Ex Parte Ameline et al

Patent Trial and Appeal Board

May 16, 2013

10969878 (P.T.A.B. May. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte IAN R. AMELINE and ERIC A. BLAIS1
____________________

Appeal 2011-000524
Application 10/969,878
Technology Center 2600
____________________

Before DEBRA K. STEPHENS, KALYAN K. DESHPANDE, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-8 and 49-56. Appellants have previously canceled
claims 9-48. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing
was held January 24, 2013.
We AFFIRM-IN-PART.

1 The Real Party in Interest is Autodesk, Inc. App. Br. 5.
Appeal 2011-000524
Application 10/969,878

2
STATEMENT OF THE CASE 2
The Invention
Appellants’ invention is directed to a graphics processing method and
system and, in particular, to a system and method for flood filling, including
anti-aliased flood filling without artifacts. Spec. p. 1, Title and ¶ [0002].
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. A method of flood filling a region in an image, the
method comprising:
providing different first and second flood fill algorithms
in a computer, each having substantially a same tolerance
and each capable of flood filling regions of arbitrary images
where the first flood fill algorithm uses color distance
determination and antialiasing;
the computer automatically selecting which of the
different first and second flood fill algorithms to use on a
region; and
flood filling into the region of the image by the computer
using the selected algorithm.

Claim 2 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
May 3, 2010); Reply Brief (“Reply Br.,” filed Sep. 21, 2010); Examiner’s
Answer (“Ans.,” mailed Jul. 22, 2010); Final Office Action (“FOA,” mailed
Sep. 29, 2009); and the original Specification (“Spec.,” filed Oct. 22, 2004).
Appeal 2011-000524
Application 10/969,878

3
2. A method according to claim 1, wherein the
selecting comprises calculating on [sic] an artifact level of the
flood fill of the region according to the first flood fill
algorithm and using the artifact level to select which of the
flood fill algorithms will be used.

Claim 52 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
52. A method of flood filling a region in an image, the
method comprising:
providing a first algorithm that uses a hill climbing
procedure which stops when a top is reached and second flood
fill algorithm in a computer, each having substantially a same
tolerance and each capable of flood filling regions of
arbitrary images;
selecting which of the first and second flood fill
algorithms to use on a region; and
flood filling into the region of the image by the computer
using the selected algorithm.

Claim 53 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
53. A method, comprising:
flood filling a region using a first algorithm having a
tolerance identifying an image region by a computer; and
flood filing the region using a second algorithm having
substantially, a same tolerance identifying the region if
automatic testing of the region indicates a flood fill failure by
the computer.
Appeal 2011-000524
Application 10/969,878

4

Claim 56 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
56. A method of flood filling a region in an image, the
method comprising:
providing different first and second flood fill algorithms
in a computer, each having substantially a same tolerance
and each capable of flood filling regions of arbitrary images
where the first flood fill algorithm uses color distance
determination and antialiasing;
the computer automatically selecting which of the
different first and second flood fill algorithms to use on a
region; and
flood filling into the region of the image by the computer
using the selected algorithm and undoing results of a failed
flood fill algorithm.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Golin US 5,122,873 Jun. 16, 1992
Loce US 6,167,166 Dec. 26, 2000
Chalana US 2003/0174872 A1 Sep. 18, 2003
Venable US 6,738,154 B1 May 18, 2004
Cohen US 2005/0226502 A1 Oct. 13, 2005
Fathi, M. and J. Hiltner, A New Fuzzy Based Flood-Fill Algorithm
for 3D NMR Brain Segmentation, IEEE SMC ‘99 Conference
Proceedings, 1999 IEEE International Conference On Systems,
Man, and Cybernetics, Volume 4, 1999, p. 881-885 (hereinafter
“Fathi”).
Martin, Marcos, Miguel Martin, Carlos Alberola-Lopez and Juan
Appeal 2011-000524
Application 10/969,878

