Ex Parte BraunDownload PDFBoard of Patent Appeals and InterferencesJul 30, 201210670902 (B.P.A.I. Jul. 30, 2012) Copy Citation 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 Appeal 2010-001822 Application 10/670,902 2 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, Appeal 2010-001822 Application 10/670,902 3 ¶ 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.) Appeal 2010-001822 Application 10/670,902 4 "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 Appeal 2010-001822 Application 10/670,902 5 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) peb Appeal 2010-001822 Application 10/670,902 1 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 Appeal 2010-001822 Application 10/670,902 2 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 Visionâ€, 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.â€)(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."). Appeal 2010-001822 Application 10/670,902 3 that “[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefiniteâ€). 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. Appeal 2010-001822 Application 10/670,902 4 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 (“Guidelinesâ€), 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). Appeal 2010-001822 Application 10/670,902 5 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. peb Copy with citationCopy as parenthetical citation