Ex Parte Jetha et al

Board of Patent Appeals and Interferences

Dec 28, 2009

10682298 (B.P.A.I. Dec. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZEENAT JETHA,
GARTH SHOEMAKER, and STACY GORKOFF

_____________

Appeal 2009-003259
Application 10/682,298
Technology Center 2600
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Decided: December 28, 2009
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final
rejection of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to a method for editing a
multilayer original image presented on a system display (Spec. ¶ [0006]). In
response to receiving an indication to edit a region of the original image, distorting
a predetermined portion of a first layer of the original image to produce a distorted
image for the region; overlaying the distorted image on a second layer of the
original image to produce an overlaid image for presentation on the system
display; and, upon completion of editing of the overlaid image, selectively
propagating edits made to the first layer through to remaining layers of the original
image (Spec. ¶ [0006]).
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. A method for editing a multi-layer original image displayed on a display
screen, comprising:
in response to receiving an indication to edit a region of said original image,
distorting a portion of a first layer of said original image to produce a distorted
image for said region, said distorted image including a magnified region having a
magnification for said region at least partially surrounded by an at least partially
compressed region where said magnification decreases to that of said original
image to provide context for said magnified region with respect to said original
image;
overlaying said distorted image on said region in a second undistorted layer
of said original image to produce an overlaid image and displaying said overlaid
image on said display screen to replace display of said original image, said
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distorted image at least partially surrounded by non-overlaid portions of said
second undistorted layer in said overlaid image;
and,
upon completion of editing of said overlaid image, selectively propagating
edits made to said first layer through to said second undistorted layer of said
original image.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Mullet US 5,638,523 June 10, 1997
Baar US 2002/0044154 A1 Apr. 18, 2002

Yajima US 6,523,024 B1

Feb. 18, 2003
Higgins US 2003/0052896 A1 Mar. 20, 2003
Packingham US 6,985,865 B1 Jan. 10, 2006
Carpendale, A Framework For Elastic Presentation Space, Mar. 1999.
Dursteler, The digital magazine of InfoVis.net, Apr. 22, 2002.
The following rejections are before us for review:
1. The Examiner rejected claims 1-4, 6, 11-16, 20-23, 25, and 30-35 under
35 U.S.C. § 103(a) as being unpatentable over Yajima in view of Dursteler and
Baar and Higgins.
2. The Examiner rejected claims 5 and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Yajima in view of Dursteler and Baar and further in view of
Higgins and Mullet.
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3. The Examiner rejected claims 7-10 and 26-29 under 35 U.S.C. § 103(a)
as being unpatentable over Yajima in view of Dursteler and Baar and further in
view of Higgins and Carpendale.
4. The Examiner rejected claims 17-19 under 35 U.S.C. § 103(a) as being
unpatentable over Yajima in view of Dursteler and Baar and further in view of
Higgins and Packingham.
Appellants argue rejected claims 1 and 20 (App. Br. 9). Appellants listed
finally rejected claims 1-35 as pending (App. Br. 5).1

OBVIOUSNESS
ISSUE
Appellants argue that Yajima’s first and second image information 1018 and
1033a do not present different layers of the same original image (App. Br. 16).
Appellants argue that Yajima’s first and second image information 1018 and 1033a
do not constitute a “‘first layer’” and a “‘second undistorted layer’” as recited in
claim 1. Appellants further argue that based on dictionary definitions of the terms
“‘magnify’” and “‘distort,’” the term “‘distorting’” means that the magnification is
not uniformly applied (Reply Br. 21), unlike Yajima’s uniform magnification.
Thus, in essence Appellants argue that the limitation of “distorting a portion of a
first layer” is not met.

1 The non-argued claims 2-19 and 21-35 not being pursued in this Appeal are
considered cancelled. See Ex Parte Ghuman, No. 2008-1175, 2008 WL 2109842
(BPAI May 1, 2008) (precedential).
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We note that Appellants’ listing of additional claim 1 limitations (App. Br.
16) with no attempt to point out how or why the claim patentably distinguishes
over the prior art does not amount to a separate argument for patentability. See 37
C.F.R. § 41.37(c)(1)(vii) (2004). See also In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987). Thus, we only address the specific arguments presented, and we
do not address Appellants’ mere recitation of claim limitations which are without
any corresponding argument.2
Thus, Appellants’ arguments present us with the following pivotal issue:
Have Appellants shown that the Examiner erred in finding that Yajima
teaches “distorting a portion of a first layer” and “a second undistorted layer” as
recited in claim 1?

