Ex Parte Chen et al

Patent Trial and Appeal Board

Jun 17, 2016

12175386 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/175,386 07/17/2008 Lawrence Shao-hsien Chen
131265 7590 06/20/2016
Alleman Hall McCoy Russell & Tuttle LLP/SLA
806 SW Broadway
Suite 600
Portland, OR 97205
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SLA2413 1448
EXAMINER
CHEN,XUEMEIG
ART UNIT PAPER NUMBER
2668
MAILDATE DELIVERY MODE
06/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE SHAO-HSIEN CHEN and JOHN E. DOLAN
Appeal2014-006839
Application 12/175,386
Technology Center 2600
Before DAVID M. KOHUT, CATHERINE SHIANG, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SHIANG.
Dissenting Opinion filed by Administrative Patent Judge KOHUT.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-26, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-006839
Application 12/175,386
STATEMENT OF THE CASE
Introduction
The present invention relates to detecting content boundaries. See
generally Spec. 1. Claim 1 is exemplary:
1. A method for content-boundary detection in a digital
image, said method comprising:
determining the location of edges in a first image related
to a digital image, thereby producing an edge map;
receiving a skew parameter;
determining a skew vector associated with said skew
parameter;
forming a first projection histogram of said edge map in a
first projection direction, wherein said first projection direction
is related to said skew vector;
forming a second projection histogram of said edge map
in a second projection direction, wherein said second projection
direction is normal to said first projection direction; and
determining a content boundary associated with said
digital image using said first projection histogram and said
second projection histogram.
References and Rejections
Claims 1-9 and 11-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cullen et al. (U.S. Patent No. 5,781,665; July 14,
1998) ("Cullen") and Ancin et al. (U.S. Patent No. 6,373,590 Bl; Apr. 16,
2002) ("Ancin"). See Final Act. 4.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cullen, Ancin, and Gardes et al. (U.S. Patent No.
6,901, 168 B 1; May 31, 2005) ("Gardes"). See Final Act. 4.
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Application 12/175,386
ANALYSIS 1
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner erred in finding Cullen teaches "forming a first
projection histogram of said edge map in a first projection direction, wherein
said first projection direction is related to said skew vector," as recited in
independent claim 1 (emphasis added). See App. Br. 6-7.
The Examiner cites Cullen as the primary reference, and Ancin as the
secondary reference for rejecting claim 1. See Final Act. 4; Non-Final
Action dated November 30, 2012 ("Non-Final Act.") 3--4, 7-9. The
Examiner explicitly and repeatedly articulates that Cullen alone teaches the
disputed claimed limitation, but the Examiner's mapping omits the claim
term "skew." See Final Act. 4; Non-Final Act. 3, 6, 8. Specifically, the
Examiner finds:
Cullen teaches every limitation except for ( c) receiving . .. and
d) determining [claim limitations]. ...
Cullen teaches every limitation except for the above mentioned
c) and d). To cure the deficiency, Ancin is introduced to
evidence that de-skewing an image with respect to a skew angle
is well-known and practiced.
forming a first projection histogram of the edge map in a first
projection direction, wherein the first projection direction is
related to a vector (col. 4 lines 30-55; FIGs. 3 & 5);
Non-Final Act. 3, 6, 8 (emphases added).
Further, the Examiner's finding that
rotating axes first and projecting edge maps onto the rotated
axes is equivalent to rotating the image first and projecting de-
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Application 12/175,386
skewed image onto original axes. Therefore, de-skewing an
image first and performing histogram projection with respect to
the de-skewed image as suggested by Cullen in view of Ancin
performs the same function as that of claim 1
(Non-Final Act. 9) does not address how Cullen teaches the required "skew"
vector.
Instead, the Examiner appears to assert that "de-skewing an image
first and performing histogram projection with respect to the de-skewed
image as suggested by Cullen in view of Ancin performs the same function
as that of claim 1" (Non-Final Act. 9) allows the Examiner to disregard the
"skew" claim element in the disputed claim limitation. See Non-Final Act. 8
(omitting the claim term "skew" in mapping the disputed claim limitation).
But the Examiner has not cited any legal authority for the assertion. To the
contrary, it is well established that "[a]ll words in a claim must be
considered in judging the patentability of that claim against the prior art." In
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Appellants argue "[t] The Examiner produces no argument that the
combination of Cullen and Ancin teaches 'forming a first projection
histogram of said edge map in a first projection direction, wherein said first
projection direction is related to said skew vector.'" App. Br. 7.
