Ex Parte KIMURA

Patent Trial and Appeal Board

Nov 30, 2018

14198690 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/198,690 03/06/2014 Seiji KIMURA
60803 7590 12/03/2018
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
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.
1946-0625 9178
EXAMINER
PRINGLE-PARKER, JASON A
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
12/03/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI KIMURA
Appeal 2018-005141
Application 14/198, 690 1
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20 and 23-26, which constitute all the claims
pending in this application. Claims 21-22 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest identified by Appellant is Sony Corporation.
App. Br. 3.
Appeal 2018-005141
Application 14/198,690
STATEMENT OF THE CASE
Introduction
Appellant's described and claimed invention relates generally to an
image processing apparatus and method of generating a wide-view image
considering characteristics of an input image. See Spec. 1: 10-14. 2
Claim 1 is representative and reads as follows (with the disputed
limitations emphasized):
1. An image processing apparatus, comprising:
a center generation section configured to generate a central
image being an image of a central part on a screen by performing
scaling processing on an image based on characteristics of the
image;
a periphery generation section configured to generate a
peripheral image by extrapolation of the central image, the
peripheral image being a part that is peripheral to the central
image and partially overlapping the central image;
an extrapolation section configured to identify a level of
extrapolation reliability that indicates accuracy of the
extrapolation;
an adjustment section configured to adjust the peripheral
image based on the level of extrapolation reliability; and
an image combination section configured to generate a
combined image by combining the central image and the
peripheral image, the central image being generated by the center
generation section, the peripheral image being generated by the
periphery generation section,
2 Our Decision refers to the Final Office Action mailed July 12, 2017 ("Final
Act."), Appellant's Second Supplemental Appeal Brief filed February 1,
2018 ("App. Br.") and Reply Brief filed April 18, 2018 ("Reply Br."), the
Examiner's Answer mailed February 21, 2018, and the original Specification
filed March 6, 2014 ("Spec.").
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Application 14/198,690
wherein the center generation section, the periphery
generation section, the extrapolation section, the adjustment
section, and the image combination section are each
implemented via at least one processor.
App. Br. 15 (Claims App'x.).
Rejection on Appeal
Claims 1-20 and 23-26 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments in the Appeal Brief (see App. Br. 11-13) and the Reply Brief (see
Reply Br. 4---6), and are not persuaded the Examiner has erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2---6), and in the Examiner's Answer (Ans. 2-9), and we concur with the
conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Appeal Brief and Reply
Brief.
The "enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) ( citation omitted). Whether undue experimentation is
required is a legal conclusion reached by weighing several underlying
factual inquiries. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988)
(holding that whether undue experimentation is required is a "conclusion
reached by weighing many factual considerations ... includ[ ing] ( 1) the
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Application 14/198,690
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.").
With respect to the Wands factors, the Examiner finds:
(A) The breadth of the claims[:] The claims are broad in
comparison to the actual steps the ordinary artisan would
have to undertake to fulfil the generation of an extrapolation
reliability value since the claim merely recites an extrapolation
section which identifies the value, with no further limitations.
(B) The nature of the invention[:] The use of extrapolation in
computer graphics is a well-known technique, however it is not
known to use an extrapolation reliability. Extrapolation
reliability is not a term of art, nor commonly used in the art. A
search for "extrapolation reliability" brings up only Applicants
own invention, and no other art.
(C) The state of the prior art[:] As indicated above,
extrapolation reliability is not known in the art, therefore the
prior art does not teach how to generate an extrapolation
reliability value and map it to a 0-1 value for use with
adjusting a peripheral image.
(D) The level of one of ordinary skill[:] The skill of the
ordinary artisan for computer graphics and image extrapolation
is fairly high, with the ordinary artisan holding at least a 4
year degree in computer science, computer engineering, or
similar.
(E) The level of predictability in the art[:] There are at least
some aspects of unpredictability in the art, inasmuch as
extrapolation in general is the assumption that existing trends
will continue, and a such there is an inherent level of
unpredictability compared to a process such as interpolation.
With regard to basic image generation and border generation, it
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Application 14/198,690
is a well-known and well-understood area and there is a high
predictability.
(F) The amount of direction provided by the inventor[:]
Minimal, if any, direction is provided by the inventor. As
indicated above, no direction is given towards how to
determine the reliability value, or how to map it to a 0-1 value.
(G) The existence of working examples[:] A working example
appears to exist inasmuch as the present specification uses the
extrapolation reliability value for numerous purposes related to
adjusting the border image. However, examples relate
specifically to using the obtained extrapolation reliability
value, but not how to obtain the value.
(H) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure[:] Significant
experimentation would be required on the part of the ordinary
artisan to develop the extrapolation reliability value and map
it to the 0-1 value in order to be able to use it for adjusting
images, as neither the prior art nor the present specification
provides much guidance on how one would generate these
values.
Final Act. 5---6 ( emphasis added).
Appellant argues that page 19, lines 10-20, of Appellant's
Specification provide "explicit support and enablement for identification and
utilization of a level of 'extrapolation reliability."' App. Br. 12 (citing
Spec. 19: 10-20). Thus, as argued by Appellant, the Examiner's findings are
more aptly characterized as allegations that either Appellant's Specification
does not provide sufficient examples of how the level or value of
extrapolation reliability is determined, or Appellant's claims are too broad
with respect to Appellant's Specification, rather than a lack of enablement. 3
See App. Br. 12-13.
3 Appellant also argues the Examiner should have entered the Amendment
filed August 21, 2017, as the claim amendments would have overcome the
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We are not persuaded that Appellant has persuasively established
error in the Examiner's findings. Instead, we agree with the Examiner's
findings regarding the Wands factors. In particular, we agree with the
Examiner's findings that Appellant's Specification does not explain how to
determine a level of extrapolation reliability (i.e., how reliable or accurate an
extrapolation of an image is), or how to map the level of extrapolation to a
value within a range ofO to 1. See Final Act. 4--5; see also Spec. 19:10-20.
Thus, we agree with the Examiner that the recited subject matter is not
enabled because undue experimentation would be required to practice the
claimed invention. See Final Act. 6.
In Appellants' Reply Brief, Appellant also argued several of the
Wands factors actually weigh in favor of enablement, contrary to the
Examiner's findings. See Reply Br. 4--5 (citing Spec. 18:18-19:20). Even
assuming that Appellant did not waive this argument for failing to explicitly
raise the argument in its Appeal Brief, the argument is merely conclusory,
and thus, is not persuasive of error.
Accordingly, we sustain the Examiner's rejection of claims 1-20 and
23-26 for lack of enablement under 35 U.S.C. § 112(a).
enablement rejection. See App. Br. 11. The failure to enter a claim
amendment is a petitionable issue, rather than an appealable issue, and
Appellant has failed to petition that the rejection be designated a new ground
of rejection. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) ("The
refusal of an examiner to enter an amendment after final rejection of claims
is a matter of discretion. If there is an abuse of discretion, the matter may be
remedied by a Rule 181 petition to the [Director].") ( citations omitted); see
also 37 C.F.R. § 1.127 ("From the refusal of the primary examiner to admit
an amendment, in whole or part, a petition will lie to the Director under
§ 1.181.").
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DECISION
We affirm the Examiner's rejection of claims 1-20 and 23-26 under
35 U.S.C. § 112(a).
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).
AFFIRMED
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