Ex Parte Goldman

Board of Patent Appeals and Interferences

Feb 26, 2004

09134981 (B.P.A.I. Feb. 26, 2004)

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for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. GOLDMAN
____________
Appeal No. 2002-1657
Application No. 09/134,981
____________
ON BRIEF
____________
Before BARRETT, RUGGIERO, and DIXON, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the Examiner’s rejection
of claims 1-9 and 10-20, which are all of the claims pending in the
present application. Claim 10 has been canceled.
The claimed invention relates to a system and method for
automatically generating embroidery designs from scanned color
images. An image data file produced from the scanned images is
provided to an embroidery generating program which executes a
series of sub-routines to produce an embroidery data output file
Appeal No. 2002-1657
Application No. 09/134,981
1 The Appeal Brief was filed August 20, 2001 (Paper No. 10). In
response to the Examiner’s Answer dated October 2, 2001 (Paper No. 11), a
Reply Brief was filed January 29, 2002 (Paper No. 12), which was acknowledged
and entered by the Examiner as indicated in the communication dated February
19, 2002 (Paper No. 13).
2
which is fed to a sewing device for stitching the embroidery
design.
Claim 1 is illustrative of the invention and reads as follows:
1. A system for automatically producing an embroidery
design, the system comprising:
a) means for inputting an embroidery pattern into an image
data file, the image data file comprising a plurality of pixels,
each pixel comprising a bitmap representing a color;
b) processing means operatively connected to said inputting
means for creating skeletal and edge contour data and storing said
image data file; and

c) an embroidery data generating mechanism operatively
connected to said processing means for labeling and interrelating
said skeletal and edge contour data and generating a complex
embroidery pattern directly from a scanned, color image.
The Examiner relies on the following prior art:
Futamura 5,740,056 Apr. 14, 1998

