Ex Parte Braun

Board of Patent Appeals and Interferences

Jul 30, 2012

10670902 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN M. BRAUN
____________

Appeal 2010-001822
Application 10/670,902
Technology Center 2600
____________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
LANCE LEONARD BARRY, ALLEN R. MACDONALD,
SCOTT R. BOALICK, ST. JOHN COURTENAY III, THU A. DANG, and
KEN B. BARRETT, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
LANCE LEONARD BARRY.

Opinion Concurring filed by Administrative Patent Judge
ST. JOHN COURTENAY III.

BARRY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-3 and 5-17. The Appellant
appealed therefrom. The original panel rejected claims 1-3 and 5-17 under
35 U.S.C. § 112, ¶ 2, and reversed the rejections of claims 1-3 and 5-17
under 35 U.S.C. § 103(a). See Decision on Appeal (June 14, 2012). The
Appellant now requests rehearing.

INVENTION
The following claim illustrates the invention on appeal:
1. A method for improving printer characterization to more
accurately reproduce desired colors on a destination printing
device given the ambient illumination at the location where the
printer's output is intended to be viewed, comprising:
a) producing a target consisting of pairs of metamers,
where each pair matches for one illuminant and mismatches for
others;
b) viewing said target under the illumination for which
characterization is desired;
c) selecting a best metameric pair match from said
metameric pairs, which estimates said viewing illumination;
d) entering an indicator of said estimated viewing
illumination; and
e) adjusting the characterization data to correspond to
said estimated viewing illumination.

INDEFINITENESS REJECTION
The "Board rejected the term, 'the characterization data,' (found in the
last limitation of claim 1) for lacking antecedent basis." (Req. Reh’g 2.)
"The App[ellant] does not dispute this rejection . . . ." (Id.) Therefore, we
maintain the original panel’s rejection of claims 1-3 and 5-17 under § 112,
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¶ 2, as indefinite for failing to particularly point out and distinctly claim the
Appellant's invention.

OBVIOUSNESS REJECTIONS
We vacate the original panel’s pro forma reversal of the Examiner's
obviousness rejections of claims 1-3 and 5-17 and address the rejections on
the merits. More specifically, the Examiner rejected claims 1-3, 5, and 7-17
under § 103(a) as being unpatentable over U.S. Patent Application Pub. No.
US 2003/0020727 Al ("Newman") and U.S. Patent Application Pub. No. US
2002/0158933 Al ("Yamamoto"). The Examiner also rejected claim 6 under
§ 103(a) as being unpatentable over Newman, Yamamoto, and the
Examiner’s official notice.
Based on the dependencies of the claims, we will decide the appeal of
claims 1-3 and 5-17 on the basis of claim 1.
The pivotal issue before us follows: Did the Examiner err in finding
that Yamamoto teaches or would have suggested "viewing said target under
the illumination for which characterization is desired[,]" as required by
independent claim 1?
The Examiner admits that "Newman fails to disclose . . . viewing said
target under the illumination for which characterization is desired." (Ans.
4.) The Examiner finds, however, that "Yamamoto teaches . . . viewing a
target (printed gray color patch, see S2, fig. 8, paragraph 66) under the
illumination (standard light A and standard light D50) for which
characterization is desired (see figure 8; paragraphs 66-69, note that each
printed gray color patch is observed (visually viewed) in standard light
sources D50 & A." (Id.)
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"A rejection based on section 103 clearly must rest on a factual
basis . . . ." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not . . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis." Id.
Here, we agree with the Appellant's argument that "claim 1 expressly
defines the illumination as the ambient illumination at the location where the
printer's output is intended to be viewed." (Reply Br. 7.) Speculation or
assumptions would be required to answer the following questions: Under
"[w]hich light source does Yamamoto desire the viewing be characterized?
The standard light source D50 or standard light source A?" (Id. at 8.) We
decline to resort to such speculation or assumptions.
We further agree with the Appellant's following arguments.
Yamamoto fails to teach that the target is viewed under the
illumination for which characterization is desired because the
target is viewed under two different sources to get a normalized
result that is independent of the illumination source.
In conclusion, Yamamoto explicitly teaches that the
patch or patches are selected to reduce the dependence of
color appearance on the light source, not based upon the
estimation of the light source. In other words, Yamamoto
explicitly teaches away from selecting a best metameric pair
match from the metameric pairs, which estimates the
viewing illumination because Yamamoto teaches a desire to
select a patch that represents an independence from any
particular light source.
(Id.)
Therefore, we conclude that the Examiner did err in finding that
Yamamoto teaches or would have suggested "viewing said target under the
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illumination for which characterization is desired[,]" as required by
representative claim 1.
Furthermore, the Examiner does not allege, let alone show, that the
addition of Official notice cures the aforementioned deficiency of Newman
and Yamamoto.

DECISION
We have granted the Appellant's request for rehearing. In doing so,
we have maintained the original panel’s rejection under 37 C.F.R. §41.50(b)
of claims 1-3 and 5-17 under § 112, ¶ 2. We have reversed the Examiner's
rejection of claim 1, and rejections of claims 2, 3, and 5-17, which depend
from claim 1, under § 103(a).

