Ex Parte Cholleti et al

Patent Trials and Appeals Board

Jan 16, 2019

14307567 - (D) (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/307,567 06/18/2014 Uday K. Cholleti
46161 7590 01/18/2019
Cantor Colburn LLP - IBM SVL
20 Church Street, 22nd Floor
Hartford, CT 06103-3207
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.
IN920130051US2 4300
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
01/18/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTOPatentMail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UDA Y K. CHOLLETI, SRINIV AS JANDHY ALA, and
BALUNAINI PRASAD
Appeal2018---005197
Application 14/307 ,567 1
Technology Center 2100
Before ROBERT E. NAPPI, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 15-26, which are all the claims pending and rejected in
the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
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Application 14/307 ,567
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
"enterprise content management (ECM), and more specifically, to document
processing in ECM." Spec. ,r 2. Claim 15 is exemplary:
15. A computer implemented method for content management system
compnsmg:
masking, by a processor, a first region of an image document based on
a preference data, wherein the preference data is stored in a document object
associated with the image document; and
enhancing, by the processor, a second region of the image document
based on the preference data, wherein the preference data comprises a filter,
the filter identifying a subset of pixels within the second region and
adjustment values indicating an amount by which to adjust a value of each
pixel among the subset of pixels, wherein enhancing the second region
comprises adjusting the value of each pixel among the subset of pixels by
the amount indicated by the adjustment values provided by the filter.
References and Rejections2
Claims 15 and 17-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cohen (US 2007/0263865 Al; published Nov. 15, 2007)
and Gupta (US 6,204,858 Bl; issued Mar. 20, 2001). Final Act. 6-10.
Claims 16, 22, 24, and 26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cohen, Gupta, and Athsani (US 2010/0082677 Al;
published Apr. 1, 2010). Final Act. 10-15.
2 Throughout this opinion, we refer to the (1) Final Rejection dated July 31,
2017 ("Final Act."); (2) Appeal Brief dated December 11, 2017 ("App.
Br."); (3) Examiner's Answer dated February 16, 2018 ("Ans."); and
( 4) Reply Brief dated April 11, 2018 ("Reply Br.").
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Application 14/307 ,567
Claims 23 and 25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cohen, Gupta, and Yamanaka (US 7,324,673 Bl; issued
Jan. 29, 2008). Final Act. 15-17.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. 3
Obviousness
On this record, the Examiner did not err in rejecting claim 1.
I
Appellants contend the Examiner improperly modified Cohen's
method to incorporate Gupta's feature to teach "wherein enhancing the
second region comprises adjusting the value of each pixel among the subset
of pixels by the amount indicated by the adjustment values provided by the
filter." See App. Br. 4--5; Reply Br. 2-3.
Appellants have not persuaded us of error. The U.S. Supreme Court
has held "[ t ]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Further,
"[i]fthe claim extends to what is obvious, it is invalid under§ 103" and "the
analysis need not seek out precise teachings directed to the specific subject
3 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.4I(b)(2).
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Application 14/307 ,567
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id. at 418-19.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
modified Cohen's method to incorporate Gupta's feature. See Ans. 8 ("One
of ordinary skill would ... have been motivated to combine the filter of
Gupta with Cohen because the filters of Gupta enhance images to which
they are applied ... , which is a function that Cohen is specifically
concerned with."). 4 Appellants do not critique that reasoning, and do
persuasively show why such reasoning is incorrect.
Appellants' arguments that "[i]n Cohen, the goal is not to distort an
image or enhance an image but, instead, to replace an image" and "[ t ]he
modification of Cohen with any reference to adjust pixel values by
corresponding adjustment values changes the principle of operation of
Cohen, which is image replacement" (App. Br. 5; see also Reply Br. 2) are
speculative and unsupported by evidence. In particular, Appellants cite
Cohen's paragraphs 54, 55, 57, and 71 (App. Br. 4--5), but those paragraphs
do not state replacing an image is Cohen's goal or principle of operation,
and only two of those paragraphs even mention replacing an image. See
Cohen ,r,r 54, 55, 57, and 71.
The Examiner's findings and conclusion are reasonable because the
skilled artisan would "be able to fit the teachings of multiple patents together
4 Appellants dispute the Examiner's determination that the combination is a
simple substitution. App. Br. 5; Reply Br. 2. Because that determination is
unnecessary for our analysis, Appellants have not shown reversible error.
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Application 14/307 ,567
