Ex parte Inoue

Board of Patent Appeals and Interferences

Oct 28, 1999

08162333 (B.P.A.I. Oct. 28, 1999)

Application for patent filed December 7, 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journal and (2) is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKIRA INOUE
____________
Appeal No. 1997-0016
Application No. 08/162,3331
____________
HEARD: October 20, 1999
____________
Before THOMAS, RUGGIERO and HECKER, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 11, 13-16, and 18-22, all of the claims pending in the
present application. Claims 1-10, 12, 17, and 23-25 have been
canceled. An amendment after final rejection was filed
October 26, 1995 and was entered by the Examiner.
Appeal No. 1007-0016
Application No. 08/162,333
2
The claimed invention relates to the sharpening of an
input image in which a high frequency component of an edge
region portion of the input image is extracted and integrated
to produce a sharpness value. More particularly, Appellant
indicates at pages 8-17 of the specification that a high
frequency emphasis coefficient is calculated from this
sharpness value and is further manipulated and added to the
input image to produce a sharpened signal.
Claim 11 is illustrative of the invention and reads as
follows:
11. An apparatus for producing a sharpened image from an
input image, comprising:
edge extraction means for receiving the input image and
extracting a portion of the input image at which the
brightness of the input image exhibits a great variation and
outputting the extracted portion as an edge region;
high frequency filter means for receiving the edge region
from the edge extraction means and extracting a high frequency
component of the input image from the edge region;
integration means for receiving the extracted high
frequency component and integrating the extracted high
frequency component to output a sharpness value;
parameter calculation means for receiving the sharpness
value from the integration means, calculating a high frequency
emphasis coefficient from the sharpness value and outputting
the high frequency emphasis coefficient as a sharpening
parameter; and
Appeal No. 1007-0016
Application No. 08/162,333
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emphasis means for receiving the sharpening parameter
from the parameter calculation means and sharpening the input
image based on the sharpening parameter to produce the
sharpened image, said emphasis means including multiplication
means for multiplying an output of said high frequency filter
means by the high frequency emphasis coefficient, and addition
means for adding the input image to an output of said
multiplication means.
The Examiner relies on the following prior art:
Yamada et al. (Yamada) 5,212,516 May 18,
1993
Takemoto et al. (Takemoto) 0,449,259 Oct. 02,
1991
(European)
The rejection of the appealed claims are set forth by the
Examiner as follows:
1. Claims 11, 13-16, and 18-22 stand finally rejected
under 35 U.S.C. § 112, first paragraph, as being based on an
inadequate disclosure.
2. Claims 11, 13-16, and 18-22 stand finally rejected
under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the invention.
3. Claims 11, 13-16, and 18-22 stand finally rejected
under 35 U.S.C. § 103 as being unpatentable over Takemoto in
view of Yamada.
Appeal No. 1007-0016
Application No. 08/162,333
The Appeal Brief was filed January 26, 1996. In2
response to the Examiner’s Answer dated April 16, 1996, a
Reply Brief was filed June 17, 1996 which was entered by the
Examiner without further comment on July 9, 1996.
4
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections 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, Appellant’s arguments set forth in the
Briefs 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 disclosure in this application describes the
claimed invention in a manner which complies with the
requirements of
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Application No. 08/162,333
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35 U.S.C. § 112. We are also of the view that the claims
particularly point out the invention in a manner which
complies with 35 U.S.C. § 112, second paragraph. In addition,
it is our opinion 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 claims 11, 13-16, and 18-22. Accordingly, we
reverse.
The rejection of claims 11, 13-16, and 18-22
under the first paragraph of 35 U.S.C. § 112.
We note that the Examiner, instead of relying on the
written description” or “enablement” language of the statute,
has used the terminology “lack of support” in the statement of
the rejection. Our reviewing court has made it clear that
written description and enablement are separate requirements
under the first paragraph of 35 U.S.C. § 112. Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ 2d 1111, 1114 (Fed.
Cir. 1991). The terminology “lack of support” has also been
held to imply a reliance on the written description
Appeal No. 1007-0016
Application No. 08/162,333
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requirement of the statute. In re Higbee and Jasper, 527 F.2d
1405, 188 USPQ 488, 489 (CCPA 1976).
In view of the factual situation presented to us in this
instance we will interpret the Examiner’s basis for the 35
U.S.C. § 112, first paragraph, rejection as reliance on the
“written description” portion of the statute. “The function
of the description requirement [of the first paragraph of 35
U.S.C.
§ 112] is to ensure that the inventor has possession, as of
the filing date of the application relied on, of the specific
subject matter later claimed by him.” In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). "It is not
necessary that the application describe the claim limitations
exactly, . . . but only so clearly that persons of ordinary
skill in the art will recognize from the disclosure that
appellants invented processes including those limitations."
Wertheim, 541 F.2d at 262, 191 USPQ at 96 citing In re Smythe,
480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973).
Furthermore, the Federal Circuit points out that "[i]t is not
necessary that the claimed subject matter be described
