Ex parte Case

Board of Patent Appeals and Interferences

Jun 30, 1999

08165795 (B.P.A.I. Jun. 30, 1999)

Application for patent filed December 13, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT M. CASE
__________
Appeal No. 96-1729
Application 08/165,7951
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON, and BARRETT, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 through 11, which constitute all
of the claims in the application.
Appeal No. 96-1729
Application No. 08/165,795
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Representative claim 1 is reproduced below:
1. A method for reproducing an image which comprises the
steps of:
(a) converting an image to a multi-bit pixel depth
bitmap;
(b) defining a first multi-pixel cell having
particular dimensional attributes from said bitmap, said
cell containing a desired number of pixels and each
pixel bearing a value representative of a shade of gray;
(c) determining a gray level for the first multi-
pixel cell;
(d) dividing the first multi-pixel cell into two
equal groups of alternating pixels with a first one of
said groups being on and a second of said groups being off;
and
(e) deriving a first derivation cell depicting a
maximum apparent gray from said first multi-pixel
cell having said two equal groups of alternating pixels.
The following references are relied on by the examiner:
Stoffel 4,194,221 Mar. 18, 1980
Chen et al. 4,668,995 May 26, 1987
(Chen)
Roetling 4,730,221 Mar. 8, 1988
Roe 5,121,223 Jun. 9, 1992
Tai 5,258,850 Nov. 2, 1993
Claims 5 through 8 stand rejected under the enablement
provision of 35 U.S.C. § 112, first paragraph. The same
Appeal No. 96-1729
Application No. 08/165,795
At page 14 of the initial examiner’s answer, the2
examiner has withdrawn his separate rejection of claim 8 under
the first paragraph written description portion of 35 U.S.C. §
112.
3
claims also stand rejected under the second paragraph of 35
U.S.C. § 112 as being indefinite. Claims 1 through 11 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness,
the examiner relies upon Roetling in view of Tai (as a newly
stated ground of rejection in the answer) as to claims 1
through 4 and 9 through 11, with the addition of Chen or
Stoffel or Roe as to claims 5 through 8. 2
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for
the respective details thereof.
OPINION
We reverse each of the four stated rejections.
Turning first to the rejection of claims 5 through 8
under the enablement provision of the first paragraph of 35
U.S.C.
§ 112, appellant correctly sets the standard of review, that
being a determination as to whether only routine or undue
experimentation must be necessary by an artisan to make and
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Application No. 08/165,795
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use the claimed invention.
The detailed description of the invention begins at the
bottom of page 13 of the specification as filed. The
description of Figure 3 is taken in the context of each of
cells C1 and C2 being defined with side lengths of N pixels
where N is a number divisible by two; see the bottom of page
14. The discussion at page 15 is in the context of comparing
the actual versus the total possible gray levels of the multi-
bit pixel depth primary cell C. This sets forth the
environment of dependent claim 5, a more particular recitation
of the comparing step of independent claim 4. The artisan, in
reading the description at pages 15 and 16 of the
specification as filed, clearly would have understood without
any measure of undue experimentation necessary to make and use
the claimed invention, the subject matter of independent claim
5. The formula recited in this claim is explained in detail
in the portion of the specification at pages 15 and 16. The
discussion at the bottom of page 16 gives an example of the
numerical determinations of the compare operations which
eventually would yield the value V to be assigned to the gray
level to be depicted in a subsequent single-bit (as opposed to
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Application No. 08/165,795
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a multi-bit) multi-pixel cell. Moreover, as to the integer
determination in dependent claim 6, it is clear that this
discussion would have been readily understood by the artisan
as explained at pages 17 and 18 of the specification as filed.
It is the deriving step at the end of independent claim 4 that
is further explained according to the formula recited in
dependent claim 6 which is consistent with this just mentioned
discussion.
In view of the foregoing, we conclude that it would have
been necessary for the artisan to exercise only a routine
measure of experimentation to make and use the claimed
invention as set forth in dependent claims 5 through 8.
Additionally, since the subject matter of these claims is
directly consistent with and somewhat mirrors the actual
language of the disclosure in the earlier noted portions of
the specification as filed, appellant’s claims can not be
fairly said to be indefinite. It is apparent to us that the
appellant is particularly pointing out and distinctly claiming
what he regards as his invention as required by the second
paragraph of 35 U.S.C. § 112 such as to give adequate notice
to the artisan and the public what the metes and bounds of the
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Application No. 08/165,795
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claimed invention comprise. Therefore, we reverse the
outstanding rejections of claims 5 through 8 under the first
and second paragraphs of 35 U.S.C. § 112.
Turning lastly to the rejections of claims 1 through 11
under 35 U.S.C. § 103, we reverse both of the above stated
rejections. Each of independent claims 1, 4 and 9 on appeal
recite at a minimum the following:
[D]ividing the first multi-pixel cell into two equal
groups of alternating pixels with a first one of
said groups being on and a second of said groups
being off.
Our study of the combined teachings of Roetling and Tai
leads us to agree with appellant’s observations at pages 5 and
6 of the reply brief which we reproduce here:
Roetling fails to discuss dividing a cell made up of
a number of pixels into two equal groups of
alternating pixels with the first on and the second
off. The newly cited U.S. patent to Tai does not
overcome the deficiencies of Roetling. Tai uses a
method entirely different from Roetling and entirely
different from Appellant to reproduce an original
image (reply brief, page 5).
Nowhere does Tai suggest that he uses a template
which consists of pixels which alternate between
black and white pixels. Tai clearly says that each
of the pixels has a gray level and in fact
determines the gray level for each pixel. Further,
any template that Tai generates is modified using
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Application No. 08/165,795
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one of the aforementioned dot techniques. Tai does
not turn on or turn off pixels in the manner taught
by Appellant. It is submitted that there is nothing
in Tai which would motivate one of ordinary skill in
the art to select a template with alternating pixels
instead of alternating regions. It is further
submitted that there is nothing which would suggest
to one of ordinary skill in the art that Tai should
be combined with Roetling. (reply brief, page 6)
If we assume for the sake of argument that the teachings
of Roetling and Tai would have been combinable within 35
U.S.C.
§ 103, the above noted provision of each independent claims 1,
4 and 9 on appeal that we quoted earlier at a minimum would
not have been taught or suggested in any manner. As such, we
do not agree with the examiner’s view that Tai teaches the
examiner’s admitted deficiencies in Roetling with respect to
each of these independent claims of dividing a cell into two
equal groups of alternating pixels as recited in the earlier
quoted clause. In this sense then as well, there is
essentially no prima facie case of obviousness that the
applied prior art would have been established to lead us to
conclude the subject matter of independent claims 1, 4 and 9
would have been obvious to the artisan. As such, we further
reverse the rejection of the respective dependent claims of
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Application No. 08/165,795
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each of these independent claims including those encompassed
by the separate stated rejection under 35 U.S.C. § 103 of
claims 5 through 8.
In view of the foregoing, we have reversed the rejections
of claims 5 through 8 under the first and second paragraphs of
35
U.S.C. § 112. We have also reversed the rejections of claims
1
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Application No. 08/165,795
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through 11 under 35 U.S.C. § 103. Therefore, the decision of
the examiner rejecting all the claims on appeal is reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Kenneth W. Hairston ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lee E. Barrett )
Administrative Patent Judge )
tdc

Appeal No. 96-1729
Application No. 08/165,795
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Robert M. Case
1211 Cove Lake Road
North Lauderdale, FL 33068-4631