Ex Parte Flores et al

Patent Trial and Appeal BoardJun 30, 2016

13281957 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/281,957 10/26/2011 Emigdio Z. Flores 36738 7590 07/05/2016 ROGITZ & AS SOCIA TES 750B STREET SUITE 3120 SAN DIEGO, CA 92101 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. 200802332.02 7465 EXAMINER YENKE, BRIAN P ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMIGDIO Z. FLORES, MARIO RAMIREZ, WAN FLORES, and EDUARDO ZUNIGA Appeal2014-007707 Application 13/281,957 1 Technology Center 2400 Before THU A. DANG, LARRY J. HUME, and JAMES W. DEJMEK, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Non- Final Rejection of claims 9, 11-14, and 21-29. Appellants have previously canceled claims 1-8, 10, and 15-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Sony Corp. App. Br. 2. Appeal2014-007707 Application 13/281,957 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed "invention relates generally to dynamically chang[ing] the contrast of video displays using average picture levels (APL) and histogram analysis." Spec. 1, 11. 5---6. Exemplary Claims Claims 9 and 24, reproduced below, are illustrative of the subject matter on appeal (emphasis added to contested limitations and formatting added to claim 9): 9. A display system comprising: a display; and a processor circuitry configured for receiving an input signal representing a demanded image for the display and automatically altering a gamma of the input by applying an S- shaped transfer function to the input to produce an output used by the display to present the demanded image, wherein a positive exponential gain function is used to establish a portion of the curve below an average picture level (APL) threshold and a negative exponential gain function is used to establish a portion of the curve above the threshold. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Jan. 17, 2014); Reply Brief ("Reply Br.," filed May 19, 2014); Examiner's Answer ("Ans.," mailed May 2, 2014); Non-Final Office Action ("Non-Final Act.," mailed Nov. 18, 2013); and the original Specification ("Spec.," filed Oct. 26, 2011 ). 2 Appeal2014-007707 Application 13/281,957 24. A display system comprising: a display; and a processor circuitry configured for receiving an input signal representing a demanded image for the display and automatically altering a gamma of the input by applying a transfer function to the input to produce an output used by the display to present the demanded image, the processor circuitry altering the gamma of the input at least in part by: adjusting the gamma to render an adjusted image at least in part using average picture level (APL) and histogram information associated with the image to modify a contrast of the image. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Amano et al. ("Amano") us 5,045,926 Sept. 3, 1991 Moldvai US 2006/0082689 Al Apr. 20, 2006 Harada US 2007 /0285577 Al Dec. 13, 2007 Na US 2008/0037866 Al Feb. 14,2008 Priem et al. ("Priem") US 2010/0007592 Al Jan. 14,2010 Neuman US 8,131,108 B2 Mar. 6, 2012 3 Appeal2014-007707 Application 13/281,957 Rejections on Appeal RI. Claims 24 and 29 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as lacking written description support. Ans. 2. R2. Claim 9 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Moldvai and Neuman. Ans. 4. R3. Claims 9, 11-14, and 21-27 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Na and Neuman. Ans. 8. R4. Claim 28 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Na, Neuman, Amano, and Harada. Ans. 16. R5. Claim 9 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Priem and Neuman. Ans. 18. R6. Claims 24--27 stands rejected under the judicially-created doctrine of nonstatutory obviousness-type double patenting (OTDP) over claims 1 and 3 of U.S. Patent 8, 125,569 to Flores et al. Ans. 22. CLAIM GROUPING Based on Appellants' arguments (App. Br. 3-15) and the Examiner's findings and legal conclusions, we decide the appeal of obviousness Rejection R3 of claims 9, 11-13, 21, and 22 on the basis of representative claim 9; 3 we decide the appeal of obviousness Rejection R3 of claims 14 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). 4 Appeal2014-007707 Application I3/28I,957 and 23-27; infra; and we decide Rejections RI, R2, and R4 through R6, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We agree with particular arguments advanced by Appellants with respect to Rejection RI of claims 24 and 29 for the specific reasons advanced by Appellants, and we also agree with arguments advanced by Appellants with respect to Rejections R3 and R4 of claims I 4 and 23-28, as discussed, infra. However, we disagree with Appellants' arguments with respect to Rejections R2, R3, and R5 of claims 9, 11-I4, and 2I-29, and we incorporate herein and adopt as our own: (I) 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 in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. We highlight and address specific findings and arguments regarding claims 9 and 24 for emphasis as follows. 