Ex Parte Bonnier et al

Patent Trial and Appeal Board

Apr 15, 2016

12732949 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121732,949 03/26/2010
127226 7590 04/19/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Nicolas P.M.F. BONNIER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0142-0681PUS1 4208
EXAMINER
CESE, KENNY A
ART UNIT PAPER NUMBER
2668
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS P.M.F. BONNIER, JEROME O.R. GUERMONT,
and FRANCIS J.M. SCHMITT (DECEASED)
Appeal2014-005075
Application 12/732,949
Technology Center 2600
Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
DANIEL N. FISHMAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005075
Application 12/732,949
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-10 and 12-17. Claim 11 has been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
Exemplary Claim
Claim 1 under appeal reads as follows (formatting and emphasis
added):
1. A method for mapping an original image from a source gamut color
subspace to a destination gamut color subspace belonging to a certain
output device and having a certain black point, the method comprising
the step of:
carrying out black point compensation, the step of black point
compensation being adaptive by, in dependence on a characteristic of
the image and the black point of the output device,
carrying out black point compensation, if a value of the
characteristic is more than a first threshold, and
carrying out no black point compensation, if the value
of the characteristic is less than or equal to the first threshold.
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Application 12/732,949
Rejections on Appeal
1. The Examiner rejected claims 1, 4, 5, 7-10, 12, 13, and 17, as
being unpatentable under 35 U.S.C. § 103(a) over the combination of
Kerofsky (US 2007/0291048 Al; published Dec. 20, 2007) and Edge (US
200710188780 Al; published Aug. 16, 2007). 1
2. The Examiner rejected claims 2, 3, 15, and 16 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Kerofsky,
Edge, and Sharman (US 2003/0038957 Al; published Feb. 27, 2003).2
3. The Examiner rejected claims 6 and 14 as being unpatentable
under 35 U.S.C. § 103(a) over the combination ofKerofsky, Edge, and
Ptucha et al. (US 2006/01823 61 A 1; published Aug. 1 7, 2006). 3
Appellants' Contentions4
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he black point in Kerofsky cannot be comparable with a
color point in a three-dimensional color space as set forth in the
claimed invention, but only refers to a minimum brightness
1 As to this rejection, our Decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 4, 5, 7-10, 12, 13, and 17, is not discussed further herein.
2 As to this rejection, our Decision as to the underlying § 103 rejection of
claim 1 is determinative. Therefore, except for our ultimate decision, the
rejection of these claims is not discussed further herein.
3 As to this rejection, our Decision as to the underlying § 103 rejection of
claim 1 is determinative. Therefore, except for our ultimate decision, the
rejection of these claims is not discussed further herein.
4 These contentions are determinative as to the rejections on appeal.
Therefore, Appellants' other contentions are not discussed herein.
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Appeal2014-005075
Application 12/732,949
that can be rendered. Therefore, Appellants respectfully submit
that the dependence of the application of black point
compensation on a characteristic of an image as set forth in
claim 1 is clearly absent from the teachings of Kero/sky.
App. Br. 6, Appellants' emphases omitted, Panel emphases added.
Edge discloses several different gamut mapping techniques that
achieve black point compensation without requiring manual
intervention. However, no hint is given to apply these
techniques adaptively, based on a characteristic of an image
and the black point of the output device as recited in claim 1.
More specifically, Edge teaches that the modified BPC
technique applies a BPC function that is based on the
application of a nonlinear tone compression mapping to convert
color values in a first gamut to color values in a second gamut
(see paragraph [0004] of Edge), wherein it should be noted that
the gamut is a property of a color space, not an image
characteristic. In other words, the taught technique for gamut
mapping in Edge does not depend on actual occurring color
values in the image, but only depend on the gamut of the colors,
which is the set of all possible color values in the image (also
see paragraph [0002] of Edge).
Therefore, Appellants respectfully submit that Edge fails
to teach or suggest "the step of black point compensation being
adaptive by, in dependence on a characteristic of the image and
the black point of the output device" as recited in claim 1.
App. Br. 7, Appellants' emphases omitted, Panel emphases added.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[I]n Edge, despite that the modified BPC technique impacts the
highlight and shadow tones differently, it can be implemented
by application of a single mathematical BPC function that
produces the different BPC results in the highlight tone and
shadow tone regions. In other words, what is disclosed in Edge
is a BPC function that is always "ON." It is clear that Edge
nowhere teaches or suggests using a threshold, i.e., a selected
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Appeal2014-005075
Application 12/732,949
image property, to switch on or switch off a BPC function as
set forth in claim 1.
App. Br. 8, Appellants' emphases omitted, Panel emphases added.
In addition, it should be also noted that the values of "7 5% to
100%" and "0% to 25%" mentioned by the Examiner are
merely provided to designate shadow tones and highlight tones
(i.e., 75% to 100% intensity being the shadow tones, 0% to
25% intensity being the highlight tones), and are not used as a
threshold to determine whether to carry out no black point
compensation or not. According to Edge, for all images, the
highlight tones, corresponding to 0% to 25% intensity, and the
shadow tones, corresponding to 75% to 100% intensity, are
