Ex Parte Kitagawa

Board of Patent Appeals and Interferences

Mar 23, 2004

08768787 (B.P.A.I. Mar. 23, 2004)

1
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not written for publication and is not binding precedent of the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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EIICHIRO KITAGAWA
__________
Appeal No. 2002-1670
Application 08/768,787
___________
ON BRIEF
___________
Before HAIRSTON, BARRETT, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-4, 8-17, 20-28, and 32-39. Claims 30 and 31 have been
allowed and claims 5-7, 18, 19, and 29 have been indicated to be
allowable by the Examiner subject to being rewritten in
independent form.
Appeal No. 2002-1670
Application 08/768,787
2
The claimed invention relates to an image sensing method and
apparatus in which a determination is made as to whether a sensed
image is a black-and-white image or a color image. On
determination of a color image, a first pixel shifting procedure
is followed to sense a first number of plural images while, on
determination of a black-and-white image, a second pixel shifting
procedure for sensing a second number of plural images is
performed.
Claim 1 is illustrative of the invention and reads as
follows:
1. An image sensing apparatus having a color image sensor
and shifting means for shifting an image formation position on
said color image sensor, where said color image sensor senses an
image of an object formed at each image formation position
shifted by said shifting means, said apparatus comprising:
determination means for determining whether the object is a
color object for which a color image sensing operation is
suitable or the object is a black-and-white object for which a
black-and-white image sensing operation is suitable;
shifting control means for controlling said shifting means
to perform a first pixel shifting method so as to sense a first
number of plural images to be synthesized, in a first sequence in
a case where the object is a color object and to perform a second
pixel shifting method so as to sense a second number of plural
images to be synthesized, in a second sequence in a case where
the object is a black-and-white object in accordance with a
determination result by said determination means, wherein a set
of images sensed in the first pixel shifting method in said first
sequence is different from a set of images sensed in the second
pixel shifting method in said second sequence; and
Appeal No. 2002-1670
Application 08/768,787
1 Claims 35-39 are not included in the heading of this rejection at page
4 of the Answer. The Examiner, however, has included them in the detailed
discussion of this rejection (Answer, pages 8 and 9) as has Appellant in the
arguments in the Briefs, and we will treat them as being part of this
rejection.
2 The Appeal Brief was filed September 17, 2001 (Paper no. 19). In
response to the Examiner’s Answer dated October 1, 2001 (Paper No. 20), a
Reply Brief was filed December 3, 2001 (Paper No. 22), which was acknowledged
and entered by the Examiner as indicated in the communication dated February
11, 2002 (Paper No. 23).
3
luminance component extraction means for extracting
luminance signals from color component data of each color of a
filter provided on said color image sensor when the object is
determined to be a black-and-white object by said determination
means.
The Examiner relies on the following prior art:
Miyasaka 5,196,929 Mar. 23, 1993
Shinbori et al. (Shinbori) 5,781,236 Jul. 14, 1998
(filed Mar. 02, 1995)
Claims 1-4, 8-17, 20-28, and 32-39 stand finally rejected
under 35 U.S.C. § 103(a). As evidence of obviousness, the
Examiner offers Shinbori alone with respect to claims 1-4, 8-17,
20-27 and 32-39, and adds Miyasaka to Shinbori with respect to
claim 28.1
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs2 and Answer for the
respective details.
Appeal No. 2002-1670
Application 08/768,787
4
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
obviousness 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 Brief 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 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 1-4, 8-17, 20-28, and 32-39. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
Appeal No. 2002-1670
Application 08/768,787
5
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the rejection of each of the appealed
independent claims 1, 15, 32, and 35, Appellant’s arguments in
response assert a failure by the Examiner to establish a prima
facie case of obviousness since all of the claimed limitations
are not taught or suggested by the applied Shinbori reference.
