Ex Parte Fukasawa

Board of Patent Appeals and Interferences

Nov 23, 2009

10238127 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENJI FUKASAWA
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Appeal 2009-004770
Application 10/238,127
Technology Center 2600
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Decided: November 23, 2009
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
THOMAS S. HAHN, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 17. Claims 18 to 26 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART. We also enter new grounds of rejection
under 37 C.F.R. § 41.50(b).
The disclosed invention relates to an image data generating device and
image processing device for acquiring image data and working color space-
designating information associated with the image data (Spec. 13:2-16:2;
claims 1 and 9). Appellant also discloses and claims a computer-readable
medium encoded with a computer program that causes a computer to
execute program instructions for the image data acquisition and color-space
information acquisition (Figs. 4-10; Spec. 16:11-18, 24:6-11; claims 8 and
17).
Claim 9 is representative of the claimed invention, and reads as
follows:
9. An image processing device separated from an image data
generating device, the image processing device comprising:
an image data acquisition unit for acquiring image data; and
an image processing unit that uses working color space-designating
information, said information being set by the image data generating device,
and said information being associated with said image data and designating a
working color space in an image processing device, to perform processing of
said image data in a designated working color space.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ishii US 5,982,416 Nov. 9, 1999

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The Examiner rejected claims 1 to 3 and 5 to 17 under 35 U.S.C.
§ 102(b) based upon the teachings of Ishii.
The Examiner rejected claims 4 and 6 under 35 U.S.C. § 103(a) based
upon the teachings of Ishii.
With regard to both the anticipation and obviousness rejections, the
Examiner relies on Ishii’s Figures 1, 3, and 4 as teaching the recited
limitations of an image data generating device, image processing device,
image data acquisition unit, image processing unit, output unit, and
computer program for acquiring image data and working color space-
designating information (Ans. 3-4, 8-15).
With regard to the anticipation rejection of claim 1, the Examiner
relies on Ishii’s Figure 1 as teaching the recited limitation of an image data
generating device having a working color space-designating information
acquisition unit which is separate from an image processing device, and
interprets printer 22 or monitor 21 as the image processing device (Ans. 3-4,
10-13).

FINDINGS OF FACT (FF)
1. As indicated supra, Appellant describes (Fig. 1) and claims an image
data generating device 12 and image processing device 20/30 for
acquiring image data and working color space-designating
information associated with the image data (Spec. 13:2-16:2; claims 1
and 9). Appellant also discloses and claims a computer-readable
medium 200/220 encoded with a computer program that causes a
computer (PC) to execute program instructions for the image data and
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color-space information acquisition (Figs. 4-10; Spec. 16:11-18, 24:6-
11; claims 8 and 17).
2. Appellant discloses that graphics processing may be performed by the
image processing device, such as computer 20 and printer 30 (Spec.
14:7-11). Image and graphics processing include color conversion,
gamma correction, and image quality adjustment (see Figs. 5-10).
Such processing takes into account the “color reproduction
characteristics and graphic output characteristics” of output devices
(i.e., printers or monitors) to produce optimum output results (Spec.
15:19-22).
3. Ishii describes an image processing system (Fig. 1) for processing
image data by converting a color characteristic of an input image in
order to provide improved color appearance matching between input
image data and output devices (col. 1, ll. 17-18; Abstract). Ishii’s
system includes an image pickup unit 11 and scanner 12 (i.e., an
image data generating device), data reception unit 13 (i.e., image data
acquisition unit), and color matching system (CMS) unit 14 (i.e.,
working color space-designating information acquisition unit) that
acquires color space conversion data for designating a color space for
image processing in an output device (see Fig. 3, output device CMS
process unit 24; col. 1, ll. 5-62; col. 4, l. 31 to col. 5, l. 14; CMS unit
14 matches color by performing color space conversion using color
space characteristic data or “profile data”). Ishii also describes output
terminals 101 and 106 (i.e., output unit) for outputting acquired image
data associated with color space conversion data (col. 5, ll. 19-34).
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4. Ishii describes that the image pickup unit 11 may be a digital camera
capable of picking up either moving picture data or still picture data,
and is considered an “input device” (col. 3, ll. 46-62).
5. Ishii describes performing image processing in a host computer 10
(i.e., image processing device) which includes CPU 17 and CMS
process unit 14, and uses a program stored in ROM 18 (see col. 4, ll.
5-10).
6. Ishii describes monitor 21 and printer 22 as “output devices” (col. 3, l.
50; col. 3, l. 63 to col. 4, l. 10).
7. Ishii describes that the image pickup unit 11 can send profile data
(i.e., working color space-designating information) and image data to
the host computer 10 and CMS unit 14:
To solve this problem, in this embodiment, profile
data (i.e., color space characteristic data) is transmitted
from the image pickup unit to the host computer together
with image data. With this arrangement, CMS
processing can always be performed using profile data
suitable for image data.

