Ex Parte Berretty et al

Patent Trial and Appeal Board

Mar 27, 2017

11577745 (P.T.A.B. Mar. 27, 2017)

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.
11/577,745 04/23/2007 Robert-Paul Mario Berretty 2004P02350WOUS 7861
24737 7590 03/29/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue BADER, ROBERT N.
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
03/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT-PAUL MARIO BERRETTY and
BART GERARD BERNARD BARENBRUG
Appeal 2016-007436
Application 11/577,7451
Technology Center 2600
Before BRADLEY W. BAUMEISTER, HUNG H. BUI, and
AARON W. MOORE, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3—12, and 15—21, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.2 Pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection for independent claims 1,17,
and 19.
1 According to Appellants, the real party in interest is Koninklijke Phillips
N.V. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed November 10, 2015
(“App. Br.”); Reply Brief filed July 27, 2016 (“Reply Br.”); Examiner’s
Appeal 2016-007436
Application 11/577,745
STATEMENT OF THE CASE
Appellants’ invention relates to “[a] method of computing an output
disparity map.” Abstract. Claims 1,17, and 19 are independent.
Independent claim 1, reproduced below with disputed limitations in italics,
is illustrative:
1. A method of generating an output disparity map for
rendering a multi-view image having a plurality of objects on a
multi-view 3D display device, the method comprising acts of:
on a processor
[A] receiving an input disparity map including a
plurality of input elements, each having [i] an input value and
[ii] a focus map including a sharpness value of each of the pixels
of the image computed from a difference between at least one of
a luminance value and a color value of the pixel and of a second
pixel neighboring the pixel',
[B] determining the input value of a first of the
plurality of elements based on [i] the input disparity map and
[ii] a predetermined criterion according to which the input value
corresponds to areas with the pixels having highest sharpness
values in the image,
[C] determining a mapping function [i] based on
a mapping of the input value of the first element to a
predetermined output value which is substantially equal to zero,
and
[D] generating the output disparity map
comprising output elements having output values corresponding
to shifts to be applied to respective pixels of the image [i] to
compute a second image using the determined mapping function
[ii] to map the input values of each of the plurality of elements to
their respective output values.
App. Br. 18 (Claims App’x) (bracketing added).
Answer mailed June 2, 2016 (“Ans.”); Final Office Action mailed June 15,
2015 (“Final Act.”); and original Specification filed December 2, 2008
(“Spec.”).
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Application 11/577,745
Examiner’s Rejections3 and References
(1) Claims 1, 3—5, 15—19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harman (US 2004/0032980 Al; issued
Feb. 19, 2004); Eli Peli et al., “A Binocular Stereoscopic Display System
with Coupled Convergence and Accommodation Demands,” SID 01 Digest,
2001 (“Peli”); Alex Paul Pentland, “A New Sense for Depth of Field,” IEEE
Transactions on Pattern Analysis and Machine Intelligence, Vol. PAMI-9,
No. 4, July 1987 (“Pentland”); and Freeman (US 6,057,935; issued May 2,
2000). Ans. 2—16.
(2) Claims 6—8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harman, Peli, Pentland, Freeman, and Antonio Torralba,
“Modeling Global Scene Factors in Attention,” Journal of the Optical
Society of America, Vol. 20, No. 7, July 2003 (“Torralba”). Ans. 16—19.
(3) Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harman, Peli, Pentland, Freeman, and Chia-Chiang Ho et
al., “A User-Attention Based Focus Detection Framework and Its
Applications,” IEEE ICIS-PCM 2003 (“Ho”). Ans. 19-22.
(4) Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harman, Peli, Pentland, Freeman, and Ruggero Milanese
et al., “Integration of Bottom-Up and Top-Down Cues for Visual Attention
Using Non-Linear Relaxation,” IEEE 1994 (“Milanese”). Ans. 22—24.
3 Claims 1, 3—12, 15, 16, and 19-21 were finally rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 2. However,
the Examiner withdrew the § 101 rejection on appeal. Ans. 25. We reinstate
the § 101 rejection, as these claims as directed to non-statutory subject
matter in light of Alice and its progeny for reasons discussed herein.