The Examiner does not directly respond to Appellants' argument. In
fact, the Examiner concedes "Cullen ... is silent on the skew" and "Cullen
does not provide further information clarifying the skew situation." Ans. 3,
5. Further, as pointed out by Appellants (App. Br. 7), the Examiner's
finding that "Ancin is introduced to evidence that de-skewing an image with
respect to a skew angle is well known and practiced." (Ans. 5) is not on
point, as claim 1 does not require de-skewing an image. Similarly, the
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Application 12/175,386
Examiner's assertion that in "Cullen ... [t]he image is either not skewed or
already de-skewed" (Ans. 5) is not relevant, because the claim does not
require an image that is not skewed or de-skewed. See App. Br. 6-7. Nor is
that assertion substantiated, as the Examiner concedes "Cullen does not
provide further information clarifying the skew situation" (Ans. 5). See
App. Br. 6-7.
Finally, the Federal Circuit has cautioned against "chang[ing]
the thrust of the rejection" at the Board:
[T]he [Board] must assure that an applicant's petition is
fully and fairly treated at the administrative level ....
Mere reliance on the same statutory basis and the same
prior art references, alone, is insufficient to avoid making a new
ground of rejection when the Board relies on new facts and
rationales not previously raised to the applicant by the examiner
... when reliance upon such facts changes the thrust of the
rejection, the Board's action "does everything but cry out for an
opportunity to respond."
This also serves the interests of judicial efficiency.
Rather than reviewing arguments directed towards ever-shifting
rejections, this court is instead only presented with arguments
concerning those rejections properly made by the examiner and,
in due time, reviewed by the Board.
In re Leithem, 661 F.3d 1316, 1319-20 (Fed. Cir. 2011) (citations
omitted).
Therefore, we respectfully decline the invitation to rearrange the
Examiner's mapping and add new findings in order to sustain the rejection.
Additionally, we decline to modify the Examiner's findings because such
findings appear contradictory with respect to each other. More particularly,
the Examiner acknowledges Cullen "is silent on the skew" (Ans. 3) and
finds "Cullen does not performing [sic] rotating because his image is not
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Application 12/175,386
skewed" (Non-final Act. 3), and relies on Ancin as teaching "a method of
de-skewing an image by determining a skewed angle" (id. at 4). The
Examiner also finds Cullen teaches an image with no skew or a de-skewed
image: "[t]he image is either not skewed or already de-skewed ... [but] does
not provide further information clarifying the skew situation" and introduces
Ancin as "evidence that de-skewing an image with respect to a skew angle is
well-known and practiced." Ans. 5 (emphasis added). Thus, it is not clear
whether the Examiner relies on Ancin for its teachings or merely as
evidence. In any event, the Examiner has not explained how such findings
are connected to the disputed claim limitation. Modifying such
contradictory findings would not give Appellants appropriate notice with
which to respond.
We also respectfully disagree with the Minority's characterization of
our opinion and the record for the following additional reasons.
First, our opinion does not state "what Ancin is used to teach is not
required by the claim." Opinion 9. As discussed above, the Examiner finds
that Ancin teaches the receiving and determining claim limitations. The
Examiner's particular finding about de-skewing is not helpful for teaching
the disputed claim limitation, as claim 1 does not require de-skewing an
image.
Second, we disagree with the Minority's assertion that on page 3 of
the final rejection, the Examiner finds "the combination of Cullen's
histogram teachings with Ancin's image skewing teaches the disputed
limitation." Opinion 9 (emphasis omitted). To the contrary, the Examiner
again explicitly states Ancin is cited for teaching the receiving and
determining claim limitations-not the disputed claim limitation:
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Application 12/175,386
Note that Examiner relies upon Ancinjor disclosing receiving a
skew parameter (skew angle), determining a skew vector
associated with said skew parameter and de-skewing the image
with respect to the skew parameter. Histogram projection is
taught by primary reference Cullen.
Ancin uses histogram projection to determine skew angle. The
current application does not disclose and/or claim how to
determine skew angle. So Ancin 's teaching regarding skew
angle determination using histogram projection is not relevant
to the PA rejection. Examiner mentions Ancin's histogram
projection because Ancin's method is very similar to that of the
current application. Therefore, Ancin is qualified as an
analogous art[]
Final Act. 3 (emphases added).