identically, but the disclosure originally filed must convey
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Application No. 08/162,333
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to those skilled in the art that applicant had invented the
subject matter later claimed." In re Wilder,
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert.
denied, 469 U.S. 1209 (1985), citing In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In the present instance, we note that the relevant
language of independent claim 11 recites:
... high frequency filter means for
receiving the edge region from the edge
extraction means and extracting a high
frequency component of the input image
from the edge region;...
We agree with the Examiner (Answer, page 10) that none of
Appellant’s drawing figures unambiguously illustrate that the
high frequency filter receives an input from the edge
extraction means as claimed. Notwithstanding this fact, our
review of Appellant’s entire disclosure reveals that the
description at pages 20 and 21 of the specification clearly
indicates that high frequency components are extracted from
edge point regions as a result of the application of edge
region signals to a high frequency filter. In our view,
Appellant is correct in the assertion that the originally
filed specification provides written description support for
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Application No. 08/162,333
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the invention as claimed and, accordingly, we do not sustain
the Examiner’s rejection of claims 11, 13-16, and 18-22 under
the first paragraph of 35 U.S.C.
§ 112.
The rejection of claims 11, 13-16, and 18-22
as being indefinite under the second paragraph
of 35 U.S.C. § 112.
The Examiner’s basis for this rejection apparently stems
from the same alleged deficiency that gave root to the 35
U.S.C. § 112, first paragraph, rejection discussed above. In
the Examiner’s view, the lack of support for claim language
which sets forth the receipt of edge region signals by a high
frequency filter raises a question as to the clarity of the
claims.
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
Appeal No. 1007-0016
Application No. 08/162,333
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specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
After reviewing the arguments of record, we are in
agreement with Appellant (Answer, page 6) that no ambiguity or
lack of clarity exists in the claim language, i.e., the
receipt of edge region signals by the high frequency filter is
set forth with the required specificity. It is our view that
the skilled artisan, having considered the specification in
its entirety, would have no difficulty ascertaining the scope
of the invention recited in claims 11, 13-16, and 18-22.
Therefore, the rejection of claims 11, 13-16, and 18-22 under
the second paragraph of 35 U.S.C.
§ 112 is not sustained.
The obviousness rejection of claims 11, 13-16
and 18-22 as being unpatentable over Takemoto
in view of Yamada.
As the basis for the obviousness rejection, the Examiner
proposes to modify the image sharpening system of Takemoto by
relying on Yamada to supply the missing teaching of an
integration means for integrating the extracted high frequency
Appeal No. 1007-0016
Application No. 08/162,333
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components of the edge region of the input image. In the
Examiner’s view, the skilled artisan would find it obvious to
integrate the high frequency components of Takemoto for
normalization purposes in view of the image sharpening
teachings of Yamada.
In response, Appellant asserts (Brief, page 11) a lack of
motivation for modifying the prior art in the manner suggested
by the Examiner. We agree. As discussed previously, the
Examiner relies on Yamada for teaching the integration of
extracted high frequency components of an image signal to
sharpen the image of such signal. Despite the Examiner’s
assertions (Answer, page 6) to the contrary, however,
Takemoto’s edge detecting and filtering feature makes no
mention of the extraction of high frequency components. This
reason alone makes the Examiner’s suggested motivation for
adding the integrator of Yamada to Takemoto problematical at
best.
Further, aside from the general assertion that it would
be obvious to add an integrator to Takemoto, the Examiner has
not indicated how and where such integrator would be coupled
to the prior art circuitry of Takemoto to achieve the claimed
Appeal No. 1007-0016
Application No. 08/162,333
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invention. We are in agreement with Appellant that even
assuming arguendo that the skilled artisan would be motivated
to provide for integration of the edge extracted signals in
Takemoto, the proposed combination would not result in the
invention as claimed. The language of Appellant’s claim 11
requires that the integrated output sharpness value from the
edge extracting circuitry be supplied to the parameter
calculating means from which a sharpening parameter is
calculated and outputted. In this regard, as illustrated in
Figure 1 of Takemoto, the output of the edge extracting block
S4 is not applied to the sharpness calculating block
identified as S6 by the Examiner. Therefore, even if an
integrator were connected to the output of the edge extractor
(block S4) in Takemoto, the resulting combination would not
meet the limitations of the claims.
Since, for the above reasons, it is our view that the
Examiner has not established a prima facie case of
obviousness, we do not sustain the 35 U.S.C. § 103 rejection
of independent claim 11 nor of claims 13-16 and 18-22
dependent thereon.
Appeal No. 1007-0016
Application No. 08/162,333
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In summary, we have not sustained any of the Examiner’s
rejection of the claims on appeal. Therefore, the Examiner’s
decision rejecting claims 11, 13-16, and 18-22 is reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
jrg
Appeal No. 1007-0016
Application No. 08/162,333
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