Ex Parte Au et al

Board of Patent Appeals and Interferences

Jul 29, 2008

09512378 (B.P.A.I. Jul. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte OSCAR CHI-LIM AU and MING SUN FU
____________________

Appeal 2008-1576
Application 09/512,378
Technology Center 2600
____________________

Decided: July 29, 2008
____________________

Before KENNETH W. HAIRSTON, ANITA PELLMAN GROSS
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from non-final rejections of
claims 1-9 and 11-22 (Office Action, mailed Sept. 25, 2006). No other
claims are pending. (App. Br. 1). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
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Appellants' claimed invention relates to methods for converting pixels
having halftone values into pixels having more than two values. (Spec. 2:
18-20; Spec. 4: 20-26).
Independent claim 2, representative of claims on appeal, reads as
follows:
2. A method for converting a halftone image having a halftone value
for each of a plurality of pixels, into a reconstructed image which for each of
said pixels takes on one of more than two possible values, comprising for
successive individual pixels:
defining a set of neighborhood pixels of the individual pixel, the set of
neighborhood pixels including the individual pixel and additionally a
plurality of pixels proximate said individual pixel;
defining for each pixel of the neighborhood, a significance coefficient
that is based upon the value of that pixel; and
deriving the reconstructed value of the individual pixel as a sum over
the pixels of the neighborhood of a product of the halftone image value at
that neighborhood pixel with the significance coefficient of that
neighborhood pixel.
The Examiner relies on the following prior art references:
Wong US 5,506,699 Apr. 9, 1996
Fan US 6,101,285 Aug. 8, 2000
Claims 2-4, 16, and 19 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Fan.

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Claims 1, 5-9, 11-15, 17, 18, and 20-22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fan in view of Wong.1
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief, the Reply Brief, and the Answer for their respective
details.2 In this decision, we have considered only those arguments actually
made by Appellants. Arguments which Appellants could have made but did
not make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c) (1) (vii).

PRINCIPLES OF LAW
Anticipation
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) ("On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Appellants may sustain this burden by showing that the
prior art reference relied upon by the Examiner fails to disclose an element
of the claim. It is axiomatic that anticipation of a claim under § 102 can be

1 The Examiner rejected claims 6-9 as obvious essentially over the collective
teachings of Fan and Wong, employing an “obvious engineering design
choice” rationale. (Ans. 14).
2 The Examiner withdrew initial rejections under 35 U.S.C. §§ 101 and 112
(first and second paragraphs). (Ans. 2).
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found only if the prior art reference discloses every element of the claim.
See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988). In so doing,
the Examiner must make the factual determinations set forth in Graham v.
John Deere Co., 383 U.S. 1, 17 (1966).
If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007). Such
a showing requires “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. . . . [H]owever,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id., 127 S. Ct. at 1741 (quoting In re Kahn, 441 F.3d 977, 987
(Fed. Cir. 2006)).

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If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Anticipation
With respect to claims 2-4, 16, and 19, Appellants’ arguments focus
on representative claim 2. Appellants dispute (App. Br. 15) the Examiner’s
determination (Ans. 3-4) that Fan teaches the significance coefficient for
each pixel as called for in the final two steps of the method set forth in claim
2, namely:
deriving for each pixel of the neighborhood, a significance
coefficient that is based upon the value of that pixel; and
deriving the reconstructed value of the individual pixel as a sum
over the pixels of the neighborhood of a product of the halftone
image value at that neighborhood pixel with the significance
coefficient of that neighborhood pixel.
The Examiner takes two alternative positions (Ans. 16-18).
Appellants dispute the Examiner’s first position that α constitutes the
claimed significance coefficient. However, Appellants do not challenge the
Examiner’s second position that Fan’s coefficients α, 1 - α, and 0 meet the
claimed significance coefficients (Ans. 17-18, see Fan, Fig. 7A). Appellants
state, regarding the first position, that “the Fan patent does not disclose that
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the reconstructed value of a pixel is a sum of products of the type recited in
the claim” (App. Br. 15-16), arguing:
First, as discussed previously, the value α does not
represent a significance coefficient associated with a given
neighborhood pixel. Rather, it is a constant value that is
independent of any particular neighborhood pixel.
Second, even if the value α could be considered to be a
significance coefficient, the Fan patent does not disclose the
calculation of the product of that value with a particular
neighborhood pixel. Rather, the value for α is multiplied by the
average gray level input value for all of the pixels in a window,
i.e. x*(m,n). The value α is not multiplied by individual pixels,
as recited in the claim.

