Ex parte HARA

Board of Patent Appeals and Interferences

Apr 12, 2001

08339731 (B.P.A.I. Apr. 12, 2001)

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written for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASANORI HARA
__________
Appeal No. 1998-3023
Application No. 08/339,731
__________
ON BRIEF
__________
Before HAIRSTON, HECKER, and BARRY, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 to 26, all of the claims pending in
the application.
BACKGROUND
The disclosed invention is directed to a fingerprint
image cutout processing device and a method for use with
tenprint cards that selects and inputs fingerprint images
on a tenprint card. The tenprint cards contain twenty
Appeal No. 1998-3023
Application No. 08/339,731
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fingerprints - ten rolled and ten plain fingerprints.
An operator inputs the entire tenprint card image,
temporarily stores the image and displays it. The
operator views the image and identifies cutout regions
containing individual fingerprint images and the location
of each fingerprint image within each cutout region. The
operator then has the option of modifying the cutout
information to select cutout regions other than those
previously selected or outputting the selected cutout
regions containing the fingerprint images.
Representative independent claim 1 is reproduced as
follows:
1. A fingerprint image cutout processing device for
a tenprint card comprising:
image input means for inputting, on a card-by-card
basis, image data provided on a tenprint card containing
rolled fingerprints and plain fingerprints of ten
fingers;
image storage means for storing said image data
input by said image input means;
cutout information input means for accepting input
of fingerprint cutout information for each of said ten
fingers, said cutout information input means displaying
said tenprint
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image data and ten cutout frames in order to specify a
cutout area of each fingerprint image to be superposed
with each other; and
cutout means for cutting, on a finger-by-finger
basis, fingerprint image data out of the tenprint image
data of the tenprint card stored in said image storage
means based on the tenprint cutout information input to
said cutout information input means.
The examiner relies on the following references:
Brooks 4,607,384 Aug.
19, 1986
Tanaka et al. (Tanaka) 4,694,354 Sep.
15, 1987
Pieper 4,721,628 Jan.
26, 1988
Sparrow 4,817,183 Mar.
28, 1989
Claims 1 to 4, 9 to 11, 14 to 17 and 22 to 24 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Sparrow, Tanaka, and Pieper.
Claims 5 to 8, 12, 13, 18 to 21, 25 and 26 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Sparrow, Tanaka, Pieper, and
Brooks.
Reference is made to the briefs (paper nos. 13 and
15) and the answer (paper no. 14) for the respective
positions of appellant and the examiner.
OPINION
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Application No. 08/339,731
4
According to the examiner (answer, page 6), “Sparrow
shows image input means for inputting, on a card-by-card
basis, image data provided on a tenprint card containing
fingerprints of ten fingers (note Sparrow col. 2, lines
1-5 and col. 3, line 56 to col. 4, line 15).” The
examiner readily admits that Sparrow does not disclose
the use of cutout information input means for accepting
input cutout information. The examiner attempts to
address Sparrow’s shortcomings by incorporating the
video-editing technology of Tanaka (answer, page 6). The
examiner contends that “Tanaka would have provided a
reliable method for selecting and cutting out each of the
fingerprint images by allowing the human operator to
select and cut out the images” (answer, page 7). The
appellant argues that neither Tanaka nor Sparrow provides
motivation to combine the two references and that the
examiner has employed impermissible hindsight (brief,
page 8). With respect to appellant’s hindsight argument,
“[a]ny judgment on obviousness is in a sense necessarily
a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was
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5
within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Did the
examiner use knowledge gleaned only from the applicant’s
disclosure? We are of the opinion that the examiner did
and, therefore, relied upon impermissible hindsight to
combine the references to form the obviousness
rejections. Tanaka is drawn to an apparatus that gives
trimming instructions to a developer of photographs
(column 1, lines 10 to 13). Tanaka is silent in regards
to editing fingerprint images on tenprint cards. The
examiner’s motive is understandable; the claimed
invention does utilize video to store, to display and to
edit the cutout regions of the fingerprint images (e.g.,
as in claim 1) but, without the benefit of the
appellant’s disclosed and claimed invention, there would
be no logical reason to combine the disparate
technologies of the applied references. Stated
differently, we do not agree with the examiner that
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Tanaka “logically would have commended itself to an
inventor’s attention in considering his problem” of how
to edit fingerprint images. Wang Lab., Inc. v. Toshiba
Corp., 993 F.2d 858, 864, 26 USPQ2d 1767, 1773 (Fed. Cir.
1993). Turning to the teachings of Pieper,
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we find that the tenprint card teachings of Pieper are
merely cumulative to those already found in Sparrow.
In summary, the obviousness rejection of claims 1 to
4, 9 to 11, 14 to 17 and 22 to 24 is reversed because the
examiner has failed to present a prima facie case of
obviousness via a convincing line of reasoning for
combining the applied references or by pointing to
something in the references that would have suggested the
proposed
combination. The obviousness rejection of claims 5 to 8,
12, 13, 18 to 21, 25 and 26 is reversed because the
fingerprint alignment teachings of Brooks do not cure the
noted shortcoming in the proposed combination of
references.
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DECISION
The decision of the examiner rejecting claims 1 to
26 under 35 U.S.C. § 103(a) is reversed.
REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
STUART N. HECKER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
KWH:hh
Appeal No. 1998-3023
Application No. 08/339,731
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