1. Â§ 112, iJ 1, Written Description Rejection RI of Claims 24 and 29 Issue 1 Appellants argue (App. Br. 3--4; Reply Br. I-2) the Examiner's rejection of claims 24 and 29 under 35 U.S.C. Â§ I I2, first paragraph, as lacking written description support is in error. These contentions present us with the following issues: 5 Appeal2014-007707 Application 13/281,957 (a) Did the Examiner err in finding the recitation of "a transfer function" in claim 24 lacks written description support in the originally filed application; and (b) Did the Examiner err in finding claim 29 was impermissibly broadened by not reciting a DCT gain factor as disclosed in the Specification, such that the claim does not meet the written description requirement ofÂ§ 112, first paragraph? Analysis Issue 1 (a) With respect to claim 24, the Examiner states he is "unable to find support in the disclosure for the claimed (claim 24), 'a transfer function', the only mention of transfer function is 'S shaped transfer function'." Ans. 2. In rebuttal, Appellants contend, "none of the rejections are based on allegations of new matter; just a general and legally mistaken notion that claims cannot be broader than the written description." App. Br. 4. In particular, Appellants argue that "page 2 of the present specification, for example, describes a generic 'transfer curve' and then iteratively drills down into details of example embodiments, and the first line of page 6 mentions 'transfer function' with the 'S' prefix." Id. Our reviewing court guides, "claims may embrace 'different subject matter than is illustrated in the specific embodiments in the specification.'" Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations omitted). Further, as pointed out by Appellants, "[i]t is axiomatic that claims may be broader than the underlying written description, see, e.g., Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir. 6 Appeal2014-007707 Application 13/281,957 2009)." App. Br. 4. We therefore agree with Appellants that claim 24 has adequate written description support. Issue 1 (b) As for claim 29, Appellants argue the claim does not lack written description support, but instead is merely broader than the written description. 4 Id. We agree with Appellants. We agree with Appellants because, as our reviewing court guides, " [a] drafter uses the term 'comprising' to mean 'I claim at least what follows and potentially more.'" Vehicular Techs. Corp. v. Titan Wheel Int'!, Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000); see also Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) ("'Comprising' is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.") (Emphasis added). The Examiner has not made a finding that the DCT gain factor, as disclosed in the equation on page 8, line 1 of Appellants' Specification, is an essential element in claim 29. Accordingly, we are persuaded of error in the Examiner's written description rejection of claims 24 and 29 under 35 U.S.C. Â§ 112, first paragraph such that we cannot sustain Rejection RI. 4 Although the basis for the written description rejection of claim 29 is not clear to the Board, it appears the Examiner may have been considering a rejection of claim 29 underÂ§ 112, i-f 1 as lacking an enabling disclosure. 7 Appeal2014-007707 Application 13/281,957 2. Â§ 103 Rejection R2 of Claim 9 Issue 2 Appellants argue (App. Br. 4---6; Reply Br. 3) the Examiner's Rejection R2 of claim 9 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Moldvai and Neuman is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a display system that includes, inter alia, processor circuitry that applies "an S-shaped transfer function to the input," "wherein a positive exponential gain function is used to establish a portion of the curve below an average picture level (APL) threshold and a negative exponential gain function is used to establish a portion of the curve above the threshold," as recited in claim 9? Analysis Appellants contend, " [ t ]he clear error meriting reversal of this rejection is the failure of Neuman to teach exponential functions in a way that, even if combined with Moldvai as proposed, would meet the claim," allegedly because the Examiner is engaged in impermissible hindsight in choosing the various teachings from the references App. Br. 4--5. The U.S. Supreme Court has held the relevant inquiry in an obviousness analysis is whether the Examiner has set forth "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). 8 Appeal2014-007707 Application 13/281,957 The Examiner cites Neuman Figure 7b to suggest both positive and negative exponential gain functions used above/below an average picture level threshold, and column 14 (Ans. 8) as teaching or suggesting "the use of linear or non-linear (to include exponential) functions may be used for performing the contrast adjustment, where non-linear is stretching [sic] is preferred for skewed data. Neuman Figure 7b is reproduced below: - â€¢ - ; - Modet'ate strekh ------ No stretch Luma b Fig. 7b "FIG. 7b illustrates using AdjMin and AdjMax to implement an exemplary stretch, in accordance with an embodiment of the present invention." Neuman col. 3, 11. 26---28 The motivation for modifying Moldvai with Neuman would provide the benefits as noted above [in column 14 ofNeuman]."5 We agree with the Examiner's findings with respect to the teachings and suggestions of Neuman, as well as the Examiner's stated basis for motivation to combine 5 For example, Neuman teaches " [ o ]ther embodiments of the present invention may use more bins in the histogram and use exponential function for nonlinear stretch." Neuman col. 14, 11. 37-39. 9 Appeal2014-007707 Application 13/281,957 the references in the manner suggested, which we incorporate herein and adopt as our own,6 and which we find meets the "articulated reasoning with some rational underpinning" requirement of KSR for making the combination with or modification of Neuman. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 9, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 9. 