(App. Br. 16).

Regarding the first argument, Appellants further contend that “[t]he
patent does not disclose that the value α is derived for each pixel of a
neighborhood, based upon the value of that pixel.” (App. Br. 15). Instead, α
“is a fixed value that is selected once, and globally applied to all edge
enhancement calculations.” (App. Br. 15). We are persuaded by this
contention. We agree that Fan does not teach that α is based on the value for
each pixel, as Fan describes the value of α as set in order to determine how
greatly the edges will be enhanced (Fan, col. 7, ll. 48-58). However, as
indicated above, Appellants’ contention does not address the Examiner’s
alternative second position that Fan teaches that the coefficients are either 0,
α, or 1-α. (See Ans. 17-18, Reply Br. 2-3). As Appellants’ have not pointed
to error in the Examiner’s unchallenged finding, Appellants have not met
their burden on appeal.
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We find that Fan reasonably discloses the claimed significance
coefficients generally as proposed by the Examiner. For claim 2, we find, in
congruence with the Examiner’s line of reasoning (Ans. 17-18), an
“individual pixel” x*(m, n) with coefficient 1-α, and the “plurality of pixels
proximate said individual pixel”: x*(m-Tx, n) and x*(m + Tx, n), each with
either the coefficient 0 or α (Fan, col. 6, l. 48 to col. 7, l. 63; Fig. 4, Fig. 8A,
Box 316 ).
Therefore, summing the products yields the reconstructed value of the
pixel y(m, n): the sum of products (1-α) x*(m, n) plus either αx*( m-Tx, n)
or αx*( m + Tx,, n) - depending on the difference between the relative
absolute values of dif0 and dif1. (See Fig. 7A, Fig. 4, Box 308, 316). In
other words, according to the Examiner, the reconstructed value of y(m, n)
can be represented as one or the other of the two sums of products:
(1) y(m, n) = [1-α] x*(m, n) + [α]x*( m-Tx, n) + [0] x*( m + Tx, n)
(2) y(m, n) = [1-α] x*(m, n) + [0]x*( m-Tx, n) + [α] x*( m + Tx, n).
We note that Fan does not explicitly disclose a multiplication step
involving the product 0. However, Appellants do not argue Fan does not
teach multiplying by 0, nor does the claim recite an explicit multiplication
step. We also note that claim 2 requires “defining a set of neighborhood
pixels . . . [and] deriving for each pixel,” but calls for “deriving the
reconstructed value . . . as a sum over the pixels of the neighborhood of a
product . . .” (emphasis added). Thus, deriving a product for only two
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pixels in the neighborhood satisfies the claim, since the claim does not recite
a sum over each pixel in the set of all neighborhood pixels.3
Which equation filters the input pixels x (m, n) depends on the
differences between the absolute values of dif0 and dif1. (See Fig. 7A, Fig.
4, Box 316). The bracketed values [0], [α] and [1-α] represent the claimed
significance coefficients for each of the pixels in the neighborhood (m, n).
Thus, the significance coefficient for each of the right-hand neighbor pixel
x*( m + Tx) and left-hand neighbor pixel x*( m-Tx) (see Fig. 8A) takes on
one of two values, 0 or α, ultimately depending on the value of that right or
left-hand pixel, because the value of each neighborhood pixel x*(m, n),
x*(m + Tx, n), and x* ( m-Tx, n) determines the value of dif0 and dif1
according to Box 308 in Figure 4 of Fan, as the Examiner found (Ans. 17-
18).
Accordingly, each neighborhood significance coefficient, designated
here respectively as Nr and Nl for the right and left-hand pixels, is derived
for each to be either 0 or α, so that Nr and Nl are “based upon the value of
that pixel,” as set forth in claim 2. The neighborhood coefficient, designated
here as Nc, for the “individual pixel,” x*(m, n), is also derived “based upon
the value of that pixel.” The value Nc above in Equations 1 and 2 is derived

