Ex Parte Austin

Patent Trial and Appeal Board

Jan 23, 2013

10498077 (P.T.A.B. Jan. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES LEONARD AUSTIN
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Appeal 2010-007858
Application 10/498,077
Technology Center 2100
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Before: JEAN R. HOMERE, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/498,077
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 9, 11-13, 17, and 19-23. Claims 1-8, 10, 14-16, and 18 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to image recognition. Claim 9, reproduced
below, is illustrative of the claimed subject matter:
9. A data processing system for recognizing a natural image, the
system comprising:
a. processing means arranged to derive from the natural
image at least one graph having a plurality of points
representing 3D topographical data of the natural image; and
b. a correlation matrix memory that is arranged to provide
at least part of:
c. storage means arranged to store data of stored images,
the storage means comprising only one correlation matrix
memory;
d. comparison means arranged to compare the data of the
natural image with the stored data of the stored images; and
e. identifying means arranged to identify matches between
data of the natural image and said stored data, the
identifying means being arranged to calculate, for each of a
plurality of points of the natural image, potential matches
from said stored data for an item of data at that point, and
support from other such points for each of said potential
matches, and then to progressively remove potential matches
of least support.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Eraslan US 6,381,346 B1 Apr. 30, 2002
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Alwis et al., "Trademark Image Retrieval Using Multiple Features", Dept. of
Computer Science, University of York, 1999

Austin et al., "Distributed associative memory for use in scene analysis",
Dept. of Electronic and Electrical Engineering, Brunel University, 1987

REJECTION1
The Examiner made the following rejections:
Claims 9, 11-13, 17, and 19-23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Alwis, Eraslan, and Austin. Ans. 3.

APPELLANT’S CONTENTIONS
1. In comparison to the Austin reference, the claimed invention uses
one correlation matrix memory (CMM), not two. App. Br. 4-6, Reply Br. 1-
5.
2. Alwis discloses perceptual relationships derived from Gestalt
methods instead of topographical relations. App. Br. 6, Reply Br. 5.
3. Alwis only applies methods to 2D trademark images while “[t]here
is nothing in Eraslan to suggest that it is relevant to the entirely 2D
disclosure of Alwis.” App. Br. 7, Rely Br. 5.
4. Reliance on the combination of three “diverse” references is
indicative of a lack of obviousness, there being “no justification whatsoever
(other than impermissible hindsight)” for combining Alwis, Eraslan and
Austin. App. Br. 7.

1 Appellant collectively argues the rejection of claims 9 and 13 under 35
U.S.C. § 103(a). Separate patentability is not argued for 11, 12, 17, and 19-
23. In view of the foregoing, we select claim 9 as representative of all the
argued claims and base our decision on claim 9.
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ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 4-7)
and Reply Brief (Reply Br. 1-7) the issues presented on appeal are whether
the Examiner erred in combining the disclosures of Alwis, Eraslan and
Austin and whether the asserted combination of references teaches or
suggests the invention as recited in the disputed claims.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We disagree with Appellant’s conclusions as to all rejections. 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 set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following arguments for emphasis.
In connection with contention 1, Appellant argues that, in comparison
to the Austin reference, the claimed invention uses one correlation matrix
memory (CMM), not two. App. Br. 4-6, Reply Br. 1-5. We note that the
disputed negative limitation2 of “the storage means comprising only one
correlation matrix memory” was not present in the claims as originally filed

2 We understand the phrase “only one” in connection with the CMM to mean
one and no more thereby constituting a negative limitation by excluding a
plurality.
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but was added by amendment.3 At the time the limitation was introduced,
Appellant indicated that “the specification as filed clearly discloses the use
of at least one correlation matrix memory - that is, either one correlation
matrix memory (a single correlation matrix memory) or more than one
correlation matrix memory.” Amendment filed Jan. 11, 2007 at page 5.
Appellant further describes that “[a]s shown clearly in Figure 1, the storage
means 4 comprises only one correlation matrix memory 7.” Summary of
Claimed Subject Matter, App. Br. 3. However, there is no disclosure in
Appellant’s Specification of a reason why additional CMMs are to be
excluded. To the contrary, Appellant envisions the use of additional CMMs:
“[w]hilst, in the above example, a single CMM is shown and described, in
practice an array of CMM's may be utili[z]ed . . ..” Spec. 12, ll. 5-8.
Nowhere do we find any description of a reason to exclude more than one
CMM. See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012). (“Negative claim limitations are adequately supported
when the specification describes a reason to exclude the relevant
limitation.”) Because we find there is no basis in Appellant's Specification
for adding the relevant negative limitation, we give it no patentable weight.
Furthermore, even if the disputed “only one correlation matrix
memory” limitation were to be afforded patentable weight, Appellant’s
contention 1 would still be unpersuasive of Examiner error. Appellant
argues that “Austin uses two CMMs to make an associative memory
(ADAM).” App. Br. 5. In contrast, the Examiner finds that “a single stage
process [as disclosed by Austin] has only CMM memory, and thus teaches

