Ex Parte Avinash et al

Board of Patent Appeals and Interferences

Mar 22, 2010

10064873 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GOPAL B. AVINASH and PINAKI GHOSH
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Appeal 2009-002249
Application 10/064,873
Technology Center 2600
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Decided: March 24, 2010
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Before ROBERT E. NAPPI, JOHN C. MARTIN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 33-48 (Br. 2). Claims 1-32 have been canceled (id.). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF CASE
Appellants’ invention relates to methods for enhancing grayscale and
color images that contain annotations (Spec. ¶ [0001]). Examples of the
annotated digital pictures include medical diagnostic imaging pictures that
have had annotations “burnt in by overlaying an arbitrary intensity value of
text on the image. When such images are processed using image processing
algorithms, the resulting output image will not maintain the annotations in
their pristine form” (Spec. ¶ [0002]). Appellants’ computer algorithm, then,
allows one to improve digitized images with available methods for adjusting
brightness and contrast without distorting or degrading the appearance of
any annotations that have been burnt into the image (Spec. ¶¶ [0003-0004]).
Independent method claim 33 is illustrative.1 It first recites three
conventional steps of gathering and displaying grayscale image data.
Following these three steps of pre-solution activity, the claim then recites
three further steps of processing this data according to Appellants’
mathematical algorithm. The specific claim language reads as follows:

1 Appellants argue claims 33-44 together as a first group and separately
argue claims 45-48 as a second group. See Br. 7-9. Accordingly, we select
independent claims 33 and 45 as representative of the respective groups. See
37 C.F.R. § 41.37(c)(1)(vii).
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33. A method for processing annotated images comprising
the following steps:
acquiring data representing a grayscale image;
adding data representing a textual annotation to said
acquired grayscale image data;
displaying an annotated grayscale image comprising said
grayscale image with said textual annotation overlaid thereon;
storing data representing said annotated grayscale image
in the data format used for said displaying step;
removing data representing said textual annotation from
said stored data representing said annotated grayscale image to
derive data representing an unannotated grayscale image;
processing said data representing said unannotated
grayscale image using an algorithm to derive data representing
a processed grayscale image; and
merging said removed data representing said textual
annotation and said data representing said processed grayscale
image, said merged data representing an annotated processed
grayscale image.
The Examiner relies on the following prior art references to show
unpatentability:
Bloomberg US 5,065,437 Nov. 12, 1991
Ikeshoji US 5,761,339 June 2, 1998
MacLeod US 5,778,092 July 7, 1998
Appellants’ Admitted Prior Art
RAFAEL C. GONZALES & RICHARD E. WOODS, DIGITAL IMAGE
PROCESSING 221-49 (Addison-Wesley Publ’g Co. 1992).
Claim 33 stands rejected under 35 U.S.C. § 103(a) as obvious over
Ikeshoji in view of Appellants’ Admitted Prior Art.
Claims 34-44 stand rejected under 35 U.S.C. § 103(a) as obvious over
Ikeshoji in view of Appellants’ Admitted Prior Art, MacLeod, and
Bloomberg.
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Claims 45-48 stand rejected under 35 U.S.C. § 103(a) as obvious over
Ikeshoji in view of Appellants’ Admitted Prior Art, MacLeod, Bloomberg,
and Gonzales.
The Examiner has withdrawn the rejection of claims 33-48 under 35
U.S.C. § 112, ¶ 1 (Ans. 3).

ISSUES
I. Does the cited prior art collectively teach or suggest a method for
processing annotated grayscale images as recited in claim 33?
II. Does the cited prior art collectively teach or suggest a method for
processing annotated HSV color images as recited in claim 45?

ANALYSIS
I.
The Examiner finds that Ikeshoji discloses acquiring an annotated
grayscale image, removing data representing textual annotations to derive an
unannotated grayscale image, processing the data representing the
unannotated grayscale image to remove stains, merging the removed data
representing the textual annotations and the data representing the processed
grayscale image, and thereby representing an annotated processed grayscale
image (Ans. 5-6).2 The Examiner further finds that Ikeshoji does not
expressly teach the steps by which the annotations are initially added to the
grayscale image (Ans. 4-5), but that Appellants admit that it was known how