3An explicit multiplication step involving 0 is not required for another
reason. That is, because 0 times any other value yields 0, “deriving,” as
claimed, may involve a simple algorithm or mental step which eliminates the
unnecessary multiplication step: i.e., if 0 is a coefficient or value, then the
product is 0. Alternatively, even if such a multiplication step is required for
more than two pixels, we find that each of Fan’s pixel windows comprises
three neighborhood pixels, each of which is multiplied by either [1-α] or [α],
thereby the three (or six) neighborhood pixels, as multiplied, meet the claim.
(See n. 4, 6 infra, and Equations 1 and 2 supra).
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to be 1-α. But, the value is not always 1-α. For example, Nc becomes 1
when Box 312 (Fig. 4) filters the pixels.4 Which box filters the pixel and
thus dictates the value of the respective significance coefficient depends
ultimately on the values of dif0 and dif1 which depend on the value for each
pixel in the neighborhood (Fig. 4, see Boxes 308, 310, and 313).
In other words, inspection of the function y(m, n) = f [x (m, n), x*(m,
n), x*( m - Tx,, n ), x*( m + Tx, n)] at Figure 4, Box 316, reveals that y(m, n)
(i.e., the “reconstructed value”), can be represented as one equation or
function of the values of the pixels in the neighborhood. Hence, while the

4 The value is 1 when the group of pixels at window x(m, n) is considered
one pixel having an average value x* (m, n). On the other hand, considering
each pixel in the window x (m, n) at Box 312 as one pixel yields the
significance coefficient value as 1/3. That is, the three binary pixels at pixel
window x (m, n) (see Fig. 8A) are multiplied by 1/3 to yield the average
x*(m, n), which becomes the reconstructed value of the individual pixel,
y(m, n). (See also n. 6 infra).
Consequently, the reconstructed value y(m, n) is derived as a sum over the
three individual binary pixels in the neighborhood x(m, n) of the product of
the halftone image values (for example, (1,0,1)) with the significance
coefficient 1/3 yielding y(m, n) = x*(m, n), representing “continuous” pixels
(1/3, 1/3, 1/3) (see Fig. 8A, Fig. 4, Box 312). Hence, the claim is also met
under this alternative interpretation. (While the neighborhood coefficients at
Box 312 are each 1/3 (to yield the average x*(m, n) over three pixels), Box
314 and Box 316 have different coefficients for the individual pixels x(m,
n), depending on the values of differences between the “non-neighbors” at
(m-Tx, n) and ( m + Tx, n) and the set of three individual pixel neighbors at
(m, n); hence, each Box represents a derivation of a different coefficient
(i.e., 1 for Box 314, 1/3 for Box 312, and (1 – α)/3 for Box 316) for the
neighborhood binary pixels at (m, n), based ultimately on the binary values
of each of the three individual neighbor pixels in the set (101), (111), etc.
within a pixel window x(m, n)). Fig. 3 similarly has two different
coefficients: 1 for Box 214 and 1/3 for Box 212, thereby meeting the claim.

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function is represented in Box 316 of Figure 7A as two equations, those two
also could be represented more succinctly as one equation, as follows:
(3) y(m, n) = Nc x*(m, n) + Nr x*( m + Tx, n) + Nl x* ( m-Tx, n)
Equation 3 represents a general formula for the filter(s) in Figure 4,
encompassing Boxes 310, 312, 313, and 316, where the significance
coefficients Nc, Nr, and Nl are step functions (i.e., each having at least two
of a finite set of values (i.e., α, 1-α, 0, 1) that vary according to the values of
pixels of the neighborhood, as explained above, and are, accordingly,
derived “based upon the value of that pixel,” as set forth in the claim.
We turn to Appellants’ second argument quoted above on the top of
page 6 of our Opinion, that Fan teaches multiplying α by the average gray
value of one of the neighborhood pixels x*(m - Tx, n) or x*(m + Tx, n), but
does not teach multiplying by an individual pixel, as claimed.5 (App. Br.
16). We disagree. Appellants do not explain why the average gray value
cannot define the value of Fan’s neighborhood pixel. Appellants do not
specifically argue that the claimed pixels, or halftone values, must be binary.
Nor does the claim recite a product with a binary pixel. Rather, the claim
refers to “the reconstructed value of the individual pixel as a sum over the
pixels of the neighborhood of a product of the halftone image value at that
neighborhood pixel . . .” (the “individual” pixel as recited simply
distinguishes a pixel from the plurality in the neighborhood). (Emphasis
added, compare Spec. 4:25-26 “the binary values referred to may be values
which can only ever be 0 or 255”).

