Ex Parte 6144763 et al

Patent Trial and Appeal Board

Jan 10, 2018

90020087 (P.T.A.B. Jan. 10, 2018)

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.
90/020,087 07/31/2015 6144763 100252-5001-REX 5655
9629 7590 01/11/2018
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/11/2018 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 FUJIFILM HOLDINGS CORPORATION,
Patent Owner and Appellant
____________

Appeal 2017-008864
Reexamination Control 90/020,087
Patent 6,144,763
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and DAVID M. KOHUT,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

This proceeding arose out of a request for ex parte reexamination of
U.S. Patent No. 6,144,763 (“the ’763 patent”) to Kenji Ito, entitled Method
and Apparatus for Compression Coding of Image Data Representative of a
Color Image and Digital Camera Including the Same, issued November 7,
2000.
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Patent Owner appeals under 35 U.S.C. § 134 and 306 from the
Examiner’s rejection of claims 1–11. App. Br. 5–6.1 We have jurisdiction
under 35 U.S.C. § 6(b).
The disclosed invention relates generally to compressing image data.
See Spec 1:10–11.
Claim 1 reads as follows:

1. An apparatus for compressing and coding image
data representative of a color image and including a luminance
component and chrominance components, and outputting
resulting coded image data, said apparatus comprising:
a signal processing circuit for processing the image data
to output processed image data;
a storage for storing the processed image data and
allowing the processed image data to be read out in preselected
blocks component by component;
a compression coding circuit for compressing and coding
the processed image data read out of said storage component by
component to output coded data;
an outputting circuit for outputting the coded data; and
a system controller for controlling said compression
coding circuit in accordance with a mode for compressing the
image data;
said system controller being operative in response to a
monochrome mode selected for compressing and coding the
image data such that the image data render a monochrome
image to fix the chrominance components of the image data to a
single, fixed value, and control said compression coding circuit
to compress and code resulting fixed chrominance components
and the luminance component.

1 Appeal Brief, filed January 17, 2017 (“App. Br.”).
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Patent Owner appeals the Examiner’s rejection of claims 1–3, 5, and
7–11 under 35 U.S.C. § 102(e) as anticipated by U.S. Patent 6,486,981
(“Shimura”); claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Shimura and U.S. Patent 5,734,427 (“Hayashi”); and claims 1, 2, 7 and 11
under 35 U.S.C. § 103(a) as unpatentable over Shimura and JP H8-32997
(“Oguro”). App. Br. 5–6.

ISSUE
Did the Examiner err in rejecting claims 1–11?