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Application 11/577,745
(5) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harman, Peli, Pentland, Freeman, and Graham Jones et
al., “Controlling Perceived Depth in Stereoscopic Images,” Sharp
Laboratories of Europe Ltd., unknown publication date (“Jones”). Ans. 23—
25.
CONTENTIONS AND ANALYSIS
35 U.S.C. § 103(a): Claims 1, 3—5, 15—19, and21
With respect to claim 1, and similarly, claims 17 and 19, the Examiner
finds Harman discloses a “method of generating an output disparity map for
rendering a multi-view image having a plurality of objects on a multi-view
3D display device,” producing a depth map for use in the convergence of 2D
images into stereoscopic images. Final Act. 3^4 (citing Harman 1144,
Abstract). To support the conclusion of obviousness, the Examiner then
relies on various combinations of Harman, Peli, Pentland, and Freeman to
teach or suggest various (out of order) steps recited in Appellants’ claims 1,
17, and 19. Final Act. 4—12. For example, the following claim chart sets
forth our understanding of the Examiner’s rejection, illustrating various
steps recited in Appellants’ claims and corresponding prior art identified to
support the Examiner’s findings:
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Application 11/577,745
[A] receiving an input disparity
map including a plurality of input
elements, each having [i] an input
value and
Final Act. 4 (citing Harman H 144—
145)
[ii] a focus map including a
sharpness value of each of the pixels
of the image computed from a
difference between at least one of a
luminance value and a color value of
the pixel and of a second pixel
neighboring the pixel,
Final Act. 9—12 (citing Freeman
4:66-5:33)
[B] determining the input value of
a first of the plurality of elements
based on [i] the input disparity map
and
Final Act. 5 (citing Harman 1144)
[ii] a predetermined criterion
according to which the input value
corresponds to areas with the pixels
having highest sharpness values in
the image,
Final Act. 7—9 (citing Pentland § II,
111-3, §1,11)
[C] determining a mapping
function
Final Act. 5 (citing Harman 1144)
[i] based on a mapping of the input
value of the first element to a
predetermined output value which is
substantially equal to zero, and
Final Act. 5 (citing Peli § 1.1,1
§ 2,111-2)
[D] generating the output
disparity map comprising output
elements having output values
corresponding to shifts to be applied
to respective pixels of the image
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[i] to compute a second image Final Act. 4 (citing Harman H 144—
using the determined mapping
function
145)
[ii] to map the input values of each
of the plurality of elements to their
respective output values.
Appellants dispute the Examiner’s factual findings regarding Harman,
Peli, Pentland, and Freeman. In particular, Appellants contend neither
Harman nor Pentland teaches or suggests the following language of claim 1:
“[B] determining the input value of a first of the plurality of elements based
on [i] the input disparity map and [ii] a predetermined criterion according to
which the input value corresponds to areas with the pixels having highest
sharpness values in the image.” App. Br. 10-11.
Appellants acknowledge Freeman teaches producing “an enhanced
raster image that may have some pixels that are sharper than the
corresponding regions of raster image [] and other pixels that are blurrier,”
but argue that such a disclosure does not teach or suggest any “[A][ii] focus
map including a sharpness value of each of the pixels of the image computed
from a difference between at least one of a luminance value and a color
value of the pixel and of a second pixel neighboring the pixel,” as recited in
claim 1. App. Br. 11—13 (citing Freeman 4:66—5:33).
In addition, Appellants argue the Examiner has (1) engaged in an
impermissible hindsight reconstruction of Harman, Peli, Pentland, and
Freeman, and (2) failed to account for all the limitations recited in claim 1.
Reply Br. 3—11.
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We agree with Appellants. At the outset, the Examiner’s rejection of
Appellants’ independent claims 1,17, and 19 lacks the requisite specificity
needed to establish a prima facie case of obviousness. The Examiner bears
the initial burden of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the Examiner points to evidence that is sufficient, if
uncontroverted, to prevail as a matter of law. See Saab Cars USA, Inc. v.