5 While this contention was directed to the Examiner’s first position based on
α alone, we address it here and apply it to the Examiner’s alternative
position based on α, 1-α, and 0.
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Thus, Fan’s pixel window, containing three pixels, and referred to as a
pixel having halftone gray values, reasonably meets the claimed pixel. (See
Fan, describing “halftone image data which include gray level values for
each pixel in scanline n” (col. 8, ll. 35-36)). Accordingly, Appellants’
argument is not persuasive.6
In sum, Appellants have not demonstrated error in the Examiner’s
findings. Accordingly, we will sustain the Examiner’s rejection of claim 2.
We also sustain the rejection of claims 3-4 and 19 which Appellants do not
argue separately.
Obviousness
Claims 1, 18, and 22
Similar to the issue involved above, the dispute over independent
claims 1 and 22 involves whether Fan discloses “weighting values . . .
derived from the binary values of the halftoned image” as called for in
representative claim 1 (Ans. 18, App. Br. 17). We generally agree with the
Examiner that Fan’s weighting values constitute different weight values for
each pixel in a neighborhood as set forth in representative claim 1.
Notwithstanding Appellants argument to the contrary (App. Br. 17), we also

6 We also agree with the Examiner’s unchallenged position that even if the
pixel window at (m, n) is considered as a group of (three) pixels, rather than
an individual pixel, each pixel in the group would be multiplied by the
coefficients (Ans. 18). Similar remarks apply to each pixel or group at m -
Tx and m + Tx, as the Examiner indicated (Ans. 18). See Figure 8A,
revealing a pixel pseudo window 706 of length Tx encompassing three
pixels. Averaging is accomplished in box 306 of Figure 4. We infer, for
example, if the binary sequence is (101), the average value is 2/3 for that
window, yielding a gray pixel window x*(m, n) = (2/3, 2/3, 2/3).
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find that the weighting values are determined by the binary values of the
halftoned image, thereby meeting claim 1.7
Appellants’ argument that the difference values determine only which
pixel window value (i.e., right or left) is added but that “the value for α
remains the same” (App. Br. 17) does not address the Examiner’s second
position, described above with respect to claim 2, that either α or 0 forms a
product Nr and Nl with the right or left neighborhood pixel window.
Similarly, as indicated above, either 1 - α, 1/3, or 1 forms a product Nc with
the individual pixel x(m, n). So, even though α is constant, each of the
neighborhood coefficients Nr, Nl, and Nc (see Eq. 3 supra) changes as a
function of the difference between adjacent pixels in the neighborhood, and
hence, is “derived from the binary values of the halftoned image,” as set
forth in claim 1. That is, similar to our finding above, the binary values
determine the average values which determine the difference values, dif0
and dif1, which, in turn, determine the values of Nr, Nl, and Nc, thereby
deriving each coefficient from the binary values of the halftoned image, as
set forth in the claim.
Appellants also argue that Wong’s teaching of using binary values
would destroy the purpose of Fan’s teaching (App. Br. 17-18). We find
otherwise. As we found above, Fan uses binary values to obtain average
values which are employed to derive the weighting values in the manner set
forth in the claim. Therefore, Wong’s cumulative teachings do not destroy
the purpose of Fan.

