Ex Parte Rosales

Patent Trial and Appeal BoardNov 28, 2012

09821563 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/821,563 03/29/2001 Dean Rosales ITL.0536US (P10841) 5880 21906 7590 11/29/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER TUCKER, WESLEY J ART UNIT PAPER NUMBER 2669 MAIL DATE DELIVERY MODE 11/29/2012 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 DEAN ROSALES ________________ Appeal 2011-005069 Application 09/821,563 Technology Center 2600 ________________ Before MAHSHID D. SAADAT, ERIC S. FRAHM, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005069 Application 09/821,563 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1-25. Claims 1, 9, 11, and 19 are rejected as unpatentable under 35 U.S.C. § 112(a). Claims 1, 11, and 21 are rejected as unpatentable under 35 U.S.C. § 112(b). Claims 1, 4, 8-11, and 18-20 are rejected as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Park et al. (US 6,535,632 B1, March 18, 2003) (“Park”). Claims 2, 3, 5, 12, 13, 15, 21, and 22 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Park and Kawata et al. (US 5,027423, June 25, 1991) (“Kawata”). Claims 6, 7, 16, 17, and 23-25 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Park, Kawata, and Sato et al. (US 5,351, 312, September 27, 1994) (“Sato”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellant’s invention is directed to a system which provides multiple symmetrical digital image filters at the same time. Specification, p. 4, ll. 1- 2. Appeal 2011-005069 Application 09/821,563 3 GROUPING OF CLAIMS1 Because Appellant argues that the Examiner erred for substantially the same reasons with respect to Claims 1, 9, 11, and 19 as being unpatentable under 35 U.S.C. § 112(a), we group these claims together. App. Br. 11. Because Appellant argues that the Examiner erred for substantially the same reasons with respect to Claims 1, 4, 8-11, and 19-20 as being unpatentable under 35 U.S.C. § 102(b), we group these claims together. App. Br. 11-12. We select independent claim 1 as representative of both groups. Claim 1 recites: 1. The method comprising: receiving in a digital image processor, image data; and simultaneously determining, in said processor, at least two filters of different sizes from said data. App. Br. 13. 1 Appellant also appeals from the Examiner’s non-final rejection of claims 1, 11, and 21 are rejected as unpatentable under 35 U.S.C. § 112(b); claims 2 3, 5, 12, 13, 15, 21, and 22 under 35 U.S.C. § 103(a) as being obvious over the combination of Park and Kawata and also claims 6, 7, 16, 17, and 23-25 under 35 U.S.C. § 103(a) as being obvious over the combination of Park, Kawata, and Sato. App. Br. 5. However, Appellant presents no arguments concerning these rejections and we therefore affirm the Examiner’s decision with respect to these rejections. Appeal 2011-005069 Application 09/821,563 4 ISSUES AND ANALYSES Issue 1: Rejection of Claims 1, 9, 11, and 19 Issue Appellant argues that the Examiner erred in finding that claim 1 is unpatentable under 35 U.S.C. § 112(a) for lack of enablement. App. Br. 11. Specifically, Appellant argues that the Examiner erred by finding that the Specification fails to enable a skilled artisan to make and use the limitation of claim 1 reciting “simultaneously determining, in said processor, at least two filters of different sizes from said data.” Id. We therefore address the question of whether the Examiner erred in finding that the Specification fails to enable a skilled artisan to make and use the limitation of claim 1 reciting “simultaneously determining, in said processor, at least two filters of different sizes from said data.” Analysis Appellant argues that the Examiner erred by finding that the values calculated for the 3x3 filter are available for use in the 5x5 filter calculation. App. Br. 11. Appellant argues that the filters are “simultaneously calculated in part; just all of the filter values are not simultaneously calculated.” Id. According to Appellant, “the calculation of the 5x5 filter does take place at the same time as the calculation of the 3x3 filter because the calculation of the 3x3 filter is part of the calculation of the 5x5 filter.” Id. Therefore, explains Appellant, “the 3x3 and 5x5, by the Examiner's own definition, are necessarily undertaken simultaneously.” Id. The Examiner responds by finding that definition of “simultaneously” is Appeal 2011-005069 Application 09/821,563 5 “existing or occurring at the same time: exactly coincident.” Ans. 19 (citing Webster’s Collegiate Dictionary, 10th ed.). The Examiner also finds that the relevant definitions of “determining” are: “1A. to fix conclusively or authoritatively. B. to decide judicial sentence. C. to decide by choice of alternatives or possibilities ....” Ans. 20 (citing Webster’s Collegiate Dictionary, 10th ed.). The Examiner finds further that the Specification does not disclose “simultaneously determining.” Ans. 20. The Examiner finds that the calculations of the two different filters do not occur at the same time and are therefore not simultaneous. Id. According to the Examiner, the 3x3 filter determination must occur at some time prior to the determination of the 5x5 filter determination and therefore the determinations cannot be made simultaneously. Ans. 18. According to the Examiner, reusing calculations is not the same as calculating simultaneously and is certainly not equivalent to making a simultaneous