12/832,612
Claims 10, 15—17, and 20
Appellants argue the Examiner erred in finding the prior art teaches or
suggests using a “Beta distribution,” as recited in claim 10. App. Br. 12-13.
More particularly, Appellants argue (1) neither Yasuda nor Butler teach Beta
distributions and (2) “the Examiner has not identified a Beta distribution in
either of the applied references.” App. Br. 13.
The Examiner finds the combination of Yasuda and Butler teaches
“classifying . . . based on determined threshold values, wherein the threshold
values are determined by applying stability thresholding using a Beta
distribution (Yasuda: Figure 4; and Fig 22. ‘distribution of frequencies’;
Column 14, lines 49-59).” Final Act. 8.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Consistent with that
standard, claim terms are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). There are, however, two exceptions to that rule: “1) when
a patentee sets out a definition and acts as his own lexicographer,” and “2)
when the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Computer Entm 7 Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
If an inventor acts as his or her own lexicographer, the definition must
be set forth in the specification with reasonable clarity, deliberateness, and
precision. Renishaw PLC v. Marposs Societa’per Azioni, 158 F.3d 1243,
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1249 (Fed. Cir. 1998). Although it is improper to read a limitation from the
specification into the claims, In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993), claims still must be read in view of the specification of which
they are a part. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,
1347 (Fed. Cir. 2004).
In this case, the Appellants provided a definition of the term Beta
distribution in the Specification:
The Beta distribution is a continuous probability distribution
with the probability density function (pdf) defined on the interval
[0, 1] by Equation 1:
=i® o)
where a and (3 are the shape parameters of the distribution and
must be greater than zero, x is a random variable, and it must be
between 0 and 1.
Spec. T| 39.
We have reviewed Yasuda Figures 4 and 22 and the text at column 14,
lines 49-59. Because there is no teaching of a Beta distribution in the cited
sections of Yasuda, we agree with Appellants that the Examiner’s finding
that Yasuda in view of Butler teaches a Beta distribution as recited in claim
10 is not supported by a preponderance of the evidence and is therefore
erroneous. See Caveney, 761 F.2d at 674 (Examiner’s burden of proving
non-patentability is by a preponderance of the evidence); see also Warner,
379 F.2d at 1017 (the Board cannot “resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis”).
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 10, along with the rejections of claim 15,
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which recites limitations commensurate in scope to the disputed limitations
discussed above, and dependent claims 16 and 17.
Additionally, because the Examiner does not find the additional
reference cited for the rejection of claim 20 (the OBR User’s Manual) cures
this deficiency, we are similarly constrained on this record to reverse the
Examiner’s rejection of claim 20, which recites limitations commensurate in
scope to the disputed limitation discussed above.
Claim 12
Appellants argue the Examiner erred in finding the OBR User’s
Manual or the other prior art references teaches the additional limitations
recited in claim 12:
None of the applied art references teaches “the determined
coordinate and ASCII code for each of the at least one Braille
cell is communicated to the embosser” as recited in claim 12.
The Examiner’s assertion that “binary coded image taught by
Yasuda is sent to the embosser disclosed by Butler” is pure
speculation, and is not factually supported by any teaching of the
applied art. There is no teaching in Yasuda of sending a binary
coded image to an embosser. And there is no teaching in Butler
that the embosser receives a binary coded image from anything.
Moreover, although OBR Userf’s] Manual mentions ASCII,
there is no teaching in any of the applied references of
communicating an ASCII code of a Braille cell to an embosser.
App. Br. 16.
The Examiner relies on the earlier finding that the combination of
Butler and Yasuda teaches the limitations of claim 1 and further finds the
OBR User’s Manual teaches the additional limitation of dependent claim 12.
Final Act. 10-11.
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Because Appellants’ arguments are directed to the reference
individually and not the combined teachings, we are not persuaded by
Appellants’ arguments that the Examiner erred. See Merck, 800 F.2d at
1097; Keller, 642 F.2d at 425. Instead, we agree with and adopt the
Examiner’s findings.
Accordingly, we are sustain the Examiner’s rejection of claim 12.
Claims 18 and 19
Appellants argue the Examiner erred in finding the combination of
Yasuda and Butler teaches or suggests the embosser and scanning
limitations recited in claim 19. App. Br. 8-10; Reply Br. 7. More
specifically, Appellants argue because claim 19 contains additional
limitations not recited in other claims, the Examiner erred in grouping the
rejection of claim 19 along with the rejections of claim 1—4 and 6-11. App.
Br. 8-9. Appellants further argue because the Examiner did not address the
scanning limitation, the Examiner has not set forth a prima facie case. Id.
Appellants also argue the prior art of record does not teach or suggest
“preserv[ing] a layout of the original Braille document in the embossed copy
of the original Braille document,” as recited in claim 19. App. Br. 9-10.
We are persuaded by Appellants’ argument that the Examiner erred.
The basis for the rejection of claim 19 is as follows:
The proposed combination of Yasuda and Butler, explained in
the rejection of machine claims 1—4, and 6-11, renders obvious
the steps of the method of claims 13, 16 and 17, and the system
of claim 19 because these steps occur in the operation of the
proposed combination as discussed above. Thus, the arguments
similar to that presented above for claims 1—4 and 6-11 are
equally applicable to claims 13, 15, 16, 17 and 19.
Final Act. 9.
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As argued by the Appellants, claim 19 contains additional limitations
not recited in the claims and 6-11. Accordingly, we agree with
Appellants that the Examiner’s finding that Yasuda in view of Butler teaches
the additional limitations of claim 19 is in error because it is not supported
by a preponderance of the evidence. See Caveney, 761 F.2d at 674; see also
Warner, 379 F.2d at 1017.
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 19.
Additionally, because the Examiner does not find the additional
reference cited for the rejection of claim (the OBR User’s Manual) cures this
deficiency, we are similarly constrained on this record to reverse the
Examiner’s rejection of claim 18, which recites limitations commensurate in
scope to the disputed limitations discussed above.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1-5, 8, 9, and 11-14.
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 6, 7, 10, and 15-20.
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). See 37
C.F.R. §41.50(f).
AFFIRMED-IN-PART
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