2 Rather than repeat the Examiner’s findings and Appellants’ arguments in
full, we refer to the following documents throughout this opinion for their
respective details: (1) the Appeal Brief (“Br.”) filed September 14, 2007;
and (2) the Examiner’s Answer (“Ans.”) filed November 27, 2007.
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to add data representing a textual annotation and to display the annotated
grayscale image with the textual annotation overlaid thereon (id.). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to have annotated grayscale images
such as medical diagnostic images by burning in the annotations because this
process was a conventionally known method of annotating images (Ans. 5).
As such, the Examiner has established a prima facie case of obviousness,
shifting the burden of rebuttal to Appellants.
Appellants assert that the combination of Ikeshoji and Appellants’
Admitted Prior Art does not render claim 33 obvious for two reasons (Br. 7-
8). First, “Ikeshoji . . . is intended for use in removing stains or scratches
from a photograph, picture or document or characters and/or figures . . .
Ikeshoji neither discloses nor suggests that annotations are added to the
image acquired by the scanner before the scanner-acquired image undergoes
electronic processing” (id.). As such, “it would not have been obvious to
apply Ikeshoji’s technique to situations where one desires to improve the
contrast or brightness of an acquired image that had annotations added to it
after image acquisition” (Br. 8).
This argument is not persuasive. Claim 33 does not recite any step of
improving the contrast or brightness. Rather, the claim more broadly recites
“processing said data representing said unannotated grayscale image using
an algorithm to derive data representing a processed grayscale image.” We
see no reason that would prevent one of ordinary skill from using the
teachings of Ikeshoji for at least the purpose of removing stains or scratches
from scanner-acquired images that have burnt-in annotations.
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It is well settled that “[d]uring patent examination the pending claims
must be interpreted as broadly as their terms reasonably allow.” In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989). The broadest reasonable interpretation
of the claims must be consistent with the interpretation that those skilled in
the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999).
“‘[E]ach claim does not necessarily cover every feature disclosed in the
specification. When the claim addresses only some of the features disclosed
in the specification, it is improper to limit the claim to other, unclaimed
features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 689 (Fed. Cir.
2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d
1173, 1181 (Fed. Cir. 2006)); see also Golight, Inc. v. Wal-Mart Stores, Inc.,
355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to
include within each of their claims all of [the] advantages or features
described as significant or important in the written description.”).
Appellants’ second argument regarding the rejection of claim 33 is
that “it would not [have been] obvious to transfer any teaching of Ikeshoji,
which deals with enhancing physical documents by converting them into
electronic images, to the field of electronically annotated electronic images
not derived by scanning a physical document” (Br. 8). Appellants’ basis for
this conclusion is
Ikeshoji merely teaches that characters and/or figures in an
image can be separated from a background so that the
background can then be electronically processed to remove
stains and scratches . . . . In contrast, the object of Appellants’
process is to enhance an annotated image without altering
annotations burnt into the image.
(Br. 8).
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This argument is not persuasive because Appellants have merely
stated differences between Ikeshoji and what Appellants have acknowledged
was known. This is not the same as explaining why combining these
teachings would have been nonobvious. In fact, Appellants have provided
no reason as to why combining of these teachings would be improper.
Appellants’ assertion that it would not have been obvious to transfer any of
Ikeshoji’s teachings, then, is merely an unsupported conclusion.
Accordingly, Appellants have not persuaded us that the Examiner
erred in finding that the cited prior art collectively teaches or suggests the
claimed method for processing annotated grayscale images. That is,
Appellants have not persuaded us of error in the Examiner’s obviousness
rejection of representative claim 33 under 35 U.S.C. § 103. We will
therefore sustain the Examiner’s decision rejecting that claim.
With respect to the remaining rejections of claims 34-44, Appellants
provide no patentability arguments directed to the additional references of
MacLeod and Bloomberg. Rather, Appellants repeat the arguments directed
to claim 33 and apply them to the remaining rejection (Br. 8-9). For the
reasons discussed above, then, we also sustain the Examiner’s decision
rejecting claims 34-44.
II.
Independent claim 45 is similar to independent claim 33, reciting a
method of first gathering and displaying hue, saturation, and value (HSV)
color image data (as opposed to grayscale image data), and then reciting
three further steps of processing this HSV color data according to
Appellants’ mathematical algorithm. The Examiner found that Gonzalez
evidences that (1) it would have been obvious to extend the grayscale
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processing techniques to color images; and (2) it was well known how to
convert red, green, blue (RGB) model to hue, saturation, intensity (HSI)3
model and vice versa. As such, the Examiner has established a prima facie
showing of obviousness, shifting the burden of rebuttal to Appellants.
Appellants, in turn, argue that the Examiner’s rejection of claim 45, as
well as dependent claims 46-48, is improper for the same reasons set forth in
relation to claim 33 and also for additional reasons (Br. 9). Regarding the
additional reasons, Appellants acknowledge that Ikeshoji teaches a process
for removing colored stains, but argue for the claim’s allowability because
(1) Ikeshoji fails to disclose or suggest “removing hue and saturation data
from a color image, processing the remaining brightness component, and
then restoring the hue and saturation components”; and (2) since Ikeshoji
does not teach or suggest enhancing the unstained portions of a color image,
it would not have been obvious to combine the color processing techniques
disclosed in Gonzalez (id.).
These arguments are not persuasive. Regarding the first argument,
Appellants only argue that claim limitations are absent from the primary
reference, Ikeshoji. However, the Examiner acknowledged this fact and
relied upon Gonzales for this missing step. Appellants do not contest that
Gonzalez teaches all of the limitations of claim 45 that Ikeshoji lacks.4 As
such, Appellants essentially argue that it would not have been obvious to

3 We understand the term “HSI” used by Gonzales to be synonymous with
Appellants’ term “HSV.”
4 We understand the Examiner’s additional reliance on MacLeod and
Bloomberg to be attributable to the fact that the Examiner has lumped
together the rejection of claim 45 with those of dependent claims 46-48, and
that these additional references only have relevance to the dependent claims.
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combine the teachings of Gonzalez with Ikeshoji merely because Gonzalez’s
teachings are not disclosed in Ikeshoji. We are not aware of any legal
support for this position.
Appellants’ second argument is not persuasive because it is
immaterial whether Ikeshoji, or Gonzalez for that matter, teaches or suggests
enhancing the unstained portions of a color image. Claim 45 is not written
so narrowly so as to require this. Rather, the relevant portion of claim 45
recites “processing said data representing said unannotated brightness
component image using an algorithm to derive data representing a processed
brightness component image.” This claim language is broad enough to read
on processing the unannotated image in order to remove the colored stains,
with the “processed image” being one in which the stain has been removed.
We understand this to be the Examiner’s position, and Appellants have not
argued why the combined prior art fails to disclose such a process.
Accordingly, Appellants have not persuaded us that the Examiner
erred in finding that the cited prior art collectively teaches or suggests the
claimed method for processing annotated HSV color images. That is,
Appellants have not persuaded us of error in the Examiner’s obviousness
rejection of representative claim 45 under 35 U.S.C. § 103. We will
therefore sustain the Examiner’s decision rejecting that claim and claims 46-
48, which depend therefrom.

DECISION
The Examiner’s decision rejecting claims 33-48 is affirmed.
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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).

AFFIRMED

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