Ex Parte Chodos

Patent Trial and Appeal Board

Dec 19, 2014

12826616 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAFAEL CHODOS
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Appeal 2012-006506
Application 12/826,616
Technology Center 2600
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–20. Br. 3; Ans. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
PRIOR ART
The Examiner relies upon the following prior art in rejecting the
claims on appeal.
Marimont US 5,710,877 Jan. 20, 1998
Kotowski US 6,839,403 B1 Jan. 4, 2005
Nesbitt US 2010/0217514 A1 Aug. 26, 2010
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REJECTIONS
The Examiner rejected claims 1–16, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Marimont and Kotowski. Ans. 4–7.1
The Examiner rejected claims 17 and 18 under § 103(a) as
unpatentable over Marimont, Kotowski, and Nesbitt. Id. at 7 and 18.2
STANDARD OF REVIEW
Generally speaking, Appellant must demonstrate that the rejections
either fail to present a prima facie case of obviousness or rest on a finding
unsupported by a preponderance of evidence. See In re Jung, 637 F.3d
1356, 1362–63 (Fed. Cir. 2011) (burdens of Examiners and Applicants);
In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the
evidence is the standard that must be met by the [United States Patent and
Trademark Office (“USPTO”)] in making rejections[.]”); see also
WarnerLambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341, fn. 15

1 The Answer does not expressly state that claim 19 is rejected over
Marimont and Kotowski. However, base claim 1 is rejected over Marimont
and Kotowski. And, the grounds of rejection for claim 19 only reference a
Marimont teaching and the rejection “rationale” for claim 1. Ans. 17. Thus,
claim 19 is clearly rejected as obvious over Marimont and Kotowski.
2 The Answer also states that claims 1, 3–5, 7, 9, 10, and 19 are rejected
under 35 U.S.C. § 102(b) over Marimont. Ans. 4. However, the Answer
addresses each of the independent claims with reference to Marimont and
Kotowski; never with reference to Marimont alone. Id. at 5–6 (claim 1), 10–
11 (claim 11), and 14–16 (claim 15). Thus, the statement of rejection for
claims 1, 3–5, 7, 9, 10, and 19 under § 102(b) over Marimont is clearly
inadvertent and is accordingly disregarded. Assuming arguendo that claims
1, 3–5, 7, 9, 10, and 19 are rejected under § 102(b) over Marimont, the
rejection is not sustained in view of the Examiner’s reliance on Kotowski.
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(Fed. Cir. 2005) (“[P]reponderance of the evidence . . . requires proving . . .
more likely than not to have occurred” (internal citation omitted)).
APPLIED PRIOR ART
Marimont
Marimont teaches software for simplifying and altering an image.3
Marimont, Abst. The software converts the original image to an Image
Structure Map (ISM) for rendering a simpler image (herein “ISM image”) of
only the original image’s geometry and topology. Id. at Abst.; col. 15, l. 13
–col. 16, l. 3; Figs. 6 & 7 (original image) and 8 & 9 (ISM image). The user
may alter the ISM image (e.g., remove and add lines). Id. at col. 16, ll. 4–
67; Figs. 10 & 11 (removing lines 27–28; adding lines 31, 50, 52, and 54).
In the Figure 11 example, the user adds lines 50, 52, and 54 to the ISM
image by tracing a stylus over the original image. Id. at col. 16, ll. 40–43.
Kotowski
Kotowski teaches software for annotating a security x-ray image.
Kotowski, Abs. In Figures 2A–F example, a user highlights a weapon by
tracing a cursor around the corresponding portion of the x-ray image. Id. at
col. 6, ll. 18–46. The tracing produces a line (e.g., line 96 encircling a
handgun 88) that appears to be part of the x-ray image (Figures 2A–B), but
is saved and transmitted as a separate “overlay image” (Figure 2C). Id. at
col. 6, l. 43–col. 7, l. 4.