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance of the
evidence:
1. Appellants (App. Br. 15) do not contest that in Figure 19 of Yajima the
second image information 1033a is magnified and includes even more detail
than is shown in the second image information 1033a of Figure 18.
2. Yajima teaches “overlay” of the second image information with more detail
than that of its environs and as magnified by a magnifying lens over the first
image information (col. 7, l. 56-col. 8, l. 2; and see below modified Fig. 19).

2 Only arguments made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the Brief
have not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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3. Based on the definitions provided by Appellants (Reply Br. 21), the second
dictionary definition for “‘distorted’” includes the term “altered.”
4. Appellants’ Specification describes the step of distorting as creating a lens
surface for the distorted image and, transforming the predetermined portion
of the first layer by applying a distortion function defining the lens surface to
the predetermined portion of the first layer (Spec. [0007]).
5. Appellants’ Specification further states that while the transformation of
distortion function may have a variety of shapes it may also be “simply
coextensive with the region-of-interest” (Spec. [0096]).

PRINCIPLES OF LAW
The scope of the claims in patent applications are not determined solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
The claim terms should be given their broadest reasonable meaning in their
ordinary usage as such claim terms would be understood by one skilled in the art
by way of definitions and the written description. In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997).
The claims, of course, do not stand alone. Rather, they are part of “a
fully integrated written instrument” . . . consisting principally of a
specification that concludes with the claims. For that reason, claims
“must be read in view of the specification, of which they are a part.” .
. . . [T]he specification “is always highly relevant to the claim
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construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).
Although claims are interpreted in light of the specification, limitations from
the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
During ex parte prosecution, claims must be interpreted as broadly as their
terms reasonably allow since Applicants have the power during the administrative
process to amend the claims to avoid the prior art. In re Zletz, 893 F.2d 319, 322
(Fed. Cir. 1989).
“[O]ne cannot show non-obviousness by attacking references individually
where . . . the rejections are based on combinations of references.” In re Keller,
642 F.2d 413, 426 (CCPA 1981).

ANALYSIS
Claim 1 requires “distorting a portion of a first layer” and “a second
undistorted layer.” We agree with the Examiner’s findings of fact and we adopt
them as our own. We add the following primarily for emphasis.
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Figure 18. Figure 18 indicates second image information of the lens area
1033a retrieved from the database and indicating more details as compared to the
surrounding image of 1018.