United States, 434 F.3d 1359, 1369 (Fed. Cir. 2006). Here, that burden has
not been met in a manner enabling proper review.
Specifically, the Examiner has cited multiple paragraphs from
Harman, Peli, Pentland, and Freeman for various claim limitations, but has
not provided any explanation as to how these multiple, distinct teachings
may be combined to describe Appellants’ invention, as recited. Final Act.
3—12. For example, Appellants’ claim 1 recites, inter alia:
“[A] receiving an input disparity map including a
plurality of input elements, each having
[i] an input value and
[ii] a focus map including a sharpness value of
each of the pixels of the image computed from a difference
between at least one of a luminance value and a color value of
the pixel and of a second pixel neighboring the pixel.”
The Examiner asserts (1) Harman teaches “receiving an input
disparity map including a plurality of input elements” and (2) Freeman
teaches “a focus map including a sharpness value of each of the pixels of the
image computed . . .,” as recited in claim 1. Final Act. 4, 9—12 (citing
Harman H 144—145; Freeman 4:66—5:33). However, neither Harman nor
Freeman supports the Examiner’s assertion. Paragraphs 144-45 of Harman
describe processing an image using a depth map, but do not teach or suggest
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Appellants’ claimed “disparity map.” Harman H 144-45. The distinction
between “a depth map” and “a disparity map” is explained by Appellants’
own Specification, i.e., “[disparity values and depth values are typically
inversely related, i.e.: S = C/D, with S being disparity, C a constant value
and D being depth.” Spec. 3:9-12. Likewise, the cited portion of Freeman
refers to the background intensity value of a target pixel, but not any “focus
map,” as recited in Appellants’ claims 1, 17, and 19. Freeman 4:66—5:33.
Moreover, even if the Examiner’s assertion is correct, the Examiner has not
explained why Freeman’s “focus map” is part or can be part of an input
element included in Harman’s “input disparity map,” as required by
Appellants’ claims 1, 17, and 19.
In addition, Appellants’ claim 1 recites the following language:
“[B] determining the input value of a first of the
plurality of elements based on
[i] the input disparity map and
[ii] a predetermined criterion according to
which the input value corresponds to areas with the pixels
having highest sharpness values in the image.”
The Examiner initially asserts Harman teaches this limitation, but later
admits “Harman as modified by Peli” lacks disclosure of this limitation, and
alternatively asserts Pentland teaches the same limitation. Final Act. 5, 7—9
(citing Harman 1144; Pentland § II, H 1—3, §1,11). However, like
Harman, Pentland teaches determining a depth of field, not Appellants’
claimed “disparity map” and “a predetermined criterion according to which
the input value corresponds to areas with the pixels having highest sharpness
values in the image” in the manner recited in Appellants’ claim 1.
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Lastly, Appellants’ claim 1 further recites:
“[D] generating the output disparity map comprising
output elements having output values corresponding to shifts to
be applied to respective pixels of the image
[i] to compute a second image using the
determined mapping function
[ii] to map the input values of each of the plurality
of elements to their respective output values.”
The Examiner has not accounted for this limitation anywhere in the
rejection.
Accordingly, based on the record before us, we cannot sustain the
Examiner’s obviousness rejection of claims 1, 17, and 19 and their
respective dependent claims 3—12, 15—18, and 20-21.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), however, we
reject claims 1,17, and 19 under 35U.S.C. § 101 as being directed to a non-
statutory subject matter.
The Supreme Court has long held that “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal
quotation marks omitted)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
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concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis
is to “determine whether the claims at issue are directed to one of those
patent-ineligible concepts,” such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is
to “search for an ‘inventive concept’—i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition
against patenting an abstract idea “‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
adding ‘insignificant postsolution activity’.” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (citation omitted).