3 We use “image” to reference a respective image of an image file. For
example, a reference to first and second images denotes the respective
images of two image files.
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Proposed Marimont - Kotowski Combination
The Examiner proposes, in view of Kotowski, to implement
Marimont’s ISM image as an overlay of the original image. See e.g., Ans. 6.
In other words, the ISM image is implemented as an overlay image.
GENERAL ARGUMENTS
Appellant presents “general arguments” directed to all claims. Br.
10–20. With respect to these arguments, addressed below, we select claim 1
as representative. 37 C.F.R. § 41.37(c)(1)(vii) (representative claims).
Analogous Arts
Appellant argues that the claimed invention and applied art are
directed to non-analogous arts. Br. 10–15. Before addressing the
arguments, we note the Examiner’s prima facie case for the analogous arts
requirement.
The Examiner finds that the claimed invention and applied art are
directed to a same field of endeavor. Ans. 20; see also In re Clay, 966 F.2d
656, 658–59 (Fed Cir. 1992) (“Two criteria have evolved for determining
whether prior art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.”) (citations omitted).4 The Examiner particularly finds that the

4 The Examiner does not (and need not) address whether the applied art
satisfies Clay’s second criterion. We therefore disregard (but have
reviewed) Appellant’s arguments directed to Clay’s second criterion.
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claimed invention, Marimont, and Kotowski are each directed to graphics
software whereby a user interacts with a displayed image to alter a related
image.5 Ans. 19–21; see also Jung, 637 F.3d at 1362–63 (prima facie case is
presented if the Examiner satisfies the notice requirement of 35 U.S.C.
§ 132). The above commonality establishes (i.e., evidences as more likely
than not) that the claimed invention and applied art are directed to
sufficiently similar functions and structure. See e.g., In re Deminski,
796 F.2d 436, 442 (Fed. Cir. 1986) (finding inventions were in the same
field of endeavor because they “have essentially the same function and
structure.”).
Appellant argues that the claimed invention and applied art were
assigned different USPTO search classifications and are therefore directed to
different fields of endeavor. Br. 10. The argument is not persuasive, for
each of two reasons.
First, Appellant fails to explain why the applied art’s search
classifications would not be assigned to technology implemented by the
claimed invention. Note in this regard, search classifications are determined
by claimed subject matter. MPEP § 904.02(a). Because a search
classification is selected in view of an invention’s claimed technologies, the
classification does not necessarily reflect the invention’s implemented
technologies.
Second, though search classifications are evidence of non/analogous
arts, similarities of function and structure carry greater weight. See

5 We make no determination of whether the claimed invention is directed to
a statutory software implementation (i.e., satisfies 35 U.S.C. § 101).
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Deminski, 796 F.2d at 442, fn. 3 (“[C]ross reference in official search notes
is some evidence of analogy, although the similarities and differences in
structure and function of the inventions disclosed in the references . . . carry
far greater weight[.]” (citation and quotation marks omitted)); see also In re
Mlot - Fijalkowski, 676 F.2d 666, 670 (CCPA 1982) (“Such evidence is
inherently weak . . . because considerations in forming a classification
system differ from those relating to a person of ordinary skill seeking
solution for a particular problem.”) (quoting In re Ellis, 476 F.2d 1370 1372
(CCPA 1973)), . In light the claimed invention’s and applied art’s noted
similarities, the presented evidence establishes that the claimed invention
and applied art are directed to analogous arts.
Appellant further argues that the claimed invention “is an artistic
educational tool” and therefore “has no rational relationship” to either
Marimont’s image data compression (i.e., to the ISM) or Kotowski’s x-ray
screening. Br. 13–15. The argument is not persuasive, particularly insofar
that Marimont and Kotowski are not solely directed to image data
compression and x-ray screening.
Claim Construction
Appellant argues that the Examiner fails to consider the
Specification’s express restriction of claim 1’s “fine art” to “a visual work of
art considered to have been created primarily for aesthetic purposes and
judged for its specific beauty and meaningfulness.” Br. 16 (addressing and
quoting Spec. 3, ll. 22–25). Appellant further argues that, in light of the
restriction, Marimont’s description of “digitized artwork” image does not
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teach or suggest all limitations of claim 1’s fine art image. Id. at 17; see also
Marimont, col. 15, l. 22 (“digitized artwork”).6
The Examiner responds: “Regardless if the system operates on
images of ‘fine art,’ the system would function as originally intended; thus,
it would have been obvious to operate on images of ‘fine art,’ if desired by
the user.” Ans. 22.
Appellant’s argument is not persuasive, for each of two reasons.
First, as found by the Examiner, Marimont’s implementation of
various images — including an artwork image — establishes that
implementation of a fine art image would be a predictable variation of the
Marimont-Kotowski combination. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”). Thus,
implementation of a fine art image need not be expressly taught or suggested
by the applied art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The
test for obviousness is not . . . that the claimed invention must be expressly
suggested. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”)
(citations omitted).
Second, the “fine art” limitation does not appear to functionally limit
the claimed process. The limitation appears to, rather, identify only the

