Ex Parte Janko et al

Board of Patent Appeals and Interferences

May 27, 2010

10355390 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BOZIDAR JANKO,
GALE L. STRANEY,
and KATHRYN A. ENGHOLM
____________

Appeal 2009-004886
Application 10/355,390
Technology Center 2100
____________

Decided: May 28, 2010
____________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Representative Claim
1. A software picture analyzer comprising:
means for capturing bitmap data for an image displayed on a
display monitor in a first window by an image application, the image
application being a separate software application from the picture
analyzer;
means for analyzing the bitmap data to produce desired
measurement data; and
means for displaying the desired measurement data within a
second window on the display monitor.

Examiner’s Rejections/Objection
Claims 1-6 stand rejected under 35 U.S.C. § 112, first paragraph for
failing to satisfy the written description requirement. The Examiner also
objects to the Specification under 35 U.S.C. § 132(a) for introducing new
matter into the disclosure.1
Claims 1-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Martin (US 5,870,093).

1 Because the Examiner deems the amendment to the Specification to affect
the scope of the claims, and the objection is accompanied by a rejection of
the claims under 35 U.S.C. § 112, first paragraph, the objection under 35
U.S.C. § 132(a) is appealable subject matter. See MPEP § 2163.06, Heading
II.
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PRINCIPAL ISSUES
(1) Have Appellants shown that “the image application being a
separate software application from the picture analyzer” as recited in claim 1
is supported by the Specification as originally filed?
(2) Have Appellants shown that the Examiner erred in finding that
Martin discloses “the image application being a separate software
application from the picture analyzer” as recited in claim 1?

FINDINGS OF FACT
1. Martin discloses a method and a system that permits a user to
view an image of an object on a graphical user interface (GUI) and perform
operations on the image. The method comprises the steps of displaying a set
of pictorial representation types on the GUI and allowing the user to select
one of the pictorial representation types, by making a likeness determination
between the image and the set of pictorial representation types. The system
performs a process on the image based on the selected pictorial
representation type. Abstract.
2. Figure 1 shows a high level operational block diagram of the
present invention. As shown at a step 102, the user begins by selecting an
image stream source. The image can be selected by opening a file stored in
a database. The stored image can be a digitized photograph or a micrograph
of a structure, in this case, an alloy or a metal. The stored image can be in
any conventional bit-map format. The image can be representative of a
static image, such as computer scanned photograph or micrograph.
Alternatively, the image stream source can be a video feed from a camera,
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videotape, scanner, or the like. Once the image stream source is selected,
the user then accesses an appropriate set of pictorial representation types, as
shown at 104. Col. 3, l. 62 to col. 4, l. 7.
3. The run process is shown generally at step 112, and in more
detail in Figure 6. The program begins the process by loading the first
image within the image stream, as shown at step 602. As discussed above,
the image stream may comprise images selected from one or more files in a
database. Alternatively, the image stream can be a video stream from a
camera or microscope. Col. 5, ll. 24-31.
4. The program then applies the process to the image, as shown at
step 604. Any intermediate or final results are stored and then analyzed, as
shown at step 606. Col. 5 ll. 36-38.
5. Intermediate results of a grain size process are illustrated in
Figure 7. An image displayed in a window 702 includes markers 704
overlaid on the image according to an implementation specific process step
of the present invention. Exemplary phase area results are illustrated in a
window 802 in figure 8. A data histogram 804 shows a column graph
representing the percent of phase area coverage in an image displayed in
window 806. Col. 6, ll. 10-17.