5
Ruiz-Alzola, A topology-based filling algorithm, Computer and
Graphics, Volume 25, Number 3, 2001, p. 493-509 (hereinafter
“Martin”).
Rejections on Appeal
1. Claim 56 stands rejected under 35 U.S.C. § 112, first paragraph,
as not being enabled by Appellants’ disclosure. Ans. 3.
2. Claims 53 and 54 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Fathi. Ans. 4.
3. Claims 1-3, 7, 8, 49, 51, and 55 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Martin in view of Venable. Ans. 5.
4. Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin and Venable in view of Loce. Ans. 7.
5. Claim 50 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin and Chalana in view of Venable. Ans. 8.
6. Claim 52 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin in view of Cohen. Ans. 10.
7. Claim 56 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin and Venable in view of Golin. Ans. 11.
ISSUES AND ANALYSIS
1. Claim 56: § 112, ¶ 1 Enablement Rejection
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
Appeal 2011-000524
Application 10/969,878

6
conclusions with respect to claim 56, and we highlight and address specific
findings and arguments regarding claim 56 for emphasis as follows.
Issue 1
Appellants argue (App. Br. 21-22; Reply Br. 2-3) that the Examiner’s
enablement rejection of claim 56 under 35 U.S.C. § 112, first paragraph is in
error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method of flood filling a region in an image is not enabled by
Appellants’ disclosure because the specification, while being
enabling for undoing results of a first flood fill algorithm after it
has been applied by the invention, does not reasonably provide
enablement for generally “undoing results of a failed flood fill
algorithm,” as recited in claim 56?
Analysis
The Examiner asserts that “the term ‘a failed flood fill algorithm’ is
broad . . . [and] can read on any failed flood fill algorithm including those
performed by appellant’s invention and those performed by any other
invention”, and that, in another disclosed embodiment, Appellants’ a process
performs a flood fill algorithm which fails, and which is not disclosed as
passing any information about the failed flood fill algorithm to Appellants’
invention, but which nonetheless is disclosed as undoing the results of the
flood fill algorithm. Ans. 12 (citing Spec. ¶ [0052]). The Examiner also
alleges that, in order to enable this claim, Appellants would also need to
disclose detection of the type of algorithm applied. Further in this regard,
the Examiner alleges that the Specification doesn’t disclose detection of
Appellants’ own applied algorithms and, with respect to undoing a failed
Appeal 2011-000524
Application 10/969,878

7
flood fill algorithm, the specification merely describes discarding the
undesirable results, implying that the user starts over with a saved copy of
the original image. Ans. 13 (citing Spec. ¶ [0052]).
We disagree with the Examiner’s finding that Appellants’ disclosure
is not enabling with respect to the recited “undoing results of a failed flood
fill algorithm,” as recited in claim 56. Ans. 3-4 and 11-13. We agree with
Appellants’ contentions in this regard because Appellants’ Specification
discloses that “[i]f the dimple test 142 fails, then the results of the first
algorithm may be discarded, and a non anti-aliased flood fill is performed
148 to produce a non anti-aliased fill set[, and t]his can be done by many
types of flood fill algorithms.” App. Br. 22 (citing Spec. [0052]). We agree
with Appellants’ contention that the above description in the Specification
provides enablement for “undoing results of a failed flood fill algorithm,”
for example, by discarding results of the first algorithm.
The purpose of the enablement requirement is to ensure that the
Specification describes the invention in such terms that one skilled in the art
can make and use the claimed invention to ensure that the invention is
communicated to the interested public in a meaningful way. The
information contained in the disclosure of an application must be sufficient
to inform those skilled in the relevant art how to both make and use the
claimed invention. However, to comply with 35 U.S.C. § 112, first
paragraph, it is not necessary to “enable one of ordinary skill in the art to
make and use a perfected, commercially viable embodiment absent a claim
limitation to that effect.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1338 (Fed. Cir. 2003) (finding that an invention directed to a general system
Appeal 2011-000524
Application 10/969,878