Col. 5, ll. 10-14.

ISSUES

Appellant argues, inter alia, (App. Br. 5-8; Reply Br. 1-4) that the
applied reference to Ishii fails to teach or suggest an image generating
device, image processing device, output unit, and working color space as
recited in claim 1. Specifically, Appellant argues that there is no teaching in
Ishii that monitor 21 or printer 22 are separate image processing devices
(App. Br. 5-6; Reply Br. 1). Appellant also argues (App. Br. 7-8; Reply Br.
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2-4) that Ishii’s profile data fails to teach or suggest the working color space-
designating information of claims 1, 8, 9, and 17.
Based on Appellant’s arguments, the following issues are presented:
(i) Has Appellant shown that the Examiner erred in determining
that Ishii anticipates the computer readable media and image
processing device, which use working color space-
designation information to designate a working color space
for processing image data, as set forth in claims 8, 9, and 17?
(ii) Has Appellant shown that the Examiner erred in determining
that Ishii anticipates the image data generating device as set
forth in claim 1, and thereby erred in determining that Ishii
discloses or suggests the device as set forth in claims 4 and 6
which depend therefrom?

PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
Appellant has the burden, when on appeal to the Board, to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006). The Examiner bears the initial burden of
presenting a prima facie case of obviousness, and Appellant has the burden
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of presenting a rebuttal to the prima facie case. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Integrating two elements into one is merely a matter of engineering
choice and would be obvious to one of ordinary skill in the art. In re
Larson, 340 F.2d 965, 968 (CCPA 1965). The rearrangement of parts in a
device is obvious and unpatentable where shifting the positions of the parts
would not have modified the operation of the device. In re Kuhle, 526 F.2d
553, 555 (CCPA 1975); In re Japikse, 181 F.2d 1019, 1032 (CCPA 1950).

