Ex Parte Gahang

Board of Patent Appeals and Interferences

Sep 24, 2002

08838791 (B.P.A.I. Sep. 24, 2002)

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not written for publication and is not binding precedent of the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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GOO-SOO GAHANG
__________
Appeal No. 2000-2057
Application 08/838,791
___________
ON BRIEF
___________
Before JERRY SMITH, FLEMING and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-10, which constitute
all the claims in the application.
The disclosed invention pertains to a method and
apparatus for reproducing images which have been generated by
scanning a document. More particularly, the invention performs
both shading compensation and half-tone processing of the scanned
images.
Appeal No. 2000-2057
Application 08/838,791
2
Representative claim 1 is reproduced as follows:
1. An image forming apparatus with an image sensor for
scanning a document to produce an electric signal representative
of an image from the document, comprising:
a converter for converting said electric signal to
produce image data with a predetermined number of bits;
a shading memory unit for storing said image data on a
pixel by pixel basis from a least significant address to a most
significant address scanned during a first mode operation with
said converter, and for storing shading factors each
corresponding to each pixel from said image data;
a controller for sequentially reading said image data
stored from the least significant address to the most significant
address of said shading memory unit during said first mode of
operation, calculating each shading factor for each pixel by
dividing a preset maximum brightness value by said image data
sequentially read from said shading memory unit, recording the
shading factors in said shading memory unit, and for outputting
the shading factors stored in said shading memory unit
corresponding to each pixel of said image data produced by said
converter during second mode of operation;
a shading compensation unit for multiplying each pixel of
said image data produced from said converter by a corresponding
one of said shading factors during said second mode of operation
to produce shading-compensated image data; and
a half-tone processing unit for producing a half-tone
image data from said shading-compensating image data produced
from said shading compensating unit.

The examiner relies on the following references:
Nosaki et al. (Nosaki) 5,099,341 Mar. 24, 1992
Ito 5,317,421 May 31, 1994
Augusti et al. (Augusti) EP 0 200 438 Nov. 05, 1986
Gahang GB 2 292 283 Feb. 14, 1996

Appeal No. 2000-2057
Application 08/838,791
3
The admitted prior art described in appellant’s specification.
Claims 1-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Ito in view of Nosaki and the
admitted prior art. Claims 1-10 also stand rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of Gahang
and Augusti.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
Appeal No. 2000-2057
Application 08/838,791
4
claims 1-10. Accordingly, we reverse.
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, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 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 Corp., 837 F.2d 1044,
1051, 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 Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (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
Appeal No. 2000-2057
Application 08/838,791
5
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1-10 based on
Ito, Nosaki and the admitted prior art. With respect to
independent claims 1, 5 and 8, the examiner finds that Ito
teaches the claimed invention except for storing the shading
factors as claimed, calculating shading factors and determining
shading compensation as claimed, and a half-tone processing unit
as claimed. The examiner finds that it would have been obvious
to the artisan to calculate shading factors in Ito in a manner as
taught by Nosaki. The examiner also finds that it would have
been obvious to the artisan to determine shading compensation and
Appeal No. 2000-2057
Application 08/838,791
6
perform half-tone processing in view of the admitted prior art
[answer, pages 3-6].
Appellant argues that the white shading corrected signal
of Nosaki does not correspond to the claimed preset maximum
brightness, and the white shading value for subscanning does not
correspond to the claimed image data sequentially read from said
shading memory unit as asserted by the examiner. Specifically,
appellant argues that the result of averaging in Nosaki does not
constitute a preset value as claimed. Appellants argue that the
features of the controller as recited in claim 1 are not obvious
in view of the proposed combination of Ito, Nosaki and the
admitted prior art. Appellant also argues that the examiner has
provided no support for his statement that combining the
teachings as proposed would increase the utility of the Ito-
Nosaki apparatus. Finally, appellant argues that none of the
applied prior art teaches producing a half-tone image from said
shading compensated image data produced from said shading
compensation unit [brief, pages 7-15].
The examiner responds that the admitted prior art clearly
establishes that prior art systems performed both half-tone
processing and shading compensation. The examiner also responds
that the average of 16 white pixels in Nosaki is ideally a preset
Appeal No. 2000-2057
Application 08/838,791
7
maximum value [answer, pages 12-13].
We will not sustain this rejection. Although we agree
with the examiner that the admitted prior art discloses that
half-tone processing and shading compensation were both performed
by prior art systems, the applied prior art does not establish
that it was obvious to produce half-tone image data from the
shading compensated image data as recited in independent claims
1, 5 and 8. The admitted prior art described in the
specification falls short of teaching performing the shading
compensation before the half-tone processing. We agree with
appellant that the operation of Nosaki does not equate to the
claimed calculating a shading factor for each pixel by dividing a
preset maximum brightness value by the image data sequentially
read from the shading memory unit. A calculated value, as used
by Nosaki, cannot be considered to be a preset value as claimed.
A key feature of appellant’s invention specifically eliminates
this calculating step [specification, page 3]. Despite the
similarities between the claimed invention and the teachings of
Ito, Nosaki and the admitted prior art, the collective teachings
of the applied prior art do not teach the invention as
specifically recited in independent claims 1, 5 and 8.
Appeal No. 2000-2057
Application 08/838,791
8
Since we have not sustained this rejection of independent
claims 1, 5 and 8, we also do not sustain this rejection of any
of the dependent claims in this application. Accordingly, the
rejection of claims 1-10 based on Ito, Nosaki and the admitted
prior art is not sustained.
We now consider the rejection of claims 1-10 based on
Gahang and Augusti. With respect to independent claims 1, 5 and
8, the examiner finds that Gahang teaches the claimed invention
except for the feature of calculating each shading factor in the
manner claimed. The examiner cites Augusti as teaching this
particular feature of the claimed invention. The examiner finds
that it would have been obvious to the artisan to calculate the
shading factors in Gahang in the manner taught by Augusti
[answer, pages 8-10].
Appellant argues that the portion of Augusti relied on by
the examiner is for half-tone processing and not for shading
compensation. Appellant also argues that the prestored values in
Augusti are in no way similar to the shading correction factors
calculated as recited in the claimed invention. Specifically,
appellant argues that there is no preset maximum brightness value
in Augusti. Appellant also argues that the half-tone processor
of Augusti is not equivalent to the half-tone processor of
Appeal No. 2000-2057
Application 08/838,791
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Gahang. Finally, appellant argues that there is no teaching of
the claimed storing step during a first mode of operation in
Gahang [brief, pages 20-23].
The examiner responds that the portion of Augusti relied
on in the rejection relates to shading correction and not to
half-tone processing [answer, pages 13-14].
We will not sustain this rejection of claims 1-10 because
we agree with appellant that the values stored in advance in
EPROM 32 of Augusti do not constitute a preset maximum brightness
value as claimed. Augusti describes these preset values as
resulting from a ratio between the direct reading signal of a
pixel and that recorded in the RAM 31 in the preliminary reading
of the corresponding pixel of the sample strip 29 [page 5]. Both
of these values which make up the ratio are measured values and
not maximum values preset by the user. Although these stored
values may have a theoretical maximum, the system of Augusti does
not preset this theoretical maximum in the memory. As noted
above, one of the key features of appellant’s invention is to
avoid the calculation of shading factors based on measured
parameters.
Appeal No. 2000-2057
Application 08/838,791
10
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-10 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 2000-2057
Application 08/838,791
11
ROBERT E. BUSHNELL, ATTORNEY-AT-LAW
1522 K STREET, N.W.
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WASHINGTON, D.C. 20005-1202
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