8
to improve the cleaning process for semiconductor wafers was enabled by a
disclosure showing improvements in the overall system).
Further, Appellants contend that the Examiner interpreted the disputed
limitation improperly because the recitation of “a failed flood fill algorithm”
refers back to “the selected algorithm,” which includes the first and second
flood fill algorithms. Reply Br. 2. Appellants further contend that the
Examiner’s allegation that the recitation of “flood filling into the region of
the image by the computer using the selected algorithm and undoing results
of a failed flood fill algorithm” reads on any failed flood fill algorithm
including those performed by Appellants’ invention and those performed in
any other invention. Id. Appellants reiterate that, looking at the claim in its
entirety, the selected algorithm only includes either the first or the second
flood fill algorithm, and that results of “a failed flood fill algorithm” can
therefore only be from either the first or second flood fill algorithm.
Appellants conclude that claim 56 is enabled because a person with skill in
the art would be able to make and use the invention without any undue
experimentation. Id.
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the subject
matter of the claims so as to enable one skilled in the pertinent art to make
and use the claimed invention. The statute (35 U.S.C. § 112) has been
interpreted to require that the claimed invention be enabled so that any
person skilled in the art can make and use the invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Appeal 2011-000524
Application 10/969,878

9
“Factors to be considered in determining whether a disclosure would
require undue experimentation . . . include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims.” Id.
While claim 56 does not recite, verbatim, “undoing results of the first
flood fill algorithm,” we find that the Specification does provide support for
undoing a dimple test that results in a failed flood fill algorithm, (e.g., the
dimple test could be the first algorithm which fails), by using one of a
number of different types of flood fill algorithms to produce a nonanti-
aliased fill set. Spec. ¶¶ [0051] – [0052] and Fig. 6.
Accordingly, having persuaded us of the Examiner’s error in the
enablement rejection of claim 56, we do not sustain the Examiner’s rejection
of this claim.
2. Claims 53-54: § 102(b) Anticipation Rejection
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 53, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
Appeal 2011-000524
Application 10/969,878

10
we highlight and address specific findings and arguments regarding claim 53
for emphasis as follows.
Issue 2
Appellants argue (App. Br. 4-5; Reply Br. 3-6) that the Examiner’s
anticipation rejection of claim 53 under 35 U.S.C. § 102(b) over Fathi is in
error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is anticipated by Fathi, particularly that Fathi discloses
the steps of “flood filling a region using a first algorithm . . .
and flood filing the region using a second algorithm . . . if
automatic testing of the region indicates a flood fill failure by
the computer,” as recited in claim 53?
Analysis
Appellants contend “claim 53 patentably distinguishes over Fathi
because nothing cited or found in Fathi discusses ‘flood filling a region
using a first algorithm’ and ‘flood filing the region using a second
algorithm.’” App. Br. 22-23. Appellants go on to contend that the Examiner
erred in the Final Office Action by applying an overly broad interpretation
of claim terminology, i.e., that “a first algorithm” and “a second algorithm”
are simply “a set of ordered steps for solving a problem” (App. Br. 24 (citing
FOA 3)).
Appellants further contend that the Examiner erred in finding that
“[w]hat amount of programming constitutes an algorithm is subjective -
what one person may consider an algorithm is to another simply a subroutine
in a greater algorithm” (App. Br. 23 (citing FOA 3)), and that “[t]here is no
Appeal 2011-000524
Application 10/969,878