6 We make no determination of whether the Specification’s definition of
“fine art” includes indefinite terms of degree. See e.g., Seattle Box Co. v.
Industrial Crating & Packing Inc., 731 F.2d 818, 826, 221 (Fed. Cir. 1984)
(“When a word of degree is used[,] the district court must determine whether
the patent’s specification provides some standard for measuring that
degree.”).
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informational content of claim 1’s fine art image. As such, the limitation
carries no patentable weight. See e.g., In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (“Lowry does not claim merely the information content of a
memory.”).
Skill in the Art
Appellant argues that the presented evidence does not establish the
ordinary level of skill in the art. Br. 18–20. Appellant also argues that the
claimed invention’s implementation of a fine art image requires skill not
evidenced by the applied art; namely the inventor’s appreciation of a “look
but don’t touch problem” encountered by fine art instructors. Id. at. 19
(emphasis omitted); see also Spec. ¶ 4.
The Examiner responds:
[T]he problem of interacting with a computer-generated image,
without modifying the original image, is being considered.
Furthermore, a computer programmer, engineer, or scientist
would apply the teachings of the prior art to all images,
including “fine art” images, thus addressing the problem to be
solved by the claimed invention.
Ans. 23.
Appellant’s arguments are not persuasive. As found by the Examiner,
the applied art teaches programming of graphics software whereby a user
interacts with a displayed image to alter a related image. See supra 3–4,
“Applied Prior Art” section. Thus, the presented evidence establishes that a
skilled artisan would have the requisite skills for achieving the claimed
invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The
person of ordinary skill in the art is a hypothetical person who is presumed
to know the relevant prior art.”) (citation omitted). An establishment of
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merely requisite skill is sufficient. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error where the prior art
itself reflects an appropriate level and a need for testimony is not shown[.]”)
(quotation marks and citations omitted)).
As also found by the Examiner, the applied art establishes that a
skilled artisan would contemplate overlaying Marimont’s original image
with the ISM image, such that the user can interact with the original image
while altering only the overlaid ISM image. Note that, because the
overlaying permits the user to simultaneously view the original image and
ISM image, tracing of the original image and resulting alteration of the ISM
image can be likewise simultaneously viewed (i.e., in real time). See supra
3–4, “Applied Prior Art” section (explaining that “the user adds lines 50, 52,
and 54 to the ISM image by tracing a stylus over the original image”).7 And,
because the original image and ISM image are not interdependent, they
retain their respective purposes of presenting the original image’s full
content and topology/geometry. These features of the Marimont - Kotowski
combination are self-evident, but also nonetheless articulated by the
Examiner. Ans. 5 (“generating a trace . . . ([Marimont,] column 16, lines 40-
43, the user traces the outline of a rectangular area on the displayed image of
the original image”), id. at 6 (“such an overlay image . . . output[s] the trace
information without altering . . . the underlying . . . artistic subject matter”).

