Ex Parte Curry

Board of Patent Appeals and Interferences

Sep 9, 2005

10025671 (B.P.A.I. Sep. 9, 2005)

1 Application for patent filed December 26, 2001, which according to
Appellant, is a continuation of Application No. 09/219,850, filed December 23,
1998, now U.S. Patent No. 6,771,827.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOUGLAS N. CURRY
____________
Appeal No. 2005-0444
Application No. 10/025,6711
____________
ON BRIEF
____________
Before HAIRSTON, LEVY and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-6, 8, 9 and 13-18. The Examiner has
previously indicated the allowability of claims 7 and 10-12.
We reverse.
BACKGROUND
Appellant’s invention is generally directed to compression
and decompression of image data and, in particular, to methods
that compress and decompress image areas containing edges of
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marks to be rendered in image data based on the direction of the
edges of the mark (specification, page 1). Thus, by
differentiating between continuous tone data and non-continuous
tone data the compression and decompression can be tailored to
the information within the data necessary for printing the
particular type of data (specification, page 9).
Representative independent claims 1, 13 and 15 are
reproduced below:
1. A method for decompressing image data, that is
compressed by discarding pixels along a direction parallel to an
edge while maintaining pixels along a direction perpendicular to
the edge, representing a plurality of pixels and represented by a
plurality of bitwords, each pixel corresponding to a separate
bitword, the process comprising:
decompressing data from a compressed-data-bitword to
provide data indicative of a plurality of explicit pixels;
and
synthesizing data from the data indicative of the
plurality of explicit pixels to provide data corresponding
to at least one synthesized pixel, the at least one
synthesized pixel representing at least one discarded pixel.
13. A method for decompressing compressed image data that
is compressed by discarding pixels along a direction parallel to
an edge while maintaining pixels along a direction perpendicular
to the edge, the method comprising:
decompressing a single byte of compressed data to
produce four pixels of non-continuous tone data.
15. A decompression system for decompressing image data,
the image data containing non-continuous tone data and continuous
tone data, the non-continuous tone data compressed by discarding
pixels along a direction parallel to an edge while maintaining
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pixels along a direction perpendicular to the edge, the system
comprising:
a decompressor that decompresses a data bitword-map to
provide high spatial resolution data containing non-
continuous tone data using extra resolution in a direction
substantially perpendicular to an edge of marks, and that
decompresses the data bitword-map to provide low spatial
resolution continuous tone data.
The Examiner relies on the following references in rejecting
the claims:
Hyatt 5,487,172 Jan. 23, 1996
Honma et al. (Honma) 5,774,634 Jun. 30, 1998
Shannon et al. (Shannon) 6,026,196 Feb. 15, 2000
(filed Oct. 15, 1997)
Hsu et al. (Hsu) 6,389,176 May 14, 2002
(filed Sep. 25, 1998)
Appellant’s admitted prior art (APA), “Description of
Related Art” in Appellant’s specification, page 1, lines 14-25.
Claims 1-6, 8 and 9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Honma, Hsu and Hyatt.
Claims 13, 14 and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shannon and Hyatt.
Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Honma, APA and Hyatt.
We make reference to the answer (Paper No. 25, mailed May 5
2004) and the final rejection (Paper No. 22, mailed September 24,
2003) for the Examiner’s reasoning and to the appeal brief (Paper
No. 24, filed February 18, 2004) and the reply brief (Paper No.
26, filed June 15, 2004) for Appellant’s arguments thereagainst.
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OPINION
At the outset we note Appellant’s intention that the claims
corresponding to each ground of rejection stand or fall together
as one group (brief, page 6). In accordance with this grouping,
and pursuant to 37 CFR § 41.37, we will limit our review of the
appeal to claims 1, 13 and 15 as the representative claims of
their corresponding groups.
With respect to claim 1, The Examiner relies on Figure 4 of
Honma for teaching the step of decompressing data from the
compressed bitword and on Hsu for implicitly disclosing
synthesized pixels for edge enhancement (final, page 3). The
Examiner further relies on Hyatt and takes the position that the
reference teaches removal of pixels along a horizontal direction
while selecting pixels along the vertical direction (final, page
4).
Appellant argues that neither Hsu nor Hyatt teaches or
suggests the edge enhancement and discarding of pixels in the
direction parallel to the edge while those along a direction
perpendicular to the edge are maintained, as recited in claim 1
(brief, page 12). In particular, Appellant asserts that Hsu uses
dilation and erosion operations to add or remove pixels from the
boundaries in the original image instead of discarding pixels for
decompressing image data (id.). Appellant further asserts that
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Hyatt merely fills pixels between a prior edge and the next edge
of a moving surface based on pixel fill information and color
information and discloses nothing related to the claimed
compressed image data (brief, pages 12 & 13).
In response to Appellant’s arguments, the Examiner asserts
that the step of discarding pixels in the preamble of the claim,
which is taught by removing pixels during the pre-process of Hsu,
is not linked to the step of “synthesizing” recited in the body
of the claim which is taught by Hyatt (answer, page 4).
Furthermore, the Examiner refers to the Hyatt’s selection of
“pixels along the vertical direction perpendicular to the edge
(Hyatt, col. 206, lines 26-29) as the claimed maintaining pixels
in a direction perpendicular to the edge (answer, page 4).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). The Examiner must not only identify the
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elements in the prior art, but also show “some objective teaching
in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead the individual to combine
the relevant teachings of the references.” In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
A review of Hsu and Hyatt confirms that neither reference