11
explicit definition of an algorithm in applicant’s specification, so it is
unclear to examiner what applicant considers the dividing line between an
‘algorithm’ and a subroutine within an algorithm.” Id.
We agree with the Examiner’s finding that Appellants’ Specification
is silent on any definition of the word “algorithm.” Ans. 14. We also agree
that claim 53 requires the use of first and second flood filling algorithms, but
that the claim does not provide any definitions of, or restrictions on the term
“algorithm,” except to require that they be “flood filling algorithms.” Id.
We agree with the Examiner’s finding that Fathi discloses that a
“‘fuzzy module’ is a second algorithm that works in conjunction with the
‘region growing’ to modify the ‘region growing’ algorithm result . . . [and
that] there is nothing in claim 53 that is so specific as to prevent the two
algorithms from working together if the first flood fill fails.” Ans. 16 (citing
FOA 6). We further agree with the Examiner that Fathi’s “region growing”
can be interpreted as a (first) flood fill algorithm, and that Fathi’s “fuzzy
module” can be interpreted as a (second) flood fill algorithm. Ans. 16
(citing Fathi Figs. 3 and 6; and see Fathi § 4 “Region Growing” and Fathi
§ 6 – “Fuzzy Module”).
Thus, using the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that Fathi discloses the disputed
limitations because “there is nothing in claim 53 that is so specific as to
prevent the two algorithms from working together if the first flood fill fails.”
Ans. 16. In addition, we find that Fathi discloses that segmentation (using
flood filling) of images can be done with region growing, and that the use of
Appeal 2011-000524
Application 10/969,878

12
fuzzy methods (an additional flood fill) improves the results. Fathi § 8 –
“Conclusions and Results”.
Accordingly, Appellants have not persuaded us of any reversible error
in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s anticipation rejection of
claim 53. In addition, since Appellants have not provided separate,
substantive arguments with respect to the rejection of dependent claim 54,
we likewise sustain the rejection of claim 54.
3. Claims 1, 7, 8, 49-51, and 55: § 103(a) Unpatentability Rejection
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
we highlight and address specific findings and arguments regarding claim 1
for emphasis as follows.
Issue 3
Appellants argue (App. Br. 27-28; Reply Br. 6-8) that the Examiner’s
unpatentability rejection of claim 1 under 35 U.S.C. § 103(a) over Martin in
view of Venable is in error. These contentions present us with the following
issue:
Did the Examiner err in finding that Appellants’ claimed
method of flood filling a region in an image is rendered
Appeal 2011-000524
Application 10/969,878

13
unpatentable over the combination of Martin and Venable,
particularly that the combination teaches or suggests the step of
“providing different first and second flood fill algorithms in a
computer . . . each capable of flood filling regions of arbitrary
images,” as recited in claim 1?
Analysis
Appellants contend that the Examiner’s finding that Martin teaches
“first and second algorithms to perform flood filling” is in error due to “the
Examiner’s overly broad and improper interpretation of ‘algorithm’
discussed above [with respect to claim 53].” App. Br. 27-28 (citing FOA 7).
Appellants further contend that Martin’s steps 3a and 3b do not, on their
own, teach “first and second algorithms to perform flood filling,” because
steps 3a and 3b3 are merely conditional steps of Martin’s Algorithm (cited as
“The Algorithm” throughout Martin) used to perform filling, and each of
these steps on their own does not teach a fill. App. Br. 28.
Appellants also argue that a person with ordinary skill in the art would
understand steps 3b(i) and 3b(ii) to each merely be a conditional statement
inside the “for” loop of “The Algorithm” shown on page 498 of Martin, and
assert that, if steps 3b(i) and 3b(ii) are not capable of an actual fill, then it
would not be logical for a computer use the first algorithm (i.e., step 3b(i)) to
flood fill when certain conditions exist, and use the second algorithm (step
3b(ii)) to flood fill when other conditions exist. Appellants further contend
that, even if you assume that each step of “The Algorithm” is an algorithm

3 Appellants’ initial arguments in the Answer are directed to steps 3a and 3b
of Martin § 2.5 (Ans. 28), and then the arguments were redirected to steps
3b(i) and 3b(ii) in the Reply Brief. (Reply Br. 8).
Appeal 2011-000524
Application 10/969,878

