Ex parte Fukui et al.

Board of Patent Appeals and Interferences

Jun 18, 1999

08061225 (B.P.A.I. Jun. 18, 1999)

Application for patent filed May 17, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAZUYUKI FUKUI, YOSHINOBU HADA, TAKANOBU YAMADA, and
HIROYUKI IDEYAMA
____________
Appeal No. 96-2281
Application No. 08/061,2251
____________
HEARD: June 8, 1999
____________
Before THOMAS, JERRY SMITH, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 9, which are all of the claims
pending in this application.
Appeal No. 96-2281
Application No. 08/061,225
2
The appellants' invention relates to an image forming
apparatus and method in which masking coefficients are
determined
according to the gradation curve that has been selected.
Claim 7 is illustrative of the claimed invention, and it reads
as follows:
7. A digital color image forming apparatus comprising:
a manual input panel for manually inputting a
desired gradation curve;
a masking processor which multiplies an image signal
with a masking coefficient determined according to the
gradation curve inputted with said manual input panel to send
the image signal for a print color;
a conversion circuit which converts the image signal
to print data in correspondence with light quantity data
according to the gradation curve inputted by said manual input
panel; and
a printer which prints the image by exposing a
photoconductor based on said print data.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Asada 5,018,008 May 21, 1991
Hirota 5,345,320 Sep. 06, 1994
(filed Nov. 26, 1991)
Claims 1 through 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Asada and Hirota.
Reference is made to the Final Rejection (Paper No. 10,
mailed November 17, 1994) and the Examiner's Answer (Paper No.
Appeal No. 96-2281
Application No. 08/061,225
3
17, mailed June 27, 1995) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
Brief (Paper No. 16, filed May 26, 1995) and Reply Brief
(Paper No. 19, filed August 28, 1995) for the appellants'
arguments thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by the appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 9.
Claim 1 requires "a color balance control means which
changes the masking coefficients . . . according to the
gradation curve changed by said manual input panel"
(underlining added for emphasis). Each of the other
independent claims (5, 7, 8, and 9) includes a similar
limitation wherein the masking coefficients are selected or
set according to or in correspondence with the gradation
curve.
Appeal No. 96-2281
Application No. 08/061,225
4
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the
legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is required to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17-18, 148 USPQ 459, 467 (1966), and to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge
generally available to one having ordinary skill in the art.
Uniroyal, Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
Appeal No. 96-2281
Application No. 08/061,225
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(Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a
prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner, in his rejection of claim 1, declares
(Final Rejection, page 2) that "Asada discloses a color
balance control which changes the masking coefficients
according to the gradation curve," but does not point to any
particular portion of Asada for support. For claim 5, the
examiner states (Final Rejection, page 5) that "Asada does not
discloses [sic] . . . selecting the masking coefficients."
How Asada can disclose changing the masking coefficients for
claim 1 without selecting what coefficients are to be used for
claim 5 is unclear to us. For claims 7 and 9, the examiner
merely asserts that Asada discloses
a memory which stores masking coefficients, but fails to
address whether the masking processor determines the
coefficients "according to the gradation curve." For claim 8
the examiner contends that Asada "discloses setting a color
masking coefficient according to the gradation characteristic
Appeal No. 96-2281
Application No. 08/061,225
6
set in the setting step of gradation characteristic," though
as stated above he believes that Asada does not disclose
selecting such coefficients.
Appellants assert (Brief, page 9) that
Asada does not describe how the basic masking
circuit operates or how the masking coefficients are
chosen. Asada does not disclose that the masking
coefficients used by the masking circuit are changed
at all and certainly does not disclose that the
masking coefficients are changed according to the
gradation curve. (emphasis in original)
We agree. The examiner refers to column 4, lines 50-65, of
Asada (Final Rejection, page 6) as support for his assertion
that Asada discloses setting the masking coefficients
according to the gradation characteristic. However, the
portion cited in Asada merely discloses that "gradation curves
are determined" first in the color correction circuit.
Nowhere does Asada describe selecting or changing the masking
coefficients. Consequently, we must agree with appellants
that Asada does not disclose changing the masking coefficients
according to the gradation curve, nor
any correspondence between the coefficients and the gradation
curve.
Appeal No. 96-2281
Application No. 08/061,225
7
The examiner responds to appellants' argument (Answer,
paragraph bridging pages 3 and 4) by reasoning that
Asada has all the functional blocks such as shadow
setting circuit 4, basic masking circuit 5, a color
correction circuit 6, a gradation setting circuit 7
and an output correction circuit 8. With a central
processing unit 11, it is obvious that any one of
these functional blocks can be changed when the
original color image is not mapped correctly to the
output image. (underlining added for emphasis)
However, the standard for obviousness is not what can be done,
but rather what would have been obvious in view of the
teachings and suggestions from the prior art. Even if it
would have been obvious to change the masking coefficients
based on the mere existence of a masking circuit, Asada still
does not disclose a correspondence between the masking
coefficients and the gradation curve, and the examiner has
provided no evidence that there is such a correspondence. The
examiner has made unsupported and contradictory assertions,
has ignored claim limitations for some claims, and has failed
to give any motivation for modifying the device of Asada (the
primary reference relied upon) to change or set the masking
coefficients according to the gradation curve. Clearly the
Appeal No. 96-2281
Application No. 08/061,225
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examiner has failed to present a prima facie case of
obviousness.
Hirota, the reference cited by the examiner for the use
of a manual input panel, does not overcome the shortcomings of
Asada. Hirota discusses masking coefficients in column 7,
line 59-column 8, line 11. However, Hirota discloses that the
"masking coefficient data C =A , B or C , C =Am, Bm or Cm and1 c c C 2
C =Ay, By or Cy [is] generated in accordance with the mode3
data inputted from the CPU," (col. 7, line 66 - col. 8, line
1) or rather according to whether the image is to be in full
color mode or mono color mode. Hirota does not disclose
changing the masking coefficients nor setting the masking
coefficients according to the gradation curve. Accordingly,
as neither Asada nor Hirota discloses any correspondence
between the masking coefficients and the gradation curve, we
find that the combination of the two references is
insufficient to establish a prima facie case of obviousness.
Consequently, we cannot sustain the rejection of claims 1
through 9 over Asada and Hirota.
Appeal No. 96-2281
Application No. 08/061,225
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CONCLUSION
The decision of the examiner rejecting claims 1 through 9
under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
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Application No. 08/061,225
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vsh
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