7 The Examiner applies Wong to teach binary values and iterative processes,
but relies on Fan to teach that weighting values are derived from non-binary
pixel values. (Ans. 6-7). We find Wong’s teaching to be cumulative.
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Appellants also argue that applying Wong’s iterative teaching to Fan
would also destroy the purpose of Fan. (App. Br. 18). Again, we find
otherwise. We find that Fan teaches iterative processing in the manner set
forth in the claim. (See generally, Fan, col. 7, l. 64 to col. 8, l. 38). For
example, the output of filter 104 (Fig. 4) feeds the input to filter 106 (Fig. 5).
(See box 106, Fig. 4). “Those skilled in the art will also recognize that the
embodiment of the invention described with reference to FIG. 10 enables the
image to be filtered more than twice.” (Fan, col. 8, ll. 13-16, emphasis
added). (Figure 10 applies to Figures 3-6 (col. 8, ll. 25-30)). Therefore,
Wong’s cumulative teachings do not destroy the purpose of Fan.
Accordingly, we will sustain the Examiner’s rejection of claims 1 and
22. We will also sustain the Examiner’s rejection of dependent claim 18, not
separately argued.
Claims 13 and 20.
For representative claim 13, the dispute similarly revolves around
whether selecting Fan’s α (and thus deriving 1-α) constitutes ‘“for each pixel
of said first neighborhood, deriving a respective significance coefficient.’”
Appellants argue: “The use of the term ‘respective’ means that each pixel of
the neighborhood has its own significance coefficient derived for it.” (App.
Br. 18). Again, similar to the issues discussed above, Appellants focus on
the single coefficient α, and fail to challenge the Examiner’s general finding
that Fan discloses a set of coefficients, which depend on binary values in the
pixels x(m, n) and its neighbors, and which we have found to be 1, 0, α, α/3
and (1-α). Even if some of the neighbors have the same coefficient value
(which they do not when pixel windows are considered pixels), the recitation
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of “respective” does not preclude that. For example, neighbors can each
have his or her house valued at the same “respective” price.
We also are not persuaded by Appellants’ argument that Fan only
teaches multiplying the coefficients by the average gray value. As we
discussed above with respect to claim 2, Appellants’ claims do not preclude
such a product. Fan’s disclosure, relating halftone values as including gray
values (col. 8, ll. 34-38), constitutes evidence that “halftone” does not
require a binary value.
On the other hand, even if the claim requires multiplying products by
binary values, Fan meets the claim. That is, each of Fan’s reconstructed
values y(m,n) = x*(m, n) or x (m, n) (Fig. 3, Boxes 212, 214; Fig. 4, Boxes
312, 314) implies a sum of different products of respectively 1/3 or 1 times
each binary pixel in the window x(m, n), thereby meeting the claim (see n. 4,
6 supra).
Still further, for Figure 4, Fan reasonably teaches that such an
average, or sum of products, may occur after multiplying by one of the
different coefficients 1, 0, α, or (1-α), because, for example, the notation α
x*( m-Tx, n) + (1-α) x* (m, n) yields the same value regardless of whether
averaging, which includes summing, is performed before or after
multiplying by the significance coefficients α or (1-α).8 In other words,

8 Similarly, as indicated above, Fan, in box 316 (Fig. 7A), effectively assigns
the coefficient 0 to the left pixel neighbor x(m - Tx, n) for the
“OTHERWISE” condition (Fig. 7A). On the other hand, for the other
condition - when the absolute value of dif1 is less than that of dif0 - Fan
effectively assigns the coefficient 0 to the right pixel neighbor x(m +Tx, n).
Multiplying (if multiplying is required) 0 by each bit in the pixel achieves
the same result as averaging, and then multiplying by 0.
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altering the order of such a mathematical operation to obtain the same result,
if not implicit in the equation, would have involved no more than the
predictable rearrangement of notoriously well known mathematical steps
implicated in the cumulative, distributive, and/or associative properties.
We are also not persuaded by Appellants' arguments that Fan does not
teach “further iterations” as called for in claim 13 (App. Br. 19). We have
already found that Fan explicitly teaches such iterations. Appellants argue
that there is no suggestion “to rederive a significance coefficient during each
iteration” because “there is no suggestion to change the value of α from one
iteration to the next.” (App. Br. 19). While we agree, as noted above, that
the value of α does not change from one iteration to the next, we find, for
reasons related to those we also explained above, that the values of dif0 and
dif1 change for each iteration because different inputs result from the
filtering at each iteration (see col. 7, l. 63 to col. 8, l. 30), which thus
changes which coefficient, 1, 0, α, or (1-α), is applied, constituting a new
derivation in the manner claimed (i.e., coefficients Nr, Nl, and Nc, Eq. 3
supra, change). Further, since in one embodiment, first the rows and then
the columns are filtered, such an iteration necessarily involves different x(m,
n) values and, hence, different values of dif0 and dif1 (see id.).
Claims 14, 15, 17, and 21
Appellants’ arguments for representative claim 14 incorporate the
arguments discussed above with respect to claims 13 and 20, namely, the
arguments directed to the claimed steps of “deriving for each pixel of the
neighborhood, a significance coefficient that is based upon the value of that
pixel” and “deriving …as a sum …of a product. . . .” Accordingly, for
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reasons noted above, we will also sustain the Examiner’s rejection of these
claims.
Claims 5 and 11-12
Appellants do not make separate patentability arguments for these
claims. Accordingly, these claims fall with claim 1.
Claims 6-9
We are persuaded by Appellants’ arguments that the Examiner has not
established that Fan teaches, or suggests with Wong, (App. Br. 20-21), that
each significance coefficient of Fan constitutes decreasing functions. We do
not find support for the Examiner’s position that as a matter of design
choice, one could modify α so that it becomes a decreasing function, because
it is an increasing function (Ans. 21). We have already found, as explained
above, that α is a constant. Fan does not disclose how it is controlled or
derived. Accordingly, we will not sustain the Examiner’s rejections of
claims 6-9.
New Ground of Rejection Under 37 C.F.R. § 41.50(b)

We hereby enter a new ground of rejection under 37 C.F.R. § 41.50(b)
for claims 1-9 and 11-22.
35 U.S.C. 101 reads as follows:

Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.