14
itself, Martin does not teach or discuss “a first flood fill algorithm” and “a
second flood fill algorithm.” Reply Br. 8.
The Examiner finds, and we agree for the same reasons discussed
above regarding the definition of “algorithm” in claim 53, supra, that “there
are no teachings in the art that indicate that algorithms cannot contain other
algorithms.” Ans. 17. The Examiner further finds that Martin’s steps 3b(i)
and 3b(ii), and not steps 3a and 3b as stated by Appellants, each teach
different flood fill algorithms, except for performing the actual fill itself.
However, each zone of Martin’s object is accounted for and assigned a
particular value that indicates how the zone should be filled. App. Br. 17-
18.
The Examiner concludes, and we agree, that the algorithms within
Martin teach or suggest the recited flood fill algorithms because claim 1
does not specifically require the first and second algorithms to be completely
independent of any other algorithm. The “Examiner notes that the last step
of claim 1 is ‘flood filling into the region of the image by the computer using
the selected algorithm.” Ans. 18. The Examiner further contends that
“whether or not the first and second flood fill algorithms in Martin can flood
fill independently, a computer can use the first algorithm (step 3b(i)) to flood
fill when certain conditions exist and use the second algorithm (step 3b(ii))
to flood fill when other conditions exist.” Id. The Examiner further finds
that these algorithms may be used along with other steps in a larger
algorithm (e.g., Martin p. 498, step (4) of “The Algorithm”), but that does
not mean that steps 3b(i) and 3b(ii) are not each, individually, flood fill
algorithms used to flood fill a region. Ans. 18.
Appeal 2011-000524
Application 10/969,878

15
We emphasize that, when Martin’s algorithm is broadly, but
reasonably, interpreted consistent with the Specification, Martin teaches the
recited algorithms, i.e., Martin’s steps 3b(i) and 3b(ii) teach flood filling
algorithms. We also agree with the Examiner’s analysis because claim 1
further recites “flood filling into the region of the image by the computer
using the selected algorithm,” which reads on Martin’s step (4). Martin
§ 2.5 (“The Algorithm,” step (4)).
Accordingly, Appellants have not persuaded us of any reversible error
in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s unpatentability rejection
of claim 1. As Appellants have not provided separate substantive arguments
with respect to the rejection of independent claims 49, 51, and 55, which
recite the disputed limitations in commensurate form, or dependent claims 7
and 8, depending from claim 1, we similarly sustain the Examiner’s rejection
of these claims under 35 U.S.C. § 103(a).
With regard to the unpatentability rejection of claim 50 over the
combination of Martin, Venable, and Chalana, Appellants point out that the
disputed claim limitations are similar to claim 1, that the rejection is based
upon Martin section 2.5, and that “Venable fails to cure the deficiencies of
Martin . . . [and] nothing cited or found in Chalana cures the deficiencies of
Martin and Venable.” App. Br. 32-33. Thus, we find that the rejection of
these claims turns on Issue 3, supra, and we do not find Appellants’
arguments to be persuasive.
Appeal 2011-000524
Application 10/969,878

16
4. Claim 52: § 103(a) Unpatentability Rejection
We disagree with Appellants’ conclusions with respect to claim 52,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Arguments. However, we highlight and address
specific findings and arguments regarding claim 52 for emphasis as follows.
Issue 4
Appellants argue (App. Br. 33; Reply Br. 10) that the Examiner’s
unpatentability rejection of claim 52 under 35 U.S.C. § 103(a) over the
combination of Martin and Cohen is in error. These contentions present us
with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method of flood filling a region in an image is rendered
unpatentable over the combination of Martin and Cohen,
particularly that the combination teaches or suggests the step of
“providing a first algorithm that uses a hill climbing procedure
which stops when a top is reached and second flood fill
algorithm in a computer, each having substantially a same
tolerance and each capable of flood filling regions of arbitrary
images,” as recited in claim 52?
Appeal 2011-000524
Application 10/969,878