ANALYSIS
Claims 8 to 17
The anticipation rejection of claims 8 to 17 is sustained because Ishii
teaches the salient features of an image data generating device, image
processing device, image data acquisition unit, image processing unit, output
unit, and computer program for acquiring image data and working color
space-designating information, as set forth in these claims (see FF 3-7), and
for the reasons that follow. Atlas Powder v. IRECO, 190 F.3d at 1347;
Paulsen, 30 F.3d at 1478-79.
Claims 9 recites “[a]n image processing device separated from an
image data generating device,” the image processing device including “an
image data acquisition unit” and “an image processing unit” (claim 9
(emphasis added)). Claim 8 recites a computer program including program
instructions for generating and outputting image data associated with color
space information used “for image processing in a separated image
processing device” (claim 8 (emphasis added)), but does not recite the image
data generating device per se. In contrast to claim 8, claim 17 more broadly
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recites a computer program including program instructions for processing
image data using an image data generating device and an image processing
device, where the devices are not required to be separate from each other.
With regard to the anticipation rejection of claims 8 to 17, the
Examiner relies on Ishii’s Figure 1 as teaching the recited limitations of an
image processing device (host computer 10) and an image data generating
device (image pickup unit 11 or scanner 12), where the program to perform
color image processing using “color space characteristic data” in the CMS
process unit 14 is stored in a ROM 18 (Ans. 3-4). We agree with the
Examiner’s determination (Ans. 3-4, 11-15) that each and every element
recited in claims 8, 9, and 17 is found in the teachings of Ishii (FF 3-7).
We are not persuaded by Appellant’s arguments (App. Br. 7-8; Reply
Br. 2-4) that Ishii’s profile data is color space characteristic data having no
effect on color space designation, and cannot be equivalent to the recited
“working color space-designating information.” We find that both Ishii (FF
3) and Appellant (FF 2) perform image processing using color conversion.
Ishii’s profile data is used for color conversion and color matching in CMS
process unit 14, and therefore operates as working color space-designation
information. Appellant’s arguments (App. Br. 8; Reply Br. 3-4) that Ishii’s
profile data has no effect on the designation of independent color space or
device dependent color space, and that “the claimed working color space can
be independently designated apart from the input and output device” (Reply
Br. 4 (emphasis added)), are not persuasive inasmuch as these arguments are
not commensurate in scope with the language of claims 8, 9, and 17. The
phrases “independently” or “independent color space” do not appear in
claims 8, 9, and 17.
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In view of the foregoing, Appellant has not adequately demonstrated
that the Examiner erred in determining that Ishii anticipates the computer
readable media and image processing device which use working color space-
designation information to designate a working color space for processing
image data, as set forth in claims 8, 9, and 17. Appellant presents only
nominal arguments with respect to claims 10 to 16 which ultimately depend
from 9 (see App. Br. 9; Reply Br. 5). Appellant has not persuasively
rebutted the Examiner’s prima facie case with respect to claims 8 to 17
(Oetiker, 977 F.2d at 1445), and we will sustain the rejection of these claims.
Anticipation Rejection of Claims 1 to 3 and 5 to 7
Appellant’s argument (App. Br. 5-8; Reply Br. 1-4) that the applied
reference to Ishii fails to teach or suggest an image generating device which
is separate from an image processing device as recited in claim 1 is
persuasive. The Examiner (Ans. 3-4) is silent as to which element in Ishii
corresponds to the image generating device as set forth in claim 1. The
Examiner relies upon data reception unit 13 as the data acquisition unit
recited in claim 1 (Ans. 3), thus construing host computer 10 as the image
generating device. However, host computer 10 is also the image processing
device (FF 5), making the image generating unit and image processing
device integral, and not separate as required by the language of claim 1.
Appellant’s contention (App. Br. 5-6; Reply Br. 1) that there is no
teaching in Ishii that monitor 21 or printer 22 are separate image processing
devices is convincing. In fact, Ishii describes (i) monitor 21 and printer 22
as “output devices” (FF 6), (ii) image pickup unit 11 (or scanner 12) as an
“input device” (FF 4), and (iii) host computer 10, CPU 17, and CMS process
unit 14 as an image processor (FF 5). Ishii’s description of the functions of
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monitor 21 and printer 22 (col. 3, ll. 63-67) is silent as to any image
processing function.
Appellant has demonstrated that the Examiner erred in determining
that Ishii anticipates the image data generating device as set forth in claim 1.
The same holds true for claims 2, 3, and 5 to 7 which ultimately depend
from claim 1. We will not sustain the anticipation rejection of claims 1 to 3
and 5 to 7.
Obviousness Rejection of Claims 4 and 6
The obviousness rejection of claims 4 and 6 is not sustained because
(i) these claims ultimately depend from claim 1 discussed supra, and (ii) the
Examiner’s articulated reasoning concerning the teachings of Ishii with
respect to the image data generating device set forth in claim 1 does not
support a legal conclusion of obviousness (KSR Int’l v. Teleflex, Inc., 550
U.S. 398, 418 (2007)).
Summary
In summary, the anticipation rejection of claims 1 to 3 and 5 to 7 is
not sustained because Ishii does not teach an image data generating device
separate from an image processing device, as set forth in claim 1. The
obviousness rejection of claims 4 and 6 is not sustained because the
Examiner’s articulated reasoning concerning the teachings of Ishii does not
support a legal conclusion of obviousness. The anticipation rejection of
claims 8 to 17 is sustained because Ishii does teach the salient features of an
image data generating device, image processing device, image data
acquisition unit, image processing unit, output unit, and computer program
for acquiring image data and working color space-designating information,
as set forth in these claims (FF 3-7).
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CONCLUSIONS
Appellant has not adequately demonstrated that the Examiner erred in
determining that Ishii anticipates the computer readable media and image
processing device which use working color space-designation information to
designate a working color space for processing image data, as set forth in
claims 8, 9, and 17.
Appellant has demonstrated that the Examiner erred in determining
that Ishii anticipates the image data generating device as set forth in claim 1,
and thereby erred in determining that Ishii discloses or suggests the device
as set forth in claims 4 and 6 which depend therefrom.
We conclude that Appellant has adequately shown the Examiner erred
in rejecting claims 1 to 3 and 5 to 7 under 35 U.S.C. § 102(b), and in
rejecting claims 4 and 6 under 35 U.S.C. § 103(a). Appellant has not shown
the Examiner erred in rejecting claims 8 to 17 under 35 U.S.C. § 103(a).