ANALYSIS
Claim 1 recites in response to a monochrome mode selected for
compressing and coding the image data such that the image data renders a
monochrome image to fix the chrominance components of the image data to
a single, fixed value, and control said compression coding circuit to
compress and code resulting fixed chrominance components and the
luminance component. The Examiner finds that Shimura discloses these
features. Final Act. 4–5.
Patent Owner argues that Shimura fails to disclose rendering a
monochrome image. App. Br. 13–14. As Patent Owner states, Shimura
discloses a “block” of image data “is discriminated as a monocolor area.”
App. Br. 13 (citing Shimura 9:21–43). Hence, Shimura discloses rendering
“monocolor” image data. Patent Owner does not explain a meaningful
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difference between rendering a “monocolor” image of Shimura and the
claim feature of rendering a “monochrome” image. One of ordinary skill in
the art would have understood that rendering a “monocolor” image would
entail rendering a “monochrome” image, the two terms being virtually
synonymous.
Instead, Patent Owner argues that the “monocolor” image of Shimura
differs from the “monochrome” image, as recited in claim 1, because “the
invention of claim 1 will render a monochrome image of [a] fire truck and []
grass . . .” while, according to Patent Owner, “Shimura’s processor will
render a color image.” App. Br. 13. We are not persuaded by Patent Owner.
As previously noted, Shimura discloses rendering a “monocolor” image.
Patent Owner does not explain how one of skill in the art would have
understood that rendering a “monocolor” image of Shimura would have
been, in actuality, rendering a “color” image that somehow differs materially
from a “monochrome” image. One of skill in the art, given the explicit
disclosure of Shimura of rendering a “monocolor” image, would not have
then performed the opposite – i.e., rendering a “color” image.
Patent Owner argues that Shimura fails to disclose “values of . . .
chrominance components . . . fixed to a single, fixed value.” App. Br. 13.
We are not persuaded by Patent Owner’s argument. For example, Shimura
discloses that “[o]n the area discriminated as a non-chromatic character area,
the sub-sampling ratio is maintained [i.e., “fixed”] as 4:1:1,” “values of Cb
and Cr components [i.e., chrominance components] are fixed values,” and
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“the Cb and Cr components [i.e., chrominance components] will have fixed
values.” Shimura 5:43–44, 6:60, 7:13. Based at least on these explicit
disclosures of Shimura that the chrominance components are fixed to a
value, we are not persuaded by Patent Owner’s argument that Shimura
supposedly fails to disclose this feature.
Patent Owner also argues that Shimura fails to disclose “‘image data
representative of a color image’ as being a 16x16 block of pixels” or that “a
single 16x16 block can be representative of [a color image].” App. Br. 15.
Claim 1 recites a “color image.” Patent Owner does not demonstrate
sufficiently that claim 1 also recites a “color image” that is “a 16x16 block
of pixels.” Nor do we independently identify such a claim limitation.
Therefore, we need not consider whether or not Shimura (or any other
reference) discloses a color image that is “a 16x16 block of pixels.”
Patent Owner argues that Shimura fails to disclose “selection of a
monochrome mode.” App. Br. 19. Claim 1 recites a controller that fixes
chrominance components of image data in response to “a monochrome
mode selected.” As previously noted, Shimura discloses fixing chrominance
components of image data. Shimura also discloses chrominance
components of image data are “fixed” when the system “discriminates” a
“monocolor area.” See e.g., Shimura 6:58–60. In other words, Shimura
discloses that when a “monocolor area” is “discriminated” (i.e., a
“monochrome mode” is “selected”), chrominance components of image data
are “fixed.” We disagree with Patent Owner’s argument that Shimura
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differs from the claim feature of a controller fixing chrominance components
in response to “a monochrome mode [being] selected,” as recited in claim 1.
Patent Owner also argues that Shimura discloses a “discrimination
unit . . . [that] determines whether [a] . . . block of an image is . . .
monocolor” but that the “discrimination unit” of Shimura “is not responsive
to the selection of a monochrome mode.” App. Br. 18–19. As previously
discussed, claim 1 recites a controller that fixes the chrominance
components of image data in response to “a monochrome mode selected.”
Claim 1 does not also recite or otherwise require a “discrimination unit” that
is “responsive to the selection of a monochrome mode,” as Patent Owner
appears to contend. Rather, claim 1 merely requires “a monochrome mode
selected” and, in response, a controller fixing chrominance components of
image data. As previously described, Shimura discloses this feature.
Patent Owner argues that Shimura fails to disclose “that data is read
out . . . in preselected blocks component by component, as recited in claim
1.” App. Br. 20. Claim 1 recites processing image data and allowing the
processed image data to be read out in preselected blocks component by
component. As the Examiner explains, Shimura discloses “input image
data,” “dividing the input image data into blocks and discriminating [the
image data] (i.e., “processing” the data),” “a latch circuit for holding [i.e.,
“storing”] . . . the data of the Cb signal,” another “latch circuit for holding
[i.e., “storing”] the data of the Cr signal,” and another “latch circuit for
holding [i.e., “storing”] the data of the area of four blocks of the Y signal.”
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Final Act. 3–4; see also Shimura 7:55–63. Shimura also discloses that the
