Ex Parte Ameline et alDownload PDFPatent Trial and Appeal BoardMay 16, 201310969878 (P.T.A.B. May. 16, 2013) Copy Citation 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 Copy with citationCopy as parenthetical citation