17
Analysis4
Appellants contend that Cohen does not discuss “a hill climbing
procedure . . . capable of flood filling regions of arbitrary images.” App.
Br. 33. Appellants further argue that Cohen only discusses transforming
video images so that they have a cartoon-like style, and that Cohen further
discusses smoothing noisy boundaries between regions due to interlacing of
images by determining optimal positions for the Psi(t) or points per keypoint
entered by the user. Id. (citing Cohen ¶¶ [0036] – [0037] and [0043]).
Contrary to Appellants’ contentions, and in agreement with the
Examiner’s findings (Ans. 10 and 21), we find that Cohen teaches a hill-
climbing technique used to smooth image boundaries by reducing image
noise at the boundaries between regions of the image at least because the
Psi(t) or points per keypoint entered by the user are determined by a hill-
climbing technique, i.e., “[t]he locally optimal positions for the Psi(t) may be
achieved using an iterative hill-climbing algorithm.” Cohen ¶ [0047].
Appellants later contend that “[e]ven if Cohen discusses a hill
climbing algorithm, it fails to cure the deficiencies of Martin because both
Martin and Cohen do not discuss a first algorithm and a second flood fill
algorithm, each capable of flood filling regions of arbitrary images.” Reply
Br. 10. We find that this issue is substantially the same argument as that
presented with respect to the rejection of claim 1, i.e., Issue 3, discussed
supra.

4 In reviewing Appellants’ arguments and original disclosure, and although
not before us on appeal, we note that we are unable to find support or a
definition in Appellants’ Specification or Drawings for the “hill-climbing
procedure” recited in claim 52.
Appeal 2011-000524
Application 10/969,878

18
We remain unpersuaded by Appellants’ argument, and further agree
with the Examiner’s finding regarding Cohen’s teaching of use of a hill-
climbing technique, and the stated basis for motivation to combine Martin
and Cohen, i.e., that “[t]he motivation for using a hill climbing algorithm is
to apply stylization without visual ‘jumpiness’ . . . [and that i]t would have
been obvious to one skilled in the art to modify Martin[‘s flood-filling
algorithms] to use a hill climbing algorithm to find and smooth boundaries
for filling in order to more smoothly apply stylization as taught by Cohen.”
Ans. 10-11 (citing Cohen ¶ [0048]).
Accordingly, Appellants have not persuaded us of any reversible error
in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s unpatentability rejection
of claim 52.
5. Claim 56: § 103(a) Unpatentability Rejection
We disagree with Appellants’ conclusions with respect to claim 56,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Arguments. However, we highlight and address
specific findings and arguments regarding claim 56 for emphasis as follows.
Issue 5
Appellants argue (App. Br. 33; Reply Br. 10) that the Examiner’s
unpatentability rejection of claim 56 under 35 U.S.C. § 103(a) over the
Appeal 2011-000524
Application 10/969,878

19
combination of Martin, Venable, and Golin is in error. These contentions
present us with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method of flood filling a region in an image is rendered
unpatentable over the combination of Martin, Venable, and
Golin, particularly that the combination teaches or suggests the
steps of “providing different first and second flood fill
algorithms in a computer . . . each capable of flood filling
regions of arbitrary images . . . and undoing results of a failed
flood fill algorithm,” as recited in claim 56?
Analysis
We find that the limitation of “providing different first and second
flood fill algorithms in a computer . . . each capable of flood filling regions
of arbitrary images” is commensurate in scope to the disputed limitation in
claim 1, and Appellants’ arguments (App. Br. 34; Reply Br. 11) are
substantially the same as discussed above in Issue 3 with respect to claim 1.
Therefore, we agree with the Examiner (Ans. 11), and remain unpersuaded
by Appellants’ arguments in this regard.
As for the remaining limitation, “undoing results of a failed flood fill
algorithm,” Appellants contend that the Examiner’s reliance upon Golin is in
error, because “Golin merely discusses linear fill encoding and splitting a
region if results of tests 1708, 1712 or 1714 are not acceptable . . . [but]
Golin does not discuss undoing results of a failed flood fill algorithm.”
(App. Br. 34).
The Examiner finds (Ans. 21), and we agree, that the undoing process,
as claimed by Appellants, is a mere deletion, i.e., . “[i]f the dimple test 142
Appeal 2011-000524
Application 10/969,878