3. Â§ 103 Rejection R3 of Claims 9, 11-13, 21, and 22 Issue 3 Appellants argue (App. Br. 6-7; Reply Br. 3---6) the Examiner's rejection of claim 9 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Na and Neuman is in error. Analysis With respect to claim 9, these contentions present us with the same dispositive issue concerning the teachings of Neuman as presented above in Rejection R2 of claim 9 in Issue 2, above. In this rejection, the Examiner cites Na as teaching an S-shaped transfer function and again, cites Neuman as teaching or suggesting the 6 We disagree with Appellants' inaccurate contentions that "Neuman always and everywhere assumes the use of only a single non-linear function, see figure 9, the only non-linear example shown in Neuman." App. Br. 5. See, for example, Neuman col. 14, 11. 37-39. 10 Appeal2014-007707 Application 13/281,957 contested limitation of claim 9, i.e., using a positive exponential function below an APL threshold, and a negative exponential function above an APL threshold, in the manner recited. See Ans. 8-15. For the same reasons discussed above with respect to Rejection R2 of claim 9, we sustain the rejection of claim 9, and claims 11-13, 21, and 22, which depend therefrom and stand therewith. 4. Â§ 103 Rejection R3 of Claims 14 and 23-27 Issue 4 Appellants argue (App. Br. 7-8, 9-12; Reply Br. 4 et seq.) the Examiner's rejection of claims 14 and 23-27 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Na and Neuman is in error. These contentions present us with the following issue: Did the Examiner err in rejecting these claims under Â§ 103 by failing to establish a prima facie case of obviousness? Analysis For all these claims, we agree with Appellants' contentions, and find the Examiner, throughout the Final Action and Answer, has not clearly mapped each limitation of these claims to the cited prior art, and therefore has not met his burden of establishing a prima facie case of unpatentability underÂ§ 103. Accordingly, we cannot sustain the Examiner's Rejection R3 of claims 14 and 23-27. 11 Appeal2014-007707 Application 13/281,957 5. Â§ 103 Rejection R4 of Claim 28 Issue 5 For the same reasons as discussed above with respect to Rejection R3 of claims 14 and 23-27, we find the dispositive issue to be that the Examiner has not clearly mapped the limitations of claim 28 to the cited prior art, such that we cannot sustain the rejection of this claim, which depends from claim 24. 6. Â§ 103 Rejection R5 of Claim 9 Issue 5 Appellants argue (App. Br. 13-15; Reply Br. 7) the Examiner's rejection of claim 9 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Priem and Neuman is in error. These contentions present us with the same dispositive issue concerning the teachings of Neuman as presented above in Rejection R2 of claim 9 in Issue 2, above. For the same reasons, we sustain Rejection R5 of claim 9. 7. OTDP Rejection R6 of Claims 24--27 Issue 7 Appellants state that a Terminal Disclaimer has been filed and entered by the Examiner to overcome the OTDP Rejection R6 of claims 24--27. Reply Br. 1. Accordingly, we find the Examiner's Rejection R6 of claims 24--27 to have been rendered moot by the Examiner's entry of the Terminal Disclaimer. The Examiner should withdraw this rejection. 12 Appeal2014-007707 Application 13/281,957 CONCLUSIONS7 (1) The Examiner erred with respect to written description Rejection RI of claims 24 and 29 under 35 U.S.C. Â§ 112, first paragraph, and we do not sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejections R2, R3, and R5 of claims 9, 11-13, 21, and 22 under 35 U.S.C. 7 We remind Appellants of the requirement to conduct all business with the Office with decorum and courtesy. Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers. 37 C.F.R. Â§ 1.3 ("Business to be conducted with decorum and courtesy"). We note multiple occasions where Appellants disparage the Examiner's findings and analysis, e.g., "with the rejection mumbling something ... " (App. Br. 7); " [ w ]hatever else the examiner's ramblings and musings ... " (App. Br. 8); referring to the Examiner's rejection as a "verbal puzzle" and "incoherent statement related to 'contrast'" (App. Br. 10); "[w]hile Appellant cannot immediately lay hands on case law that says examiners may not cure hypothetical maladies in indeterminate 'values' using their own imaginations, Appellant is pretty sure this is not a sanctioned manner of making a prima facie case of obviousness" (App. Br. 12); "[t]he [Appeal] conferees continue to blunder ... " (Reply Br. 2); and "Appellant congratulates the [Appeal] conferees on their perspicacious use of bewildering argumentation, given that their actual rejection is so bad on the actual references so devoid of teaching or suggesting the claim at issue." Reply Br. 5. We find snide comments such as these do not represent Appellants' best interests, arguably violate at least the spirit of Rule 1.3, and are not helpful in aiding the Board in properly resolving the issues necessary to render a decision on the merits. 13 Appeal2014-007707 Application 13/281,957 Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. (3) The Examiner erred with respect to obviousness Rejections R3 and R4 of claims 14 and 23-28 under 35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we cannot sustain the rejections. ( 4) The Examiner entered the Terminal Disclaimer with respect to OTDP Rejection R6 of claims 24--27, thus rendering this rejection moot. DECISION We affirm the Examiner's decision rejecting claims 9, 11-13, 21, and 22; and we reverse the Examiner's decision rejecting claims 14 and 23-29. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED-IN-PART 14