7 The skeletal nature of the ISM image clearly lends itself to such overlaying
of the original image (i.e., clearly would not obscure the original image).
See Marimont Fig. 11.
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In view of the above, the applied art establishes a clear suggestion for
the Marimont-Kotowski combination. And as discussed, because
implementation a fine art image is a predictable variation of the
combination, the combination and claim 1’s fine art image restriction are
sufficiently bridged the rejection. See supra 7. The applied art need not also
establish an appreciation of a “look but don’t touch problem” for fine art.
Rather, the above - stated advantages of the Marimont - Kotowski
combination alone provide sufficient and supported reasons for making the
combination. See KSR, 550 U.S. at 420 (“[A]ny need . . . in the field of
endeavor . . . can provide a reason for combining the elements in the manner
claimed.”).
Of course, the above prima facie case of nonobviousness must be
weighed against the claimed invention’s alleged solution of a long  felt
“look but don’t touch problem” for fine art. However, Appellant does not
present tangible evidence that the solution or problem was indeed
unappreciated for fine art, much less evidence outweighing the Examiner’s
strong prima facie case of obviousness. See Wyers v. Master Lock Co.,
616 F.3d 1231, 1246 (Fed. Cir. 2010) (“[S]econdary considerations of
nonobviousness . . . simply cannot overcome a strong prima facie case of
obviousness.”)(citations omitted); In re Mixon, 470 F.2d 1374, 1377 (CCPA
1973) (“[A]ppellants’ arguments are tempered by the fact there is little, if
any, tangible evidence to support a contention that their invention actually
has provided a long-awaited, widely-accepted, and promptly-adopted
solution to the problem extant in the art[.]”) (citations omitted).
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SPECIFIC ARGUMENTS
Appellant presents “specific arguments,” addressed below, directed to
respective claims. Br. 20–37.
Claim 1
With respect to claim 1, Appellant argues that Marimont’s ISM “is a
post-processing numerical approximation of the original image and
therefore is not an image at all.”8 Br. 22. The Examiner responds that
Marimont’s original image, not the ISM, is cited as suggesting claim 1’s
image (and the ISM image is cited as suggesting claim 1’s overlay). Ans.
23–24; see also id. at 5–6. Appellant’s argument is not persuasive;
particularly insofar as failing to correctly address the Examiner’s findings.
Appellant also argues that “Kotowski is completely silent as to
whether the underlying subject matter (x-ray images) remains unaltered.”
Br. 24 (emphasis omitted).
The Examiner responds:
Kotowski discloses accessing a graphical overlay and
outputting a trace as a graphical overlay over an image, which
implies that the image is unaltered because displaying the use
of an overlay preserves the original image. Furthermore,
Kotowski explicitly discloses the overlay is superimposed on a