20
fails, then the results of the first algorithm may be discarded.” Spec.
¶ [0052]. The Examiner further states that a deletion of this nature is
inherent to the method of Golin.
The Examiner addresses and justifies his finding of inherency by
noting that the question is whether or not Golin’s undoing of the results of a
fill is absolutely necessary for the method to work. The Examiner points out
that Golin describes a failed fill encoding process which splits a region, and
then retries the fill process and that, if the failed result of Golin is not
deleted, then two possible results still exist, i.e., the failed result and the
correct result. The Examiner argues that such an occurrence would utterly
destroy Golin’s utility, as the reference would then have two results to
return, one of which would be incorrect. Ans. 22 (citing Golin col. 20:36-49
and col. 21:29-49).
The Examiner further noted that, for each region that needs to be split,
Golin would return partially incorrect results, thus making some sort of
deletion step necessary, i.e., either deleting by overwriting, or deleting by
moving the incorrect result to some other spot in memory to delete it from
the portion that stores the correct result, both of which teach or suggest
deletion of a failed flood fill operation. Ans. 22.
In response, Appellants contend that “Golin merely discusses a fill
encoding process and in combination with Martin and does not discuss ‘the
computer automatically selecting which of the different first and second
flood fill algorithms to use on a region’ because Martin does not discuss
different first and second flood fill algorithms.” Reply Br. 11. Appellants
further contend that, because of the deficiencies in the rejection of claim 1
Appeal 2011-000524
Application 10/969,878

21
discussed above with respect to Martin’s teachings, claim 56 patentably
distinguishes over Martin, Venable and Golin, either alone or in
combination. Id.
Appellants rely upon the arguments presented with respect to
independent claim 1, supra, and the teachings of Martin, and do not
substantively address the Examiner’s findings regarding the teaching of
Golin, particularly the Examiner’s findings regarding Golin’s inherent
disclosure of a deletion process, other than to assert that “Golin merely
discusses a fill encoding process.” Id. Thus, the Examiner’s finding of
Golin’s inherent teaching of a deletion process remains unrebutted.
We agree with the Examiner’s finding that Golin teaches “performing
a fill algorithm and then undoing the results if the results are not acceptable
. . . [and that t]he motivation for this is to optimize representation of a region
with fewer bits . . . It would have been obvious to modify Martin and
Venable to undo results of a fill algorithm and substitute a different
algorithm in order to better optimize region representation as taught by
Golin.” Ans. 11 (citing Golin fig. 17; col. 20:36-49; col. 21:29-49; col.
21:36-49). We find that Golin’s teaching of trying linear fill encoding for
each region and then retrying the linear fill encoding for a split region if the
original fill encoding is not possible, meets the disputed limitation. Golin
col. 20:36-49.
Accordingly, Appellants have not persuaded us of any reversible error
in the Examiner’s characterization of the cited art and related claim
construction. Therefore, we sustain the Examiner’s unpatentability rejection
of claim 56.
Appeal 2011-000524
Application 10/969,878

22
6. Claims 2-6: § 103(a) Unpatentability Rejection
We agree with Appellants’ conclusions with respect to claim 2, and
we disagree with (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Arguments. We highlight and address specific findings and
arguments regarding claim 2 for emphasis as follows.
Issue 6
Appellants argue (App. Br. 33; Reply Br. 10) that the Examiner’s
unpatentability rejection of claim 2 under 35 U.S.C. § 103(a) over the
combination of Martin and Venable is in error. These contentions present us
with the following issue:
Did the Examiner err in finding that Appellants’ claimed
method is rendered unpatentable over the combination of
Martin and Venable, particularly that the combination teaches
or suggests “wherein the selecting comprises calculating . . . an
artifact level of the flood fill of the region . . . and using the
artifact level to select which of the flood fill algorithms will be
used,” as recited in claim 2?
Analysis
In response to the Examiner’s finding that Appellants’ recitation of
“artifact level” reads on Martin’s disclosure of sub-objects (FOA 8, citing
Martin p. 496), Appellants contend that the Examiner’s characterization of
Martin is in error. App. Br. 30. Appellants point out that Martin teaches
that an object boundary is a connected set of black pixels that separates the
object interior from labeled zones and, since the set of subobjects depends
Appeal 2011-000524
Application 10/969,878