In applying the framework set out in Alice, and as the first step of our
analysis, we find Appellants’ method claim 1, its corresponding device
claim 17, and its “computer readable medium” claim 19 are directed to a
patent-ineligible abstract concept of “generating an output disparity map
[based on an input disparity map].” All the steps recited in Appellants’
method claim 1, including, for example, (i) “receiving an input disparity
map including a plurality of input elements,” (ii) assessing or “determining
the input value . . . based on the input disparity map and a predetermined
criterion,” (iii) “determining a mapping function . . . ,” and (iv) “generating
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the output disparity map,” are abstract processes of collecting, storing, or
analyzing information of a specific content, i.e., a disparity map. However,
information, as such, is intangible. See Microsoft Corp. v. AT&T Corp., 550
U.S. 437, 451 n.12 (2007). Information collection and analysis, including
when limited to particular content, is within the realm of abstract ideas. See,
e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349
(Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Turning to the second step of the Alice inquiry, we find nothing in
method claim 1 or similarly, in device claim 17 or “computer-readable
medium” claim 19, that adds anything “significantly more” to transform the
abstract concept of collecting, storing, and analyzing information into a
patent-eligible application. Alice, 134 S. Ct. at 2357, 2360. None of the
steps recited is individually inventive; nor is the ordered combination of
these steps inventive, given that they are ordinary steps in data analysis and
are recited in the ordinary order. Instead, Appellants’ claims 1,17, and 19
simply incorporate a general-purpose computer and “processor” to perform
the abstract concept of “generating an output disparity map [based on an
input disparity map],” i.e., collecting, storing, and analyzing information.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014), the “machine-or-
transformation” (“MoT”) test can provide a “useful clue” in the second step
of the Alice framework. Under the MoT test, a claimed process is patent-
eligible under § 101 if “(1) it is tied to a particular machine or apparatus; or
(2) it transforms a particular article into a different state or thing.” In re
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Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at
70). However, Appellants’ method claim 1, its corresponding device claim
17, and its “computer-readable medium” claim 19 are neither sufficiently
“tied to a particular machine or apparatus,” nor involved in any type of
transformation of any particular article.4
For example, limiting such an abstract concept of “generating an
output disparity map” to a general purpose computer or “processor” recited
in Appellants’ claims 1,17, and 19 does not make the abstract concept
patent-eligible under 35 U.S.C. §101. As recognized by the Supreme Court,
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” See Alice, 134
S. Ct. at 2359 (concluding claims “simply instructing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer” not patent eligible); see also Ultramercial, 772 F.3d at 715—16
(claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” not patent eligible); Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a
‘computer aided’ limitation to a claim covering an abstract concept, without
4 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
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more, is insufficient to render [a] claim patent eligible” (internal citation
omitted)).
In contrast to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1252 (Fed. Cir. 2014), and the recent Federal Circuit decision in Enflsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which held that claims
directed to specific improvements in computer capabilities (i.e., self-
referential table for a computer database) are patent-eligible subject matter,
we find Appellants’ claims 1,17, and 19 are not rooted in computer
technology. Nor do Appellants’ claims seek to improve any type of
computer capabilities, such as Enfish’s “self-referential table for a computer
database.” As discussed supra, Appellants’ claims 1,17, and 19 recite only
the abstract concept of “generating an output disparity map [based on an
input disparity map],” i.e., collecting, storing, and analyzing information.
Because Appellants’ claims 1,17, and 19 are directed to a patent-
ineligible abstract concept, we reject these claims under 35 U.S.C. § 101 as
being directed to non-statutory subject matter in light of Alice and its
progeny. With respect to remaining dependent claims 3—12, 15, 16, 18, 20,
and 21, we leave it to the Examiner to evaluate whether they are
independently patent-eligible.
DECISION
We REVERSE the Examiner’s Final rejection of claims 1, 3—12, and
15—21 under 35 U.S.C. § 103(a). However, we enter a NEW GROUND OF
REJECTION for claims 1,17, and 19 as being directed to a non-statutory
subject matter.
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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2010). 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.”
Rule 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds 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
prosecution 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. .. .
REVERSED
37 C.F.R, $ 41.50(b)
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