data in each of the latches are output (separately from respective latch
circuits – i.e., separately in preselected blocks and “component by
component”).
Patent Owner argues that “Shimura does not disclose how the Cb, Cr
and Y components are output from latches 82, 83, and 84.” App. Br. 22. As
noted above, claim 1 recites allowing processed image data to be read out in
preselected blocks component by component. Patent Owner does not
indicate a specific feature recited in claim 1 pertaining to “how” blocks of
data are read out component by component that Shimura fails to disclose.
Rather, as previously discussed, Shimura discloses allowing processed
image data to be read out in preselected blocks component by component, as
recited in claim 1. We are not persuaded by Patent Owner’s argument.
Patent Owner does not provide additional arguments in support of
claims 4 and 6 or arguments with respect to Hayashi. App. Br. 21.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Shimura and
Oguro because, according to Patent Owner, “Oguro and Shimura are
directed to different technologies.” App. Br. 22. Shimura discloses an
image processing method and apparatus. Shimura Title, Abstract. Oguro
discloses an “image recording and reproducing device” and method. Oguro
Title, Abstract. Patent Owner contends that Shimura and Oguro are
“directed to different technologies” but fails to explain sufficiently the
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supposed differences between a system for image processing (Shimura) and
a system for image recording and reproducing (Oguro). In the absence of an
adequate explanation, we conclude that one of ordinary skill in the art would
have understood a system for “image processing” to be related to a system
for “image recording” and “reproducing,” given that both such systems
would have been expected to process image data.
In any event, while Patent Owner’s precise argument is not entirely
clear, even assuming Patent Owner’s implied contention that there is
supposedly a substantial difference between “image processing” (Shimura)
and “image recording and reproducing” (Oguro), and assuming Patent
Owner intends to argue that Shimura and Oguro are non-analogous art,
Patent Owner does not explain sufficiently how this presumed difference in
technology refutes the Examiner’s prima facie showing of obviousness of
the combination of the references. “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Hence, even assuming that Shimura’s image processing system is “in a
different field from” Oguro’s image recording and reproducing system and
that both references are “in a different field from” the claimed invention
(Patent Owner fails to provide this showing, however), Patent Owner does
not demonstrate persuasively that any of the “matter with which” Shimura
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“deals” (i.e., an image processing system and method) or the “matter with
which” Oguro “deals” (i.e., an image recording and reproducing system)
does not “logically . . . commend[] itself to” the inventor’s attention (i.e., an
apparatus for processing an image, as claimed). In the absence of such a
showing, we conclude that either one of Shimura’s image processing system
and method or Oguro’s image recording and reproducing system would have
logically commended themselves to the inventor’s attention in providing an
apparatus for processing an image, at least because each of the systems
process image data. One of ordinary skill in the art of providing an image
processing apparatus, as recited in claim 1, would have logically referred to
references that disclose providing image processing systems or methods. In
view of the fact that both Shimura and Oguro disclose systems/methods for
image processing (or image recording and reproducing) similar to that which
is recited in claim 1 (i.e., an apparatus for image processing), we agree with
the Examiner that either of Shimura or Oguro would have commended itself
to the inventor’s attention.
Patent Owner also argues that it would not have been obvious to one
of ordinary skill in the art to have combined the teachings of Shimura and
Oguro because “[t]here would be no proper reason to insert latches 82, 83
and 84 of Shimura, which are provided before the Cb and Cr values may be
changed, into the blocking/shuffling circuit 43 of Oguro, which is provided
in the signal path after the switch SW22 connects either the output of A/D
converters 207, 208 or the output of constant value generating circuit 209
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into the signal path,” “[t]here is no teaching or suggestion that intermediate
data generated by Oguro’s circuit should be stored for use by other later
processes,” and “Oguro is seeking to record video” rather than processing
“still photographic images,” and that “[i]f the Oguro system were modified
to use a JPEG system for compression and coding the modified system could
not use the recorded mode information during playback to implement the
‘color killer’ operation and, therefore would not operate satisfactorily for its
original intended purpose.” Final Act. 23–25. We disagree with Patent
Owner for at least the reasons set forth by the Examiner. See, e.g., Ans. 28–
29.
To the extent that Patent Owner argues that it would not have been
obvious to one of ordinary skill in the art to have bodily incorporated the
teachings of Oguro into the disclosure of Shimura (or vice versa), we note
that “[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . .. Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Hence, we are not persuaded by
Patent Owner’s argument for at least this reason.

SUMMARY
We affirm the Examiner’s rejection of claims 1–11.

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AFFIRMED