teaches compressing image data by discarding pixels along a
direction parallel to an edge while maintaining pixels along a
direction perpendicular to the edge, as recited in claim 1. Both
discarding and maintaining pixels are for compressing image data
which is also recited in the body of the claim as being used for
the step of decompressing. Therefore, we disagree with the
Examiner’s assertion that the treatment of the pixels in a
parallel direction compared to a perpendicular direction with
respect to the edge is not linked to the step of synthesizing.
Where a patentee uses the claim preamble to recite structural
limitations of his claimed invention, the PTO and courts give
effect to that usage. See Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816,
1820 (Fed. Cir. 1995); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
1989). Here, although discarding and maintaining the pixels
appear only in the preamble of the claim, they are affirmative
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structural/process limitations since the form of the claim and
the language in the specification limit the claimed invention to
that kind of compressed image data.
As pointed out by Appellant (brief, page 12), Hsu provides
for the operations of dilation and erosion which add or remove
pixels to the boundary of the edges (col. 5, lines 19-30).
Nowhere in Hsu discarding or maintaining pixels based on their
direction with respect to the edge data is discussed. Similarly,
Hyatt, in the sections relied on by the Examiner, merely
describes a fill process based on generating the next and the
previous pixels for a moving edge (col. 205, lines 43-45).
Although Hyatt discusses the effect of the moving edge on
adjacent pixels and how the more removed from the edge pixel the
adjacent pixels are, the less the effect of the slope of the edge
becomes (col. 206, lines 5-19), there is no teaching related to
the claimed discarding or maintaining of pixels of an image data.
As discussed above, Hsu and Hyatt merely provide for
compressed and reduced pixel images either for image resizing or
a fill process, respectively, which do not differentiate between
the pixels along the edge or perpendicular to an edge. In
concluding that Hsu teaches the removing of the pixels while
Hyatt “selects pixels along the vertical direction perpendicular
to the edge,” the Examiner attempts to forge a combination of a
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image processing technique that lacks all the elements of the
claimed method of decompressing image data. Thus, assuming,
arguendo, that it would have been obvious to combine Hsu and
Hyatt with Honma, as held by the Examiner, the combination would
still fall short of teaching or suggesting the claimed image data
that is compressed by discarding or maintaining pixels.
Therefore, as the Examiner has failed to set forth a prima facie
case of obviousness, we cannot sustain the 35 U.S.C. § 103
rejection of independent claim 1 and claims 2-6, 8 and 9
dependent therefrom.
Turning now to the 35 U.S.C. § 103 rejection of claims 15-17
over Honma, APA and Hyatt, Appellant argues that the fill process
of Hyatt adds nothing to Honma to overcome the discussed
deficiencies related to maintaining or discarding pixels along or
perpendicular to an edge (brief, pages 13 & 14). Additionally,
Appellant points out that APA, although defining continuous and
non-continuous tone art information, does not describe the
recited manner of decompression (brief, page 14; reply brief,
page 3). The Examiner’s response focuses on the previously
discussed teachings of Honma and Hyatt and how APA discloses high
spatial resolution data containing non-continuous tone data using
extra resolution across the edges (answer, page 5).
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We find ourselves convinced by Appellant’s argument that APA
lacks the specific teachings related to compressing image data by
discarding and maintaining pixels. In fact, APA merely describes
the nature of processing continuous and non-continuous tone data
which necessitates using a higher spatial resolution for
rendering continuous tone data compared with non-continuous tone
data (specification, page 1). Claim 15, on the other hand,
requires that the continuous and non-continuous tone data be
compressed by maintaining pixels along a direction perpendicular
to an edge which, using extra resolution, is decompressed to
provide a high spatial resolution. Therefore, as argued by
Appellant, APA does not disclose the manner by which such
resolution may be achieved and therefore, cannot cure the
deficiencies of Honma and Hyatt. Accordingly, the 35 U.S.C. §
103 rejection of claims 15-17 over Honma, APA and Hyatt cannot be
sustained.
Finally, with respect to the 35 U.S.C. § 103 rejection of
claims 13, 14 and 18 over Shannon and Hyatt, Appellant argues
that compressing the image by discarding and maintaining pixels
in directions parallel and perpendicular to the edge is not
disclosed in any of the references (brief, page 15). Appellant
further asserts that Shannon describes dithering of a color image
to convert the color image into monochrome image data (brief,
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page 16) and has nothing to do with compressing and decompressing
of pixels of non-continuous tone data (reply brief, page 5). The
Examiner characterizes the decompressing process of Shannon that
extracts the 0 to 3 pixels from the Sync Byte (Shannon, col. 10,
lines 43-46) as the claimed decompressed data “to produce four
pixels of non-continuous tone data” (answer, page 6).
We agree with Appellant that the process disclosed by
Shannon does not include tone information in compressing and
decompressing processes. Furthermore, as discussed above, Hyatt’s
process of filling pixel information lacks the specific claimed
image data that is compressed by discarding pixels along a
direction parallel to an edge while maintaining pixels along a
direction perpendicular to the edge. As the combination of prior
art provides no teaching or suggestion with respect to the
claimed features discussed above, we find that the Examiner has
failed to establish a prima facie case of obviousness with
respect to claims 13, 14 and 18 and therefore, their 35 U.S.C. §
103 rejection over Shannon and Hyatt cannot be sustained.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-6, 8, 9 and 13-18 under 35 U.S.C. § 103 is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
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