PRINCIPLES OF LAW
Written Description
To comply with the “written description” requirement of 35 U.S.C.
§ 112, first paragraph, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
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possession of the invention. The invention is, for purposes of the “written
description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Section 112 and new matter issues
The Examiner finds that the application as originally filed does not
provide written description support for “the image application being a
separate software application from the picture analyzer.” Ans. 3.
Appellants rely on material at pages 2 and 4 of the Specification, as
originally filed, as providing support for the “separate” language of claims 1
and 4. Br. 9-11. The Examiner submits that allowing entry of Appellants’
modification would change the scope of the original disclosure because the
phrase “software analyzer” would then have to be equated with “software
video application,” whereas in the original disclosure it did not have to be.
Ans. 6.
While the written description does not provide in haec verba support
for instant claims 1 and 4, the Specification as originally filed does describe
(e.g., Spec. 4: 8-11) a picture analyzer that provides measurements of image
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data for another image data processing or display software application,
which is a software image application separate from the picture analyzer
within the meaning of claims 1 and 4. Therefore, we agree with Appellants
that the disclosure provides written description support for “the image
application being a separate software application from the picture analyzer.”
We do not sustain the rejection of claims 1-6 under 35 U.S.C. § 112, first
paragraph.
With respect to the objection to the Specification, the Examiner finds
that language added by amendment to the Specification at page 2, on July
20, 2006, is not supported by the disclosure. In particular, the Examiner
objects to the following amendments as introducing new matter into the
disclosure: “video/image data may be is decoded by an image or video
software application running on the PC and displayed via a graphics card 18
on a display monitor 20 in a first window 22, the image or video software
application being a separate application from the software picture analyzer,”
and “[t]hus, it is not necessary for the software picture analyzer to decode
the video/image data, because the image or video software application has
already done so.” See Ans. 2.
Appellants assert that the amendments are supported at page 3, lines
20-21 of the Specification as originally filed, which states that “a video
editing application is running in the first window.” Appellants assert
additional support at page 1, lines 18-23 of the Specification as originally
filed, which states that “[i]n the software analyzer case the analyzer
application needs to decode file formats in which the video is encoded . . . .”
Br. 10. The Examiner responds that the Specification only discloses that the
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analyzer decodes file formats, but does not provide support for the image
application decoding image data. Ans. 7.
Page 1 of the Specification discusses a problem in the prior art,
namely that when a software analyzer decodes file formats in which the
video is encoded, the software must be adapted to each individual
application depending on the type of imagery being analyzed. The solution
provided by Appellants’ invention is to pass image data from a video editing
application that runs first window 22, to an image capture module 24 of
software analyzer 14 (Spec. 3:2-6, 3:20 to 4:1), which indicates that the
decoding is performed by the image application rather than the image
analyzer. Because the image application decodes the image data, the image
analyzer need not decode the image data. Therefore, we find the
amendments to be supported by the disclosure. We do not sustain the 35
U.S.C. § 132(a) objection.

Section 102 rejection of claims 1-6
Appellants contend that Martin does not describe a separate image
application as required by claims 1 and 4. According to Appellants, Martin
shows only one software application having multiple windows. Appellants
conclude that one of ordinary skill in the art would not consider the windows
shown by Martin to be separate applications. Br. 12.
The Examiner finds that the term “software application” encompasses
a software piece or module designed to fill the specific needs of a user. The
Examiner further finds that each of the multiple windows described by
Martin is a module designed to fill the specific needs of a user. Therefore,
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according to the Examiner, the windows shown by Martin are separate
software applications within the meaning of claim 1. Ans. 8. However, the
Examiner has not shown where Martin discloses that each of the multiple
windows described by Martin is a separate module. Nor has the Examiner
provided evidence that one of ordinary skill in the art would interpret the
term “software application” as encompassing a software module that is part
of an application program.
Martin discloses that image data from a stream provided by a camera,
scanner, or microscope can be received by an application program. FF 2-3.
Martin also discloses that the application program applies an image analysis
process to the image data, and displays the image and the results of the
image analysis process in two separate windows of a display monitor. FF 1,
4-5. However, the Examiner has not shown that Martin discloses “the image
application [that displays the image on a display monitor is] a separate
software application from the picture analyzer.”

CONCLUSIONS OF LAW
(1) Appellants have shown that “the image application being a
separate software application from the picture analyzer” as recited in claim 1
is supported by the Specification as originally filed.
(2) Appellants have shown that the Examiner erred in finding that
Martin discloses “the image application being a separate software
application from the picture analyzer” as recited in claim 1.

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DECISION
The rejection of claims 1-6 under 35 U.S.C. § 112, first paragraph for
failing to satisfy the written description requirement and the objection to the
Specification under 35 U.S.C. § 132(a) are reversed.
The rejection of claims 1-6 under 35 U.S.C. § 102(b) as being
anticipated by Martin is reversed.

REVERSED

msc

MICHAEL A. NELSON
TEKTRONIX, INC.
14150 SW KARL BRAUN DRIVE
P.O. BOX 500, M/S 50-LAW
BEAVERTON OR 97077