Third, we disagree with the Minority's assertion that "the Examiner's
finding that Ancin teaches that 'de-skewing' is a well-known process ...
relates to the fact that the idea of a skew vector, as required by the claim, is a
well-known concept." Opinion 9. The Examiner does not provide any
finding connecting the "de-skewing" process to the issue of whether the
claimed "skew vector" was known in the art. Nor does the Minority cite any
evidence showing the Examiner made such a connection.
To the contrary and as discussed above, the Examiner finds "de-
skewing" is a well-known process in order to perform the function
equivalence-reading the "skew" claim term out of the claim. See Non-
Final Act. 8-9.
Fourth, the Minority's citing Altiris is not relevant here. And the
Minority's assertion that "the Examiner is merely stating that the order in
which the steps are performed are irrelevant, not that a particular claim term
can be overlooked" (Opinion 10) contradicts the Minority's assertion that
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Application 12/175,386
the Examiner cites Ancin for teaching the claimed skew vector. If the
Examiner had relied on Ancin to teach "skew vector" as asserted by the
Minority (but not supported by the record), then the combination would have
taught the claim limitations in the exact order recited by the claim.
Therefore, the Minority's citing Altiris' discussion about the order of the
steps is not relevant here.
Because the Examiner explicitly and repeatedly relies on Cullen alone
to teach the disputed claim limitation, but also concedes Cullen does not
teach the required "skew" vector, we cannot "change[] the thrust of the
rejection" to sustain the rejection. Leithem, 661 F.3d at 1319. Therefore,
we are constrained by the record to reverse the Examiner's rejection of claim
1, and corresponding dependent claims 2-11 for similar reasons.
The Examiner cites the mapping of claim 1 for rejecting independent
claims 12 and 25. See Final Act. 4; Non-Final Act. 14--15, 17. Appellants
argue that as discussed above with respect to claim 1, the Examiner has
failed to produce a prima facie case of obviousness with respect to claims 12
and 25. See App. Br. 8-9. Therefore, for similar reasons discussed above
with respect to claim 1, we reverse the Examiner's rejection of independent
claims 12 and 25, and corresponding dependent claims 13-24 and 26.
DECISION
We reverse the Examiner's decision rejecting claims 1-26.
REVERSED
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Application 12/175,386
KOHUT, Administrative Patent Judge, dissenting.
I respectfully dissent from the Majority's reversal of the Examiner's
rejection of claims 1-26. The Majority reverses the rejection of these claims
because (1) the Majority believes that the Examiner finds that Cullen alone
teaches the disputed limitation; (2) the Majority believes that what Ancin is
used to teach is not required by the claim, i.e., "claim 1 does not require de-
skewing an image;" and (3) the Majority believes the Examiner has
disregarded the "skew" element of the claim. Opinion 2-6. However, I
respectfully disagree for the reasons discussed below.
First, as indicated on page 3 of the Examiner's Final Rejection, the
Examiner finds that the combination of Cullen's histogram teachings with
Ancin' s image skewing teaches the disputed limitation. Therefore, I
respectfully disagree with Appellants and the Majority that the Examiner
relies solely on Cullen to teach the disputed limitation. As a result, I
respectfully disagree that the Examiner should be reversed on this argument
alone.
Second, the Examiner's finding that the process to de-skew an image
is well-known in the art (Ans. 5) is relevant and exactly on point with the
disputed limitation even though the claim does not require the image to be
"de-skewed." Claim 1 specifically requires a skew parameter and a skew
vector. One of ordinary skill in the art would know that this information was
required in order to "de-skew" an image. Therefore, the Examiner's finding
that Ancin teaches that "de-skewing" is a well-known process (Ans. 5)
relates to the fact that the idea of a skew vector, as required by the claim, is a
well-known concept.
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Third, the Majority indicates on pages 4 and 5 of the Opinion that the
Examiner's finding relates only to the functionality of the combination of the
references and, thereby, disregards the "skew" element of the claim. I
respectfully disagree with the Majority's interpretation. On page 9 of the
Non-Final Rejection, mailed November 30, 2012, the Examiner is merely
stating that the order in which the steps are performed are irrelevant, not that
a particular claim term can be overlooked. This is consistent with current
case law that states "[u]nless the steps of a method actually recite an order,
the steps are not ordinarily construed to require one." Altiris, Inc. v.
Symantex Corp., 318 F.3d 1363, 1369 (Fed. Circ. 2003).
For all of these reasons, I respectfully disagree with the Majority and
would affirm the Examiner's rejection of claims 1-26.
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