like pieces of a puzzle" since the skilled artisan is "a person of ordinary
creativity, not an automaton." KSR, 550 U.S. at 420-21. Appellants do not
present adequate evidence that the resulting arrangements would have been
"uniquely challenging or difficult for one of ordinary skill in the art" or
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418-19).
Accordingly, we agree with the Examiner that applying Gupta's
technique in the Cohen system would have predictably used prior art
elements according to their established functions-an obvious improvement.
See KSR, 550 U.S. at 417.
II
Appellants contend the "the Examiner errs in asserting ... that
Cohen's field of endeavor is image enhancement." App. Br. 5.
Appellants have not persuaded us of error.
A reference qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the
claimed invention. . . . Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed ["Field Test"]
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
["Problem Test"].
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citations omitted)
(emphases added). "Whether a reference in the prior art is 'analogous' is a
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Application 14/307 ,567
fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citations
omitted).
To determine this invention's field of endeavor, we consider the
"explanations of the invention's subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations
omitted).
In response to Appellants' argument, the Examiner finds the
Specification does not explicitly define what constitutes "enhancement."
Ans. 4. The Examiner then cites excerpts of Cohen's Specification and
explains why Cohen is in the field of image enhancement. Ans. 4.
Appellants respond by contending "not only the Specification ( see
e.g., paragraph [0043]) but also the claims themselves define
[enhancement]." Reply Br. 2. We disagree with Appellants because neither
paragraph 43 nor claim 15 explicitly defines "enhancement." Paragraph 43
merely provides non-limiting, exemplary embodiments of achieving
enhancement. Spec. ,r 43. Claim 15 is similarly non-limiting and open-
ended because it recites "enhancing5 ... comprises .... " See Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1371 (2005) ("claim 1 uses the
'open' claim term[] 'comprising' ... in addition to other language, to
encompass subject matter beyond [the explicitly recited limitations]"). In
any event, because Appellants fail to persuasively respond to the Examiner's
explanation ( discussed above), they fail to show Examiner error. 6
5 Claim 15 recites "enhancing," but does not recite "enhancement."
6 As discussed above in Section I, Appellants' arguments that "[i]n Cohen,
the goal is not to distort an image or enhance an image but, instead, to
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III
Appellants contend "the computation of new pixel values in Gupta
fails to teach the claimed filter, as asserted" and "[ t ]he computation of new
pixel values in Gupta, even if the computation is deemed to represent an
adjustment of pixel values, is not stored in any document object associated
with any image document." App. Br. 5---6. Appellants argue:
Claim 15 recites that "the preference data is stored in a
document object associated with the image document ... the
preference data comprises a filter ... the filter identifying ...
adjustment values indicating an amount by which to adjust a
value of each pixel among the subset of pixels. " That is, a filter
stored with preference data in a document object associated
with the image document identifies adjustment values
according to Claim 15.
App. Br. 5---6.
Appellants' arguments are unpersuasive because they are not directed
to the Examiner's specific findings. The Examiner cites Cohen for teaching
the claimed "filter," "wherein the preference data is stored in a document
object associated with the image document," and "wherein the preference
data comprises a filter." See Final Act. 7. Because Appellants have not
persuasively shown the Examiner's findings based on Cohen are incorrect,
Appellants have not shown Examiner error.
IV
In the Reply Brief and for the first time, Appellants belatedly argue
Gupta does not teach the claimed "adjustment values." See Reply Br. 4.
replace an image" and "the principle of operation of Cohen ... is image
replacement" (App. Br. 5) are unpersuasive.
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Application 14/307 ,567
Appellants' argument is untimely, and Appellants have not demonstrated
any "good cause" for the belated presentation. See 37 C.F .R. § 41.41 (b )(2).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claim 15.
We also sustain the Examiner's rejection of corresponding dependent
claims 16-26, as Appellants do not advance separate substantive arguments
about those claims.
Double Patenting
Claims 15-24 are provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 21--40 of
Application No. 14/101,418. Final Act. 5. Because Application No.
14/101,418 was abandoned (Notice of Abandonment mailed February 22,
2018), we do not reach the merits of this rejection.
DECISION
We affirm the Examiner's decision rejecting claims 15-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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