Ex Parte Garner et al

Patent Trial and Appeal Board

Jun 13, 2014

11256011 (P.T.A.B. Jun. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GRANT K. GARNER,
MASOUD K. ZAVAREHI, ANDREW K. JUENGER,
and PAUL H. McCLELLAND
____________

Appeal 2012-006286
Application 11/256,011
Technology Center 2800
____________

Before CHUNG K. PAK, TERRY J. OWENS, and GEORGE C. BEST,
Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
On June 9, 2011, the Examiner finally rejected claims 1-8, 16-25, and
27-32 of Application 11/256,011 and objected to claims 10-15 and 19.
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 Hewlett-Packard Development Co., a wholly-owned affiliate of Hewlett-
Packard Co., is identified as the real party in interest. (App. Br. 1.)
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BACKGROUND
The ’011 Application describes methods and apparatus for adjusting
the luminance of pixels forming a projected image to account for the
reflectivity of the screen and ambient lighting conditions. Spec. ¶ 0010.
Claim 1 is representative of the ’011 Application’s claims and is
reproduced below:
1. A method comprising:
transforming target luminances of image pixels to
projection luminances using a light value and a reflectivity of a
projection screen, wherein the image pixels are assigned into
regimes using target luminances of the image pixels, the light
value and the reflectivity of the screen; and
projecting the image pixels towards the screen with the
physical projection apparatus.
(App. Br. 31 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 32 is rejected under 35 U.S.C. § 112 ¶ 1 as failing to comply
with the written description requirement. (Ans. 5.)
2. Claims 20, 21, 24, and 25 are rejected under 35 U.S.C. § 112 ¶ 2 as
indefinite. (Ans. 6.)
DISCUSSION
Rejection 1. The Examiner rejected claim 32 under 35 U.S.C. § 112
¶ 1. In particular, the Examiner found that the limitation that the function
“F(nL/nTOT) comprises (nL/nTOT)P [sic, (nL/nTOT)P], wherein P is a power” is
not supported by the ’011 Application’s Specification. (Ans. 5.)
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Appellants argue that the disputed limitation is supported by the
original Specification. (App. Br. 10-11.) In particular, Appellants cite this
language:
As noted above, NL is equal to a function F of nL/nTOT. In
one embodiment, the function F is a power of the percentage of
total pixels within regime 622 [shown in Fig. 5]. As a result, a
particular weighting may be given to the percentage of pixels
within region 622 for image quality. In the particular example
illustrated, NL equals (nL/nTOT)0.75. In other embodiments, other
powers and other weightings may be given to the percentage of
pixels having target luminances within the regime 622. In still
other embodiments, transform 650 may have other
formulations.
Spec. ¶ 0050 (emphasis added.) Appellants point to the specific equation set
out in this portion of the Specification,
. , as support for the
disputed limitation.2
The Examiner’s response makes two arguments: (1) The
Specification states that the function F is a power of the percentage of total
pixels within regime 622, which is “nonsensical” and does not support the
claimed mathematical relationship (Ans. 7), and (2) the disclosure also is
unclear because nL/nTOT is the fraction of the total number of pixels that are
within regime 622, not the percentage (id. at 8).
For an applicant to comply with the written description requirement,
the applicant’s specification must convey with reasonable clarity to a person

2 We note that the Specification also includes a second example in which
.
. Spec. ¶ 0056. Appellants, however, do not cite this
disclosure as support for the limitation in claim 32.
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of ordinary skill in the art that the applicant was in possession of the
invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983). After careful consideration of the Specification’s disclosure, we are
not persuaded by the Examiner’s arguments. For the reasons set forth
below, we reverse the rejection of claim 32.
First, the Examiner argues that, rather than supporting claim 32, the
portion of the Specification cited by Appellants is nonsensical. The
Examiner explains this position:
Appellant [sic] asserted that there [t]here [sic, “[t]here] is
nothing unclear about a claim that recites that a function of a
variable (the percentage of total pixels, nL/nTOT,) is a power P of
this variable or a power P of the percentage of total pixels.”
Examiner respectfully disagrees. Here plain meaning
applies. “[F]unction F is a power of the percentage of total
pixels with the regime” does not have any particular meaning.
“[F]unction F is a power of the percentage of total pixels” may
be interpreted as F is a power P where the power P is a power P
of a percentage of total pixels, i.e., F = P where P is found in
((nL/nTOT,)*(100)%)P. Other possible interpretations, which
requires significant rewording, include: function F equals to
the percentage of total pixels raised to a power or the
percentage of total pixel raised to the power of P where P
equals to F (F equals to the log, with a base, of the percentage
of the total pixel). For an example, F is a power of N can be
interpreted as F(N, m) = Nm or F(N, m) = loga Nm. Basically,
“function F is a power of the percentage of total pixels with the
regime” is nonsensical.
(Ans. 7 (quoting App. Br. 10) (emphasis added).)
This argument is not persuasive because the adequacy of a
Specification’s disclosure is assessed from the point of view of a person of
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ordinary skill in the art. Kaslow, 707 F.2d at 1375. Having reviewed
Appellants’ Specification, we find that a skilled artisan would have
understood that Appellants were in possession of and described an
embodiment of the claimed invention in which comprises .
The Examiner asserts that the statement that “‘function F is a power of the
percentage of total pixels with the regime’ does not have any particular
meaning.” (Ans. 7 (quoting App. Br. 10).) Even if we assume that this
assertion is true,3 the context provided by the rest of the ’011 Application’s
Specification confers a particular meaning to this statement.
Second, we agree with the Examiner’s statement that represents
the fraction of the number of pixels in regime L rather than the percentage of
such pixels. We, however, find that a person of ordinary skill in the art also
would have recognized this error and realized that the term percentage either
was used in error or that a stated percentage should be converted to a
fraction for use in the functions included in the Specification.
Rejection 2. The Examiner rejected claims 20, 21, 24, and 25 as
indefinite. These claims include one or more of the following mathematical
limitations:
(1)
(2)

3 The Examiner concedes that the hypothesized alternative meanings require
“significant rewording” of the Specification’s disclosure. (Ans. 7.) Thus,
we doubt but need not decide whether the Examiner’s assertion is, in fact,
correct.
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(3) .
The Examiner argues that these limitations are indefinite “because F,
defined by the [S]pecification as ‘F is a power of the percentage of total
pixels,’ is unclear.” (Ans. 6.) The Examiner concludes that, because the
Specification so defines F, a person of ordinary skill in the art would not be
able to determine the scope of these limitations. (Id.)
The Examiner’s interpretation of the Specification is incorrect. The
alleged definition upon which the Examiner relies is specifically described
as being one embodiment of the claimed invention. See Spec. ¶ 0050 (“In
one embodiment, the function F is a power of the percentage of total
pixels”). The Examiner, therefore, has attempted to limit claims 20, 21, 24,
and 25 by incorporating limitations from an embodiment into the claims.
This is improper. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005) (en banc) (“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments.”). More importantly, for the
reasons discussed above, the Examiner does not demonstrate that one of
ordinary skill in the art would not have understood the scope of the
limitations in question.
Because the Examiner adopts an erroneous claim construction and
does not establish indefiniteness of the claim language from the perspective
of one of ordinary skill in the art, we reverse the rejection of claims 20, 21,
24, and 25 as indefinite.
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CONCLUSION
For the foregoing reasons, we reverse the rejections of claims 20, 21,
24, 25, and 32 under 35 U.S.C. § 112. The Examiner has withdrawn the
previously asserted rejections pursuant to § 103(a).
REVERSED

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