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Claims 1-9 and 11-22 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to non-statutory subject matter for the reasons
that follow.
Under § 101, four categories of subject matter are eligible for patent
protection: (1) processes; (2) machines; (3) manufactures; and (4)
compositions of matter. 35 U.S.C. § 101. While the scope of patentable
subject matter encompassed by § 101 is “extremely broad” and intended to
“include anything under the sun that is made by man,” it is by no means
unlimited. In re Comiskey, 499 F.3d 1365, 1375 (Fed. Cir. 2007) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). For example, laws of
nature, abstract ideas, and natural phenomena are excluded from patent
protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981).
It is the second exclusion noted above - abstract ideas (which include
algorithms) - that is relevant to the new ground of rejection. As the U.S.
Supreme Court has noted, “‘[a]n idea of itself is not patentable[]’. . . .‘A
principle, in the abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them an exclusive
right.’” Id. at 185 (citations omitted). Additionally, our reviewing court
recently articulated the following two distinct aspects of abstract ideas:
First, when an abstract concept has no claimed practical
application, it is not patentable….Second, the abstract concept
may have a practical application….In [the context of industrial
processes], the Supreme Court has held that a claim reciting an
algorithm or abstract idea can state statutory subject matter only
if, as employed in the process, it is embodied in, operates on,
transforms, or otherwise involves another class of statutory
subject matter, i.e., a machine, manufacture, or composition of
matter. . . . Thus, a claim that involves both a mental process
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and one of the other categories of statutory subject matter (i.e.,
a machine, manufacture, or composition) may be patentable
under § 101. . . . For example, we have found processes
involving mathematical algorithms used in computer
technology patentable because they claimed practical
applications and were tied to specific machines.

Comiskey, 499 F.3d at 1376-77.

The court in Comiskey further noted:
[Section 101] does not allow patents to be issued on particular
business systems…that depend entirely on the use of mental
processes. In other words, the patent statute does not allow
patents on particular systems that depend for their operation on
human intelligence alone….Thus, it is established that the
application of human intelligence to the solution of practical
problems is not in and of itself patentable.

Id. at 1378-79 (emphasis added).

With these legal principles in mind, we turn to the invention.
Appellants summarize the claimed subject matter as follows:
V. Summary of Claimed Subject Matter
The claimed subject matter is directed to the
enhancement of images on a pixel-by-pixel basis. As described
in the background portion of the application, one exemplary
application of the invention is a process known as “inverse half
toning”, in which binary pixel values for an image are
converted into values within a continuous range, e.g. 0-255.
Preferably, this method is carried out in an iterative fashion, in
which a pixel value resulting from one iteration is updated in a
successive iteration. (Page 3, lines 18-25). The updating that

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occurs during each iteration is succinctly described by the
equation set forth on page 6, line 28 of the application, namely:
. . . .

(App. Br. 1).