8 Some of the specific arguments merely repeat one of the general
arguments. Our analysis addresses only new arguments (i.e., those not
repetitive of prior arguments). If Appellant views the repeated arguments as
substantively varying for different claim scopes, then the particular
difference/s should have been (but are not) meaningfully explained. See In
re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an [A]ppellant[.]”).
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duplicate x-ray image, which further implies that the original
x-ray image remains unaltered.
Ans. 24.
Appellant’s argument is not persuasive. As found by the Examiner,
Kotowski describes the annotation layer as an “overlay image.” Kotowski
col. 6, l. 50–col. 7, l. 4. Moreover, Kotowski describes the annotation image
as being stored and transmitted separate from the x-ray image. Id. By these
teachings, Kotowski clearly suggests a process that alters the overlaying
annotation image but does not alter the underlying x-ray image.
Claim 3
Appellant argues that Marimont’s ISM image does not teach claim 3’s
“progression of points rendered upon the image” because the ISM image
does not illustrate a sequence of user inputs. Id. at 30–31. The Examiner
responds that Marimont’s ISM image displays vertices corresponding to a
progression of user inputs. Ans. 27.
Appellant’s argument is not persuasive. As found by the Examiner,
Marimont’s ISM image includes contiguous lines 50, 52, 54 and vertices 55–
58 added in response to the user tracing a stylus over the original image.
Marimont, col. 16, ll. 34–67. The vertices 55–58 thus represent a
progression of user inputs; namely the changes in the tracing direction (up,
over, and then down along the contiguous lines).
Claim 4
Appellant argues that Marimont’s ISM image does not teach claim 4’s
progression of points and connecting line segments “upon” (base claim 1)
the original image. Br. 31–32. The argument is not persuasive, particularly
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insofar as failing to address the Marimont - Kotowski combination
overlaying of the ISM image — and the included lines and vertices — on the
original image. In other words, Appellant does not explain why such
overlaying fails to place the ISM image’s features “upon” the original
image.
Claim 5
Appellant argues that the Marimont - Kotowski combination does not
achieve claim 5’s “interacting with the image of fine art for any of
education, artistic focus and consciousness raising” (Br. 40, ll. 78) because
Marimont’s software is rather “directed at editing to improve accuracy.” Br.
33. The Examiner responds: “[F]or [Marimont’s] user to draw the trace, the
user must become more aware of the trace and its surrounding lines, [which]
thus provides consciousness raising.” Ans. 28.
Appellant’s argument is not persuasive, for each of three reasons.
First, Appellant fails to present a meaning (much less a supported
restriction) of “consciousness raising.” Second, Appellant does not rebut the
Examiner’s finding that Marimont’s tracing function implicitly provides
“consciousness raising” of the traced subject matter. Third, the
“consciousness raising” limitation does not appear to functionally restrict the
claimed process and thus carries no patentable weight. See Minton v. Nat’l
Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (“[C]lause
in a method claim is not given weight when it simply expresses the intended
result of a process step positively recited.”)(citation omitted).
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Claim 16
Appellant argues that the Marimont - Kotowski combination does not
achieve claim 16’s “example trace generated by an artistically informed user
to the display when requested by a user” (Br. 42, ll..1415) because the trace
must be: (i) a previously input trace; and (ii) performed by “the rendering
artist, an art aficionado, an artistically informed user and/or a user who is
familiar with the works of a particular artist.” Br. 36 (quoting Spec. ¶ 23).
The Examiner responds: “Due to the exemplary nature of the definition of
example trace, the security trace, as explained in the final Office Action
reads on the claim.” Ans. 29.
Appellant’s argument is not persuasive with respect to the first feature
“(i)” above. As found by the Examiner, the Marimont - Kotowski
combination achieves claim 16’s example trace insofar that the original
image and ISM image can be transmitted to other persons for consideration
(like Kotowski’s x-ray image and trace). In the above instance, the trace
constitutes an “example” trace insofar as being created by someone other
than the reviewer (who may perform another trace in light of the example).
Appellant’s argument is also not persuasive with respect to the second
feature “(ii)” above, for each of two reasons.
First, as found by the Examiner, the presented definition of
“artistically informed user” is merely exemplary. See Spec. ¶ 23 (“The
artistically informed user may be . . .”); see also Thorner v. Sony Computer
Entm’t, Am. LLC, 669 F.3d 1362, 136667 (Fed. Cir. 2012) (“To constitute
disclaimer, there must be a clear and unmistakable disclaimer.”). Thus,
Appellant does not present a restrictive meaning of “artistically informed
user,” much less establish that the “artistically informed user” limitation
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patentably distinguishes the claimed invention over the applied art. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
. . . require[s] more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
Second, the “by artistically informed user” limitation does not appear
to functionally limit the claimed process, but rather at most identify only the
informational content of the overlay. As such, the limitation carries no
patentable weight. See e.g., Lowry, 32 F.3d at 1583 (“Lowry does not claim
merely the information content of a memory.”).
REMAINING CLAIMS
Remaining claims 2, 6–15, and 17–20 are either not addressed by the
specific arguments or addressed by repetitive specific arguments (see supra
11, fn. 8).
CONCLUSION
Appellant does not demonstrate any reversible errors.
DECISION
The Examiner’s decision rejecting claims 1–20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
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