REVERSED
41.50(b)

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Appeal 2010-001822
Application 10/670,902
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COURTENAY, Administrative Patent Judge, concurring:
I concur in the original panel’s decision regarding the new ground of
rejection under §112, second paragraph. However, in considering the
language of independent claim 1 as a whole, I additionally conclude that the
process of claim 1 could be performed by a human writing on a piece of
paper (e.g., with colored pens or crayons). Our reviewing court guides that
"a method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101." Cybersource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011).
Moreover, the apparent matching of metameric colors that are viewed
by a human under certain lighting conditions ("illuminant" as claimed by
Appellant) relies on a phenomenon of nature in that the human eye contains
only three color receptors (cone cells) that reduce all colors to three sensory
quantities, called tristimulus values. As a result of this natural human vision
limitation, different (metameric) colors appear to be the same or similar
under certain lighting conditions. However, "[p]henomena of nature, though
just discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
Of particular note (regarding the §112 issue), claim 1 does not specify
who or what performs viewing step (b). Because color perception is known
to vary among individuals accordingly to age and medical condition (cf.
colorblind individuals), the claimed step (c) of selecting "a best metameric
pair match from said metameric pairs, which estimates said viewing
illumination" is necessarily subjective between different persons. In
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particular, variations in color perception are known to exist among both
normal and color-deficient individuals.1
Thus, under a broad but reasonable construction, the selecting step (c)
of claim 1 is amenable to two or more plausible claim constructions due to
the subjective nature of what colors pairs may be perceived as a "best
metameric pair match" by different individuals. (Claim 1).2 The metes and
bounds of the claimed invention cannot be precisely determined because of
the naturally occurring variations in color vision perception between
individuals. See n.1 infra. Therefore, the scope of Appellant’s claim 1
depends solely on the unrestrained, subjective opinion of a particular
individual purportedly practicing the invention. See Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005):
The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See Application of
Musgrave, 57 C.C.P.A. 1352, 431 F.2d 882, 893 (1970) (noting

1 See e.g., Deeb SS. “The Molecular Basis Of Variation In Human
Color Vision”, Clin Genet. 2005 May;67(5):369-77. (See Abstract:
“Common variation in red-green color vision exists among both normal and
color-deficient subjects. Differences at amino acids involved in tuning the
spectra of the red and green cone pigments account for the majority of this
variation . . . Women who are heterozygous for red and green pigment genes
that encode three spectrally distinct photopigments have the potential for
enhanced color vision.”)(emphasis added).

2 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
("Precedential") ("[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.").

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that “[a] step requiring the exercise of subjective judgment
without restriction might be objectionable as rendering a claim
indefinite”). Some objective standard must be provided in order
to allow the public to determine the scope of the claimed
invention.
(emphasis added).

This reasoning is applicable here. Our reviewing court also guides
that if the language of the claim is such that a person of ordinary skill in the
art could not interpret the metes and bounds of the claims so as to
understand how to avoid infringement, a rejection of the claim under 35
U.S.C. § 112, second paragraph is deemed appropriate. Morton Int’l, Inc. v.
Cardinal Chemical Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993).
Further, as a matter of claim construction, a preamble is generally not
accorded any patentable weight when it merely recites the purpose of a
process (or the intended use of a structure) and where the body of the claim
does not depend on the preamble for completeness, but instead, the process
steps (or structural limitations) are able to stand alone. See In re Hirao, 535
F.2d 67 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951).
Although “the Supreme Court has made clear that a patent claim’s failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry,” Cybersource 654 F.3d at 1371 (citing Bilski v. Kappos, 130 S.Ct.
3218, 3227 (2010)), here, I conclude that the claimed “method for improving
printer characterization” (preamble, claim 1) merely recites the intended
purpose of the process. There is no "printing device" (machine) recited in
the body of claim 1 to support the preamble. Claim 1 is also silent regarding
any transformation of a (physical) article into a different state or thing.
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At best, the disembodied “characterization data” (which lacks positive
antecedent basis as admitted by Appellant (Req. Reh’g 2.)), is adjusted “to
correspond to said estimated viewing illumination.” (Claim 1). In
particular, the language of claim 1 does not positively recite that such
adjusted “characterization data” is actually used to perform the intended
purpose of “accurately reproduc[ing] desired colors on a destination printing
device, given the ambient illumination at the location where the printer's
output is intended to be viewed.” (Id.). Although Appellant may have
intended for the claimed “characterization data” to be functional descriptive
material,3 as presently claimed, the adjusted “characterization data” is not
positively recited as affecting or changing any machine (i.e., printing device)
function.4
On this record, I am of the view that it is “manifestly evident” that at
least claim 1 is directed to a patent-ineligible abstract idea or mental process
(subjective human color perception). Because the adjusted “characterization

3 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP, 8th edition (revised Aug. 2006), § 2106.01.)

4 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).

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data” is not positively recited as actually being used to affect or change any
machine function, no specific application is positively recited. And because
human color perception is a subjective mental process (abstract idea), the
“single most reasonable understanding is that [Appellant’s] claim is directed
to nothing more than a fundamental truth or disembodied concept,” i.e.,
subjective human color perception. See CLS Bank Int’l v Alice Corp. Pty,
LTD, No. 2011-1301, 2012 WL 2708400, at *10 (Fed. Cir. July 9, 2012). In
light of the evolving state of §101 case law, the Examiner should review all
claims for patent eligibility under 35 U.S.C. §101, consistent with current
USPTO guidance regarding recent court decisions, including Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012).
Regarding the rejection under 35 U.S.C. 112, second paragraph, the
claim as a whole must be considered to determine whether it apprises one of
ordinary skill in the art of its scope, and therefore serves the notice function
required by 35 U.S.C. § 112, second paragraph, by providing clear warning
to others as to what constitutes infringement. Solomon v. Kimberly-Clark
Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). For the reason set forth in the
original panel’s Decision (3), and for the additional reason discussed above
regarding the subjective opinion of a particular individual purportedly
practicing the invention, I concur that claim 1 is indefinite under 35 U.S.C.
§ 112, second paragraph.

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