mapped in accordance to the difference in device gamut,
independent of whether these highlight tones or shadow tones
are actually present in the image or not.
App. Br. 9, Appellants' emphases omitted, Panel emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claim l as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
Although we disagree with most of Appellants' contentions, we agree with
Appellants' ultimate conclusion for reasons discussed below.
As to Appellants' above contention 1, we disagree. Contrary to
Appellants' argument that Kerofsky "only refers to a minimum brightness,"
our review of Kerofsky finds both brightness and contrast are involved (e.g.,
Kerofsky i-f [357] and claim 2). Further, contrary to Appellants' argument
that "compensation on a characteristic of an image as set forth in claim 1 is
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Appeal2014-005075
Application 12/732,949
clearly absent from the teachings of Kerofsky," Appellants' own
Specification at page 1 states that contrast (such as we find in Kerofsky) is
an image characteristic. Also, contrary to Appellants' argument that in Edge
"no hint is given to apply these techniques adaptively," we agree with the
Examiner that "applying a different BPC conversion to original source PCS
data 32 depending on whether the source PCS data is in the highlight tones
or shadow tones," (Edge i-f [55]) would be understood to be adaptively
applying these techniques. Lastly, contrary to Appellants' argument that
"gamut is a property of a color space, not an image characteristic," we find
that, consistent with Appellants' Specification at page 1, lines 21-22, and
page 2, line 22, a gamut is both an image characteristic and a color space
characteristic.
As to Appellants' above contention 2, we disagree as to Appellants'
argument that Edge is not using a threshold. Contrary to Appellants'
argument, an artisan would recognize that the intensity levels in Edge are
being used as thresholds.
Further, as to Appellants' above contention 2 argument that the
Examiner's Final Action has not shown that Edge switches on or switches
off a BPC function (that is, determines whether to carry out black point
compensation or not), we agree. The Examiner provides new analysis
directed to this argument:
Edge discloses not performing black point modification if the
pixel intensity percentage of the image falls within a
predetermined percentage value of 0%-25%, and instead applies
an identity slope in which destination image output value equals
the source image input value.
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Application 12/732,949
Ans. 5. 5 Because the Examiner fails to explain why an artisan would so
interpret the identity slope, we conclude that there is insufficient articulated
reasoning to support the Examiner's final conclusion that the claimed
invention is obvious.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
10 and 15-17 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Appellants' application as filed contained seventeen claims, two of
which (claims 1 and 5) depended from no other claim and, therefore, are
independent claims. Four other claims (claims 10 and 15-17) were
structured as an article of manufacture ("Computer program" later amended
to "computer program embodied on a non-transitory computer readable
medium"), each referencing a method claim for its limitations. Although
such "manufacture/method" claims are sometimes construed as independent
claims that reference other claims for certain limitations, here the intrinsic
evidence does not support such an interpretation. Rather, this record
requires us to interpret claims 10 and 15-1 7 as dependent manufacture
claims, which depend from parent method claims. The evidence supporting
such an interpretation includes (1) Appellants' New Application Fee
Transmittal form, filed March 26, 2010, which states only two (not six)
independent claims have been filed; and (2) Appellants' Appeal Brief at
5 We note an admission by Appellants that it is known in the prior art to
switch on or switch off a BPC function ("each time the user wants to make a
print out of an image he has to decide whether the conversion of a particular
image looks better with or without BPC" (Spec. 2:22-24)).
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Application 12/732,949
pages 10 and 11, states claims 10 and 15-17 "depend, either directly or
indirect! y, from independent claim 1."
Because claims 10 and 15-1 7 each recite both a "medium" (an article
of manufacture) and a method (by their dependency) for using that medium,
they do not apprise a person of ordinary skill in the art of their scope, and
they are invalid under section 112, paragraph 2. Particularly, the claims are
indefinite because it is unclear whether infringement occurs when one
creates a manufacture that allows the user to perform the method, or whether
infringement occurs when the user actually uses the manufacture to perform
the method. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1383-84 (Fed. Cir. 2005) (Claims were held indefinite because they
claimed both a system and a method for using that system.), and In re Katz,
639 F.3d 1303, 1318 (Fed. Cir. 2011) (Claims were held indefinite because
they claimed both an apparatus and method of use.).
37 C.F.R. § 41.50(b)
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
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Application 12/732,949
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
CONCLUSIONS
(1) Appellants have established the Examiner erred in rejecting
claims 1-10 and 12-17 as being unpatentable under 35 U.S.C. § 103(a).
(2) We reject claims 10 and 15-17 under 35 U.S.C. § 112, second
paragraph.
(3) On this record, claims 1-9 and 12-14 have not been shown to be
unpatentable.
( 4) Claims 10 and 15-17 are not patentable.
DECISION
The Examiner's rejections of claims 1-10 and 12-17 are reversed.
Claims 10 and 15-17 are newly rejected.
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).
REVERSED
37 C.F.R. § 41.50(b)
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