3 The limitation was initially introduced by the Amendment filed Jan. 11,
2007 and further revised into the current language by the Amendment filed
July 8, 2008.
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the claimed single CMM.” Ans. 12. Appellant has not provided sufficient
rationale or evidence to persuade us of error in the Examiner’s findings.
Thus, we agree with the Examiner and find Appellant’s contention 1 to be
unpersuasive of Examiner error.
In connection with contention 2, Appellant argues that Alwis discloses
perceptual relationships derived from Gestalt methods instead of
topographical relations. App. Br. 6, Reply Br. 5. The Examiner responds
that Eraslan, not Alwis, is applied for disclosing 3D topographic data. Ans.
15. Because the Examiner’s rejection is based on a combination of
references, Appellant cannot show nonobviousness by attacking Alwis
individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Therefore we do not find
Appellant’s argument persuasive of error in the Examiner’s rejection.
In connection with contention 3, Appellant argues that Alwis only
applies methods to 2D trademark images while “[t]here is nothing in Eraslan
to suggest that it is relevant to the entirely 2D disclosure of Alwis.” App.
Br. 7, Reply Br. 5. The Examiner responds that “the motivation [to modify
Alwis to incorporate 3D data or Eraslan] is . . . to allow for the correlation
and fast searching of three-dimensional images via the correlation of
multiple views of an image.” Ans. 15. The Examiner further finds that
“Eraslan is directed towards improving from the deficiencies of traditional
2D images” (Ans. 16), thereby further supporting the asserted combination.
We note that the U.S. Supreme Court has held that “[t]he obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry
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is whether the Examiner has set forth “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).
In the present case, the Examiner has found that it would have been
obvious to combine the references because the teachings of Eraslan “would
have allowed Alwis's to provide a method to allow for the correlation and
fast searching of three-dimensional images via the correlation of multiple
views of an image, as noted by Eraslan.” Ans. 5. We agree. Upon
reviewing the record before us, we find that the Examiner has articulated
reasoning with rational underpinnings sufficient to justify the legal
conclusion of obviousness. In other words, we find an ordinary artisan
would be motivated to represent a natural image as 3D topographical data as
disclosed by Eraslan in the system of Alwis to provide a device capable of
fast searching of three-dimensional images. Therefore, Appellant’s assertion
that the references were improperly combined (contention 3) is not
persuasive of error and accordingly, the Examiner has properly relied upon
the combination of Alwis and Eraslan in formulating the disputed rejections
under 35 U.S.C. § 103(a).
In connection with contention 4, Appellant argues that the
combination of three “diverse” references is indicative of a lack of
obviousness, there being “no justification whatsoever (other than
impermissible hindsight)” for combining Alwis, Eraslan and Austin. App.
Br. 7. The Examiner responds (and we agree) that “reliance on a large
number of references in a rejection does not, without more, weigh against
the obviousness of the claimed invention.” Ans. 16 citing to In re Gorman,
933 F.2d 982 (Fed. Cir. 1991). As to Appellant’s allegation of hindsight
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reconstruction the Examiner responds that “so long as it takes into account
only knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the applicant's disclosure, such a reconstruction is proper.” Ans. 17
citing to In re McLaughlin, 443 F.2d 1392 (CCPA 1971 ). We agree. In
combining Alwis with Eraslan and Austin the Examiner has articulated
reasoning with rational underpinnings sufficient to justify the legal
conclusion of obviousness. See Ans. 5-6. We find an ordinary artisan
would be motivated to combine Alwis and Eraslan for the reasons presented
supra and further combine with Austin to “to provide a method to allow for
the storage capacity of the memory to be accurately set.” Ans. 6. Therefore,
Appellant’s assertion that the references were improperly combined
(contention 4) is not persuasive of error and accordingly, the Examiner has
properly relied upon the combination of Alwis, Eraslan and Austin in
formulating the disputed rejections under 35 U.S.C. § 103(a).
For the reasons discussed supra, we sustain the rejection of claims 9
under 35 U.S.C. § 103(a) as being unpatentable over Alwis, Eraslan and
Austin and that of claims 11-13, 17, and 19-23 not separately argued.

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 9, 11-13, 17, and 19-23 under 35 U.S.C. § 103(a) over
Alwis, Eraslan and Austin.

DECISION
The decision of the Examiner to reject claims 9, 11-13, 17, and 19-23
is affirmed.
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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).

AFFIRMED
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