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Figure 19. Modified Figure 19 was labeled to indicate the first layer 1033a
which is distorted and the second layer 1018 which is undistorted.
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Yajima teaches a second image information 1033a as reproduced above in
Figure 19, and indicated as a circle in Figure 18, which constitutes the magnified
and more detailed view of that region on the first image information 1018. While
Appellants do not contest that in Figure 19 the second image information 1033a is
magnified and includes even more detail than is shown in the second image
information 1033a of Figure 18 (FF 1), Appellants argue that Yajima’s second
image information 1033a appears as an inset magnifier. Appellants assert that the
first and second image information 1018, 1033a simply present different levels of
detail of the same original image (App. Br. 16). We are not persuaded by
Appellants’ argument because Yajima teaches “overlay” of the second image
information (i.e., layer 1033a) with more detail than that of its environs and as
magnified by a magnifying lens over the first image information (i.e., layer 1018)
(FF 2). Accordingly, the term “overlay” signifies that layer 1033a is a different
layer overlaid over layer 1018.
Furthermore, the Examiner notes, and we agree, that a process for distortion
can be reasonably interpreted as a magnification process (App. Br. 17), thereby
satisfying the limitation of “distorting a portion of a first layer.” Appellants
respond with dictionary definitions of the terms “‘magnify’” and “‘distort,’”
arguing that “‘distorting’” means that the magnification is not uniformly applied
(Reply Br. 21). Appellants further argue that the Specification and claim 4 are also
in accord with this definition (i.e., non-uniform magnification) of the term
“‘distortion’” (Reply Br. 21-22), in contrast to Yajima’s magnification which is
uniform. We note that based on the definitions provided by Appellants, the second
dictionary definition for “‘distorted’” includes the term “altered” (FF 3) which
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certainly supports the Examiner’s reasoning that magnification is a type of
distortion under the broadest reasonable interpretation by way of definitions. See
Morris, 127 F.3d at 1053-54.
We further note that Appellants’ arguments with respect to claim 4 in the
Reply Brief (Reply Br. 22) was not separately argued in the Appeal Brief and the
argument with respect to this claim was raised for the first time on appeal in the
Reply Brief and is therefore deemed to be waived. See Optivus Tech., Inc. v. Ion
Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.”) (citation and quotation marks
omitted); see also Ex parte Scholl, No. 2007-3653, slip op. at n.13 (BPAI Mar. 13,
2008) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (same).
However, as the term of “distortion” relates to claim 1, we turn to the
specification because it is the single best guide to the meaning of a disputed term.
See Phillips, 415 F.3d at 1315. Appellants’ Specification describes the step of
distorting as creating a lens surface for the distorted image, and transforming the
predetermined portion of the first layer by applying a distortion function defining
the lens surface to the predetermined portion of the first layer (FF 4). Appellants’
Specification further states that while the transformation of distortion function may
have a variety of shapes it may also be “simply coextensive with the region-of-
interest” (i.e., uniform magnification) (FF 5). Thus, under the broadest reasonable
interpretation in view of the Specification the Examiner’s interpretation of the
distortion being the result of uniform magnification is not precluded. Furthermore,
the particular definition of the term “distortion” or the particular “distortion
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function” that Appellants recite in claim 4, were not enumerated in claim 1. As
such, claim 1 is broader in scope and does not preclude the uniform magnification
or the shape of the lens being coextensive as supported by the Specification.
Although claim 1 is interpreted in light of the specification, limitations from the
specification (i.e., the distortion function having an elevation with decreasing
magnification . . . ) are not read into claim 1. See Van Geuns, 988 F.2d at 1184.
During ex parte prosecution, claims must be interpreted as broadly as their
terms reasonably allow since Applicants have the power during the administrative
process to amend the claims to avoid the prior art. In re Zletz, 893 F.2d at 322.
Appellants refer us to the narrower limitations of claim 4 for the definition of
“distorting” as recited in claim 1 which is further evidence that claim 1 is broader
in scope than claim 4, and certainly during prosecution Appellants could have
amended claim 1 accordingly to overcome this specific rejection.
Accordingly, we do not agree with Appellants’ argument that Yajima’s first
and second image information 1018 and 1033a do not present different layers of
the same original image (App. Br. 16). We are also not persuaded by Appellants’
argument that Yajima’s first and second image information do not constitute a first
distorted layer (i.e., 1033a) and a second undistorted layer (i.e., 1018) as recited in
claim 1.
With respect to Appellants’ argument that Higgins has nothing to do with
distortion (App. Br. 17), the Examiner (Ans. 19) relied on Higgins (¶ [0110]) for
the teaching of passing any edits from one map (i.e., layer) where edits were
applied (which can also be considered as distortions or alterations caused by
editing) to other maps (i.e., the undistorted layer) via synchronization. One cannot
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show non-obviousness by attacking references individually where the rejections
are based on combinations of references. See Keller, 642 F.2d at 426.
Appellants repeat the same arguments for claim 20 as those for claim 1
(App. Br. 18). We are not persuaded for the same reasons as articulated supra.
For the foregoing reasons, we sustain the Examiner’s rejections of claims 1
and 20.

CONCLUSION
Under 35 U.S.C. § 103, Appellants have not shown that the Examiner erred
in finding that Yajima teaches “distorting a portion of a first layer” and “a second
undistorted layer.”

ORDER
The decision of the Examiner to reject claims 1 and 20 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KIS

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