Claims 1-9 and 11-20, all of the appealed claims, stand
rejected 35 U.S.C. § 102(e) as being anticipated by Futamura.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
Appeal No. 2002-1657
Application No. 09/134,981
3
OPINION
We have carefully considered the subject matter on appeal, the
rejection advanced by the Examiner and the evidence of anticipation
relied upon by the Examiner as support for the rejection. We have,
likewise, reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Briefs along with
the Examiner’s rationale in support of the rejection and arguments
in rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the Futamura reference fully meets the invention as set forth
in claims 1, 3-9 and 11-19. We reach the opposite conclusion with
respect to claims 2 and 20. Accordingly, we affirm-in-part.
We note that anticipation is established only when a single
prior art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well as
disclosing structure which is capable of performing the recited
functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
Appeal No. 2002-1657
Application No. 09/134,981
4
With respect to appealed independent claim 1, the Examiner
indicates how the various limitations are read on the disclosure of
Futamura. In particular, the Examiner (Answer, pages 3 and 4)
points to the illustrations at Figures 4-6 of Futamura along with
the accompanying description beginning at column 5, line 13.
In our view, the Examiner’s analysis is sufficiently
reasonable that we find that the Examiner has as least satisfied
the burden of presenting a prima facie case of anticipation. The
burden is, therefore, upon Appellant to come forward with evidence
and/or arguments which persuasively rebut the Examiner’s prima
facie case. 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 Briefs have not been
considered [see 37 CFR § 1.192(a)].
In response to the Examiner’s anticipation rejection,
Appellant has offered several arguments in support of his
contention that Futamura fails to teach or suggest numerous
features of appealed claim 1. Initially, Appellant contends
(Brief, page 10; Reply Brief, page 2) that, in contrast to the
claimed invention which is directed to color processing, Futamura
is limited to monochrome, i.e., black and white, processing. We do
not find this argument persuasive so as to convince us of any error
Appeal No. 2002-1657
Application No. 09/134,981
2 Enclosed with this decision is a copy of pages 491-494 from Digital
Image Processing by Rafael Gonzalez and Richard E. Woods (Addison-Wesley
Publishing Company, 1992) which describes an example of a thinning or
“skeletonizing” algorithm.
5
in the Examiner’s position (Answer, page 6) that the black and
white images in Futamura are color types, at least in the manner
broadly claimed by Appellant. We would point out that, although
Appellant emphasizes in the arguments (Brief, at 10) that “color”
refers to colors of a spectrum, there is no such language in the
appealed claims.
We find to be equally without merit Appellant’s further
assertion (Brief, page 11) that Futamura lacks a disclosure of any
interrelating of skeletal and edge contour data as recited in claim
1. In Appellant’s view (Reply Brief, pages 2 and 3), no such
interrelating can take place in Futamura since there is no
depiction of skeletal data of any kind.
Our review of the description of the Figures 5 and 6
illustrations in Futamura referenced by the Examiner reveals,
however, that the inner and outer edge contours (Figure 5) are
processed by removing pixels between the inner and outer
peripheries to produce a thinned or “skeletonized” contour (Figure
6).2 We fail to see why this inner and outer periphery data
processing to produce a resulting skeletal image would not
Appeal No. 2002-1657
Application No. 09/134,981
6
correspond to the claimed interrelating of skeletal and edge
contour data.
In view of the above discussion, since the Examiner’s prima
facie case of anticipation has not been overcome by any convincing
arguments from Appellant, the Examiner’s 35 U.S.C. § 102(b)
rejection of claim 1 based on Futamura, is sustained.
For at least the above reasons, we also sustain the Examiner’s
35 U.S.C. § 102(e) rejection of independent claim 12. As
previously discussed, Futamura processes edge contour data to
produce skeletal data by selectively removing pixels between the
outer and inner edges. In our view, Futamura provides a clear
teaching of utilizing this pixel deletion process to classify
objects according to thickness. For example, Futamura discloses at
column 6, lines 54-56 that “[w]hen only a small number of pixel-
deletion processes N were performed, this indicates that the
original line corresponding to the value N had a narrow width.”
Turning to a consideration of dependent claims 3 and 18,
argued together by Appellant (Brief, page 13), we sustain the
Examiner’s anticipation rejection of these claims as well.
Appellant’s arguments notwithstanding, we reiterate our previous
finding of clear teaching in Futamura of line fitting using both
edge and skeletal contour data. Similarly, we sustain the
Appeal No. 2002-1657
Application No. 09/134,981
2 Although Appellant mentions (Brief, page 14) that dependent claim 8
recites the interpretation of regular and singular regions, we find no such
recitation since the claim language requires only “ . . . evaluating a
plurality of singular regions.”
7
35 U.S.C. § 102(e) rejection of dependent claims 4, 5, 13, and 14,
grouped together by Appellant’s arguments (Brief, page 13), since,
contrary to Appellant’s contention, we find a clear suggestion in
Futamura of stitch angle determination at column 6, line 41 through
column 7, line 16 as pointed out by the Examiner (Answer, page 5).
We also sustain the Examiner’s anticipation rejection of
dependent claims 6-9, 11, 15-17, and 19 based on Futamura.
With respect to claims 6-9, the extent of Appellant’s
arguments (Brief, pages 13 and 14) is to repeat the language of the
claims with a general allegation that the references do not teach
or suggest the claimed limitations.2 Simply pointing out what a
claim requires with no attempt to point out how the claims
patentably distinguish over the prior art does not comply with 37
CFR § 1.192(c)(8) and does not amount to a separate argument for
patentability. In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525,1528 (Fed. Cir. 1987). Further, our review of the Examiner’s
position finds no error in the Examiner’s analysis (Answer, pages 5
and 6) which identifies corresponding structure in the disclosure
of Futamura.
Appeal No. 2002-1657
Application No. 09/134,981
3 Although Appellant (Brief, page 2) states that dependent claims 15 and
19 have been indicated to be allowable, we find nothing in the record that
indicates this is the case as pointed out by the Examiner (Answer, pages 2 and
3).
8
With respect to dependent claim 11, the Examiner’s rejection
is sustainable since, as discussed supra, we find Appellant’s
argument with regard to the alleged lack of color processing in
Futamura to be unpersuasive. Contrary to Appellant’s contention,
there is no continuous spectrum color selection requirement in
claim 11, but, rather, merely a claimed “uniform” color which, in
our view, does not distinguish over Futamura. Also, since
Appellant has provided no separate arguments for patentability with
respect to dependent claims 15-17 and 19, these claims fall with
parent independent claims 1 and 12.3 Note In re King, 801 F.2d
1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(e) rejection of claims 2 and 20, we note that, while we found
Appellant’s arguments to be unpersuasive with respect to the
rejection of claims 1, 3-9, and 11-19 previously discussed, we
reach the opposite conclusion with respect to claims 2 and 20.
Each of these claims requires the location and interpretation of a
“ . . . set of regular and singular regions” of embroidery data
Appeal No. 2002-1657
Application No. 09/134,981
9
image files. Although the Examiner directs attention (Answer, page
7) to column 8, lines 42-67 of Futamura, we find nothing in this
portion, or elsewhere in Futamura, which satisfies the language of
claims 2 and 20. We are in agreement with Appellant (Reply Brief,
page 4) that the Examiner has never shown or explained how the
“region labelling” processes mentioned in Futamura (column 8, lines
44-45) relate to the claimed interpreting of regular and singular
regions. We do make the observation that independent claim 20 sets
forth a very broad recitation of Appellant’s invention since, for
example, the claimed optimum sew order is not recited as being
dependent on or responsive to the generated output image file.
Nevertheless, we find no support in the disclosure of Futamura that
would support the Examiner’s conclusion of anticipation based on
Futamura.
In summary, with respect to the Examiner’s 35 U.S.C. § 102(e)
rejection of appealed claims 1-9 and 11-20 based on Futamura, we
have sustained the rejection of claims 1, 3-9, and 11-19, but have
not sustained the rejection of claims 2 and 20. Therefore, the
Examiner’s decision rejecting claims 1-9 and 11-20 is affirmed-in-
part.
Appeal No. 2002-1657
Application No. 09/134,981
10
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JFR/dal
Appeal No. 2002-1657
Application No. 09/134,981
11
JAMES F. GOEDKEN
GROSSMAN & FLIGHT, LLC
20 NORTH WACKER DRIVE
SUITE 4220
CHICAGO, IL 60606