determination. Id. Moreover, finds the Examiner, progressive calculation is the opposite of simultaneous. Ans. 19. We are persuaded by the Examiner’s reasoning. A simultaneous determination requires that the filter calculations and their result be conducted at the same time. The Specification discloses that the calculation of the 5x5 filter elements is successive to, and in some cases dependent upon, the determination of the 3x3. Ans. 16, 18. Appellant’s argument that the filters are “simultaneously calculated in part” (App. Br. 11) (emphasis added) is not consistent with the language of claim, which requires that the processor simultaneously determine at least two filters of different sizes from said data. Because the determination of the 5x5 filter is dependent upon the prior calculation of the 3x3 filter, the two filters cannot be determined simultaneously. Appeal 2011-005069 Application 09/821,563 6 Moreover, we agree with the Examiner’s finding that Appellant’s Fig.7, and its accompanying text in the Specification, include disclosure that is against the notion that the filters are determined simultaneously. See App. Br. 7; Ans. 18. Step 58 of the flow chart depicted in Fig. 7 discloses “EXECUTE CONVOLUTION EQUATION FOR FIRST FILTER SIZE” which is upstream from step 60 “EXECUTE CONVOLUTION EQUATION FOR SECOND FILTER SIZE” indicating that these are successive, and not simultaneous, determinations. App. Br. 7. Consequently, we agree with the Examiner that Fig. 7 discloses a progressive calculation of filter sizes rather than simultaneous determination of filter sizes. We therefore find that the Examiner did not err in rejecting claim 1 as being unpatentable under 35 U.S.C. § 112(a) for failure to be based on disclosure that enables the limitation of claim 1 reciting “simultaneously determining, in said processor, at least two filters of different sizes from said data.” Issue 2: 35 U.S.C. § 102(b) Rejection of claims 1, 4, 8-11, and 18-202 Issue Appellant argues that the Examiner erred in rejecting claims 1, 4, 8- 11, and 18-20 as unpatentable under 35 U.S.C. § 102(b) as being anticipated by Park. App. Br. 11. Specifically, Appellant argues that the Examiner erred in finding that the teachings of Park inherently discloses 2 We note that dependent claim 4, inter alia, recites “The method of claim 1 [which claims “simultaneously determining”] including progressively calculating filters from smaller to larger sizes.” App. Br. 14 (emphasis added). We invite the examiner and Appellant to resolve this apparent contradiction. Appeal 2011-005069 Application 09/821,563 7 calculating the filters simultaneously. Id. We therefore address the issue of whether the Examiner erred in finding that the limitations of claim 1 are anticipated by Park. Analysis Appellant argues that Park does not inherently teach the calculation of filters simultaneously, but could equally teach them separately and serially. App. Br. 11. According to Appellant, there is nothing in the teachings of Park that gives reason to presume that the calculations are overlapped in the manner recited by claim 1. App. Br. 11-12. The Examiner answers that Park teaches the calculation at of least two filters of different sizes from the data. Ans. 23 (citing Park, Fig. 6, elements K1-K4, col. 7-8, ll. 52-55). The Examiner finds that Park can be broadly interpreted as “receiving image data; and simultaneously determining at least two filters of different sizes from said data.” Id. The Examiner finds that “[s]ince Applicant now argues in the Appeal brief that what the present invention means to claim is a degree of simultaneous less than entirely simultaneous, the reference of Park is considered to be simultaneous as reasonably broadly interpreted.” Id. We disagree. We have already found, supra, that “simultaneously calculated in part” is not the same as “simultaneously determined.” Moreover, a claim is unpatentable under 35 U.S.C. § 102 only when “every element and limitation of the claim was previously described in a single prior art reference, either expressly or inherently, so as to place a person of ordinary skill in possession of the invention.” See Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). There is nothing in the Appeal 2011-005069 Application 09/821,563 8 teaching of Park cited by the Examiner that either explicitly or inherently demonstrates that filters of different sizes are calculated simultaneously. We find that the sections of Park cited by the Examiner merely teach the method by which the kernel size of an averaging filter is adapted to make the noise distribution in the HSI color space more uniform while preserving image edge information. Park, col. 7, ll. 54-57. Although we find that Park is analogous art to the claimed invention and that Park teaches some of the elements of claim 1, we nevertheless find that the Examiner erred in finding that claim 1 is unpatentable under 35 U.S.C. § 102 as being anticipated by Park. DECISION The Examiner’s rejection of claims 1, 9, 11, and 19 under 35 U.S.C. §112(b) is affirmed. The Examiner’s rejection of claims 1, 11, and 21 under 35 U.S.C. § 112(b) is affirmed. The Examiner’s rejection of claims 1, 4, 8-11, 14, and 18-20 under 35 U.S.C. § 102(b) is reversed. The Examiner’s rejections of claims 2, 3, 5-7, 12, 13, 15-17, and 21- 25 under 35 U.S.C. § 103(a) is affirmed. 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED-IN-PART Appeal 2011-005069 Application 09/821,563 9 ke