Appellants admit that their claim is directed to the manipulation of
data, stating: “Claim 1 is not directed to the manipulation of any kind of
data.” (App. Br. 7 – as argued prior to the Examiner’s withdrawal of the
rejection on appeal – see n. 2, supra). Appellants also argue that “[t]he fact
that the individual pixels can be represented by data does not automatically
transform the subject matter into an abstract idea.” (Id.)
Appellants’ admissions that mere data conversion is involved are
buttressed by the Specification:
“Firstly, as mentioned, a preprocessing may be carried out (e.g.
according to a known filter algorithm, such as a low pass filter) to produce a
set of initial values to which the algorithm described above is applied.”
(Spec. 4: 6-8, emphasis added).
“In general terms the invention proposes that the continuous value for
any given pixel is chosen taking into account the halftone value of each of a
set of pixels near the given pixel.” (Spec. 2: 18-20). “As used in this
document the term ‘continuous value’ of an image pixel is used to mean a
value which is not binary, but is rather selected from one of a number of
predetermined possibilities . . . such as one of 256 possibilities.” (Spec. 4:
20-24).
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Hence, according to Appellants’ description of their claimed
invention, Appellants merely convert binary data values “for an image” to
“continuous values” (i.e., digital n-ary values greater than 2), employing an
algorithm. No image conversion is claimed. Without an image input and
output claimed, no image can be enhanced, contrary to Appellants’
description in their Appeal Brief as quoted above. Converting pixel values
involves no more than converting numbers in an array containing those
values. “The original image is an array in which the pixels are labelled by
indices i and j.” (Spec. 6: 1-2).
Additionally, such a process can be performed mentally. One of skill,
starting with an image of three pixel binary dots, or a set of binary values in
an array, which the claims do not preclude, can perform the algorithm
without a computer. Accordingly, Appellants’ reliance on Arrhythmia
Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992) is
misplaced for at least two reasons (see App. Br. 7). First, for example, in
claim 1, one can mentally define for each pixel or binary number, a
neighborhood, and then apply the algorithm as set forth in the remaining
claim steps. Similar remarks apply to the claims 2-9 and 11-16. The pixels,
as claimed, require no more than the mathematical manipulation of an array
of data which can be performed mentally.
Second, even if Appellants’ claims require more than mental steps, the
method claim in Arrhythmia involved the processing of real time changing
signals and conversion thereof as opposed to mere manipulation of static
data stored in an array. Id., at 1055 (see claim 1 reciting, in part,
“converting a series of QRS signals to time segments, each segment having a
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digital value equivalent to the analog value of said signals at said time”). In
other words, the method claim in Arrhythmia requires a physical
transformation.
In contrast, Appellants’ claims are not tied to a specific machine, nor
do they render a physical transformation. Alternatively, they involve purely
mental steps.
While claim 12 recites a low pass filter, such a filter, as Appellants
disclose as noted above, is invariably simply a computer algorithm involving
the mere recitation of simple mathematical steps which either could be
performed mentally or involve mere computer data manipulation.
While some of the claims nominally recite a machine or apparatus,
none of the claims require a transformation of anything more than data, and
thus do not involve the transformation of an input to an output, into a
different physical state, as required by our reviewing courts. Thus, the
filtering of claim 17, the receiver of claim 22, and the computer program
products of claims 18-21, do not save the claims, for reasons as further
explained below.
In Gottschalk v. Benson, 409 U.S. 63, 73-74 (1972), one of the
method claims, claim 8, recited a shift register. Such a claim was held
nonstatutory, despite the shift register, because the claims recited mere data
conversion – involving a conversion of binary coded decimal (BCD) to pure
binary. Accordingly, the mere recitation of a computer product, filter, or
receiver, as recited in the claims noted, without more, does not save an
algorithm which does no more than operate on data to produce a different
array of numbers. “Transformation and reduction of an article to ‘a different
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state or thing’ is the clue to the patentability of a process claim that does not
include particular machines.” Benson, 409 U.S. at 70. Cf. Comiskey at 1377
(describing Arrhythmia as “holding patentable a method for analyzing
electrocardiograph signals for the detection of a specific heart condition that
used ‘electronic equipment programmed to perform mathematical
computation’”)). See also In re Walter, 618 F.2d 758, 764 (C.C.P.A. 1980),
distinguishing In re Johnson, 589 F.2d 1070 (“Operation of the claimed
process in Johnson converted the noise-containing physical seismic record
present at the start to a new record minus the noise component.”).
In sum, the claims involve the mere conversion of static data numbers,
as Appellants concede, similar to the shift register claim held nonstatutory in
Benson, or involve purely mental steps, similar to the claims held
nonstatutory in Comiskey.

CONCLUSION
We conclude that the Examiner erred in rejecting claims 6-9.
Accordingly, we will not sustain the Examiner’s rejections of those claims.
On the other hand we have sustained the Examiner’s rejections of claims 1-5
and 11-22. We have also entered a new ground of rejection for claims 1-9
and 11-22.

DECISION
We affirm the Examiner’s decision rejecting claims 1-5 and 10-22.
We reverse the Examiner's decision rejecting claims 6-9. We have also
entered a new ground of rejection under 37 C.F.R. § 41.50(b) for
independent claims 1-9 and 11-22.
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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
KIS

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