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 102(b) for claim 1.
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ishii.
With regard to claim 1, Ishii teaches all of the recited limitations of an
image data generating device, including: (i) an image acquisition unit (data
reception unit 13); (ii) a working color space-designating information
acquisition unit (CMS processing unit 14); and (iii) an output unit (Figure 4,
terminals 101 and 106; col. 5, ll. 19-34) (FF 3). We are not persuaded by
Appellant’s contention (App. Br. 8; Reply Br. 4) that Ishii does not disclose
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an output unit at column 5, lines 21 to 24, because output terminals 101 and
106 serve to output acquired image data associated with the profile data (i.e.,
working color space-designating information) similar to Appellant’s output
connector cable CV (see Spec. 13:12-29).
Ishii discloses that monitor 21 and printer 22 are output devices (FF6),
while host computer 10 performs image processing (col. 3, l. 46 to col. 4, l.
67) (FF 5, 7). Ishii discloses that image pickup unit 11 may be a still digital
camera (FF 4), similar to Appellant’s digital still camera 12 (Spec. 14:7),
which Appellant identifies as an image generating device (see App. Br. 3).
Ishii does not disclose an image processing device being separate
from the CMS processing unit 14 (working color space-designating
information acquisition unit) and the image data generating device (such as a
digital camera). Thus, in Ishii the CMS processing unit 14 and host
computer 10 are integral, not separate.
However, the integration and/or rearrangement of parts is merely a
matter of engineering choice and would be obvious to one of ordinary skill
in the art; especially when shifting the positions of the parts would not have
modified the operation of the device. Larson, 340 F.2d at 968; Kuhle, 526
F.2d at 555; Japikse, 181 F.2d at 1032. The corollary of this principle, that
it would be obvious to separate as opposed to integrate, is also valid. In the
instant case, the location of the computer program and working color space-
designating information acquisition unit of the image data generating device
in relation to the image processing device would not alter the operation of
the overall system shown in Ishii (Figure 1).
We consider it an obvious expedient to the artisan to integrate or
dissociate circuitry, such as the acquisition and processing units, in an
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overall image processing system configuration (e.g., Ishii’s Figure 1
configuration). It would have been obvious to one of ordinary skill in the
art looking at the teachings and suggestions of Ishii to provide an image
processing system by locating the CMS processing unit 14 in the image data
generating device (i.e., digital camera) 11 or scanner 12, thus separate from
the image processing device 10. We conclude that one skilled in the art
would have recognized that moving circuitry to the input device would
simplify and reduce costs in the host computer 10 and image processing
and/or output devices.
Dependent Claims 2 to 7
The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have made a rejection above
under 37 C.F.R. § 41.50(b) for claim 1. However, we have not reviewed the
remaining claims which depend from claim 1 (claims 2 to 7) to the extent
necessary to determine whether these claims are unpatentable under
35 U.S.C. § 103(a). We leave it to the instant Examiner to determine the
appropriateness of any further rejections based thereon.

ORDER
The decision of the Examiner rejecting claims 1 to 7 is reversed. The
decision of the Examiner rejecting claims 8 to 17 is affirmed. Accordingly,
the decision of the Examiner is affirmed-in-part. We have also entered new
grounds of rejection under 37 C.F.R. § 41.50(b) for claim 1.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
[…] shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record. . . .

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-IN-PART; 37 C.F.R. § 41.50(b)

KIS

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