23
on the algorithm iteration step (S), so do the objects such that, for active
zones and for a particular algorithm step S, objects and subobjects are
thereby defined. Id. (citing Martin p. 496). Appellants further contend that
the recitation of “an artifact level of the flood fill of the region” distinguishes
over Martin’s subobjects, particularly since Martin fails to provide any
teaching or suggestion of “an artifact level.” While Appellants acknowledge
that Martin discusses compression artifacts, they point out that Martin is
silent on any mention of an “artifact level of the flood fill of the region.”
App. Br. 30 (citing Martin § 2.7, emphasis added).
In response to Appellants’ contentions, the Examiner states that
Appellant “does not specify any definition for the term ‘artifact level,’” and
further applies a dictionary definition of “artifact,” i.e., “[t]he dictionary
definition of "’artifact’ is broad - an ‘artifact’ is ‘a product of artificial
character (as in a scientific test) due usually to extraneous (as human)
agency.’” Ans. 19 (citing Merriam-Webster dictionary, definition available
at http://www.merriam-webster.com/dictionary/artifact). Further, the
Examiner asserts that “to give the broadest reasonable definition consistent
with appellant’s specification, which is directed to image processing, such a
definition must be limited to an image characteristic . . . [and] an artificial
division of an image, as the sub-objects in Martin clearly are, would still
meet such a definition.” Ans. 19.
Appellants respond to the Examiner’s applications of a dictionary
definition of “artifact” by contending that “the word artifact should be
viewed first within the context of the claim itself . . . [and that t]he claim
recites ‘artifact level,’ not just ‘artifact.’” Reply Br. 9.
Appeal 2011-000524
Application 10/969,878

24
We agree with Appellants’ contention that the Examiner has not
properly considered that the claim recites “artifact level” and not just
“artifact.” We also disagree with the Examiner because the dictionary
definition cited by the Examiner above is not relevant to the claim limitation
in dispute, i.e., “an ‘artifact’ is . . .due usually to extraneous (as human)
agency.” Instead, we find that the term “artifact” has an art-recognized
meaning, e.g., “[a]n artifact is used to describe any visible defect in the
image . . . [and] Jaggies are stair-like lines that appear where there should be
smooth straight lines or curves and are considered artifacts.” 5
Based on the foregoing, we find that the cited art does not teach or
suggest “calculating [] an artifact level of the flood fill of the region . . . and
using the artifact level to select which of the flood fill algorithms will be
used,” as recited in claim 2.
Accordingly, Appellants have persuaded us of at least one error in the
Examiner’s characterization of the cited art and related claim construction
such that we cannot sustain the Examiner’s unpatentability rejection of
dependent claim 2.
Further, claims 3-6 variously and ultimately depend from claim 2, and
are patentable over the art of record for at least the same reasons as claim 2
such that we cannot sustain the rejection of claims 3-6.

5 www.webopedia.com/quick_ref/Graphics_Software_Terminology.asp
(“Removing Noise and Artifacts”).
Appeal 2011-000524
Application 10/969,878

25
CONCLUSIONS
(1) The Examiner erred with respect to the enablement rejection of
claim 56 under 35 U.S.C. § 112, first paragraph, and the rejection is not
sustained.
(2) The Examiner did not err with respect to the anticipation
rejection of claims 53-54 under 35 U.S.C. § 102(b) over Fathi, and the
rejection is sustained.
(3) The Examiner did not err with respect to the various
unpatentability rejections of claims 1, 7. 8, 49-52, and 55-56 under 35
U.S.C. § 103(a) over the art of record, and the rejections are sustained.
(4) The Examiner erred with respect to the unpatentability
rejections of claims 2-6 under 35 U.S.C. § 103(a) over the art of record, and
the rejections are not sustained.
DECISION
The decision of the Examiner to reject claims 1, 7, 8 and 49-56 is
affirmed.
The decision of the Examiner to reject claims 2-6 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED-IN-PART

msc