In particular, Appellant contends (Brief, pages 6-9; Reply Brief,
pages 3-5) that, contrary to the Examiner’s stated position,
Shinbori has no teaching or suggestion of selecting, based on a
Appeal No. 2002-1670
Application 08/768,787
6
determination of whether a sensed image is a color or black-and-
white image, first and second pixel shifting methods (claims 1,
15, and 32) or first and second image shifting methods (claim
35).
After reviewing the Shinbori reference in light of the
arguments of record, we are in general agreement with Appellant’s
position as stated in the Briefs. We would point out initially,
however, that we do not agree with Appellant’s argument (Brief,
pages 7 and 9) that the action of Shinbori’s piezoelectric member
331 functions only to shift image sensor 307' relative to the
image, and does not shift the position of the image on the image
sensor as claimed. We fail to see how the relative movement of
Shinbori’s image sensor 307' with respect to the sensed image
would not result in a positional shift of the sensed image on the
image pickup element.
Our review of the disclosure of Shinbori, however, does find
us in agreement with Appellant’s argument that the claimed first
and second pixel shifting or image shifting methods in dependence
on color or black-and-white image determination is not taught or
suggested by Shinbori. The Examiner initially refers (Answer,
page 4) to the rotating low pass filter 304 in Shinbori, which
functions to provide image sensing in color and black-and-white
Appeal No. 2002-1670
Application 08/768,787
7
modes, as corresponding to the claimed pixel shifting or image
shifting methods. We find, however, as alluded to by Appellant
and as described by Shinbori that, while the operation of the low
pass filter may modify the characteristics of the image appearing
on the image sensor 307, there is no indication that the position
of the sensed image on the image sensor is altered.
We recognize that the Examiner, in the “Response to
argument” portion at page 11 of the Answer, has amplified his
stated position by suggesting that the differing rotational
positions of the optical low pass filter 304 effected by the mode
changeover operation in Shinbori would result in first and second
sequences of sensed images. While the Examiner asserts (id.)
that a skilled artisan would recognize that this production of
differing sensed image sequences is the result of differing
“pixel shifting” methods, we find the record totally devoid of
any evidence to support such a conclusion. The Examiner must not
only make requisite findings, based on the evidence of record,
but must also explain the reasoning by which the findings are
deemed to support the asserted conclusion. See In re Lee, 277
F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002).
Appeal No. 2002-1670
Application 08/768,787
8
We further agree with Appellant’s assertion (Brief, page 6;
Reply Brief, page 4) that, although Shinbori’s disclosed second
embodiment in which piezoelectric element 331 functions to change
the planar position of image sensor 307' may result in image
shifting or pixel shifting (Shinbori, column 17, line 45 through
column 18, line 30 and Figure 32), such does not involve
differing pixel or image shifting methods dependent on a
determination of color or black-and-white sensed images as
claimed. Contrary to the differing pixel shifting methods
suggested by the Examiner to be disclosed in Shinbori, our review
of Shinbori’s “pixel shifting” embodiment indicates that there is
no change in methods for color or black-and-white processing. As
described at column 18, lines 10-12 of Shinbori, “ . . . color
signals may be generated without making a change to black and
white.”
We have also reviewed the Miyasaka reference, applied by the
Examiner to address the color and black-and-white determination
display feature of appealed claim 28. We find nothing, however,
in the disclosure of Miyasaka which would overcome the previously
discussed innate deficiencies of Shinbori.
Appeal No. 2002-1670
Application 08/768,787
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Accordingly, since we are of the opinion that the prior art
applied by the Examiner does not support the obviousness
rejection, we do not sustain the rejection of independent claims
1, 15, 32, and 35, nor of claims 2-4, 8-14, 16, 17, 20-28, 33,
34, and 36-39 dependent thereon. Therefore, the decision of the
Examiner rejecting claims 1-4, 8-17, 20-28, and 32-39 under
35 U.S.C. § 103(a) is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR:pgc
Appeal No. 2002-1670
Application 08/768,787
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