Ex parte Lebeau

Board of Patent Appeals and Interferences

Jan 12, 1999

08340946 (B.P.A.I. Jan. 12, 1999)

Application for patent filed November 17, 1994. 1
According to applicant, the application is a division of
Application 08/100,829, filed August 2, 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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHRISTOPHER J. LEBEAU
_____________
Appeal No. 97-2706
Application 08/340,9461
______________
ON BRIEF
_______________
Before HAIRSTON, TORCZON, and CARMICHAEL, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 14
Appeal No. 97-2706
Application No. 08/340,946
2
through 17.
The disclosed invention relates to a method of detecting
a defect in an object.
Claim 14 is the only independent claim on appeal, and it
reads as follows:
14. A method of detecting a defect in an object
comprising:
forming a grey scale image of the object wherein the grey
scale image has a major axis;
forming a shifted image of the grey scale image by
shifting the grey scale image along the major axis; and
comparing the shifted image to the grey scale image to
detect the defect.
The reference relied on by the examiner is:
Gonzales et al. (Gonzales), “Digital Image Processing,”
Addison-Wesley, 1987, pages 47, 48 and 100 through 111.
Claims 14 through 17 stand rejected under the first
paragraph of 35 U.S.C. § 112 because:
3. The term “major axis” is in fact present in the
specification but it is not defined. Specification.
page 8, lines 25-27:
...shifting the duplicate image a distance 52
along a major axis of images 41, 42, and 43.
No explanation is made as to how “axes” are
determined (eg, axis of symmetry?) and thus there
are an infinite number of them. No axes are shown
Appeal No. 97-2706
Application No. 08/340,946
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or labeled in the drawings. Also, the language “a
major axis” indicates that there may be more than
one major axis. Which axes are “major”? How many
axes are “major”?
Appeal No. 97-2706
Application No. 08/340,946
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Claims 14 and 15 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Gonzales.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Gonzales.
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections.
In a discussion of a shifted grey scale image, appellant
explains (specification, pages 8 and 9) that:
Referring to FIG. 7, a comparison image 45 is
formed by duplicating image 40 (FIG. 6) and shifting
the duplicate image a distance 52 along a major axis
of images 41, 42, and 43. This forms a shifted
image that includes shifted element images 62, 63,
and 64 that represent images 41, 42, and 43 as
shifted by distance 52. As shown in FIG. 7, image
40 (FIG. 6) is overlaid with the shifted image to
illustrate distance 52. Defects 44, 46, 47, 49, and
51 shown in FIG. 6 are represented by shifted
defects 54, 56, 57, 59, and 61 respectively. After
shifting, images 62, 63, and 64 are compared to
images 41, 42, and 43 in order to identify the
defects.
The distance between defect 44 (Figures 6 and 7) and
shifted defect 54 (Figure 7), for example, is the distance 52
Appeal No. 97-2706
Application No. 08/340,946
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along the side of shifted element image 62. Thus, it is clear
from the quoted excerpt from appellant’s disclosure that the
disclosed and claimed “major axis” is through the lengthwise
extent of each of shifted element images 62, 63 and 64. The
rejection of claims 14 through 17 under the first paragraph of
35 U.S.C. § 112 is reversed because the examiner has not
presented well-founded reasons for rejecting the claims.
Turning to the 35 U.S.C. § 102(b) rejection of claims 14
and 15, appellant argues (Brief, page 7) that:
The Examiner has argued that forming a gray
scale image is inherently described in Gonzales, but
even if this is so, it is only shown on page 47 of
Gonzales. The Examiner has not at all demonstrated
a connection between the alleged description of
forming a shifted image and the requirement of claim
14 that the shifted image be derived from a gray
scale image. Instead, any mention of a gray scale
image is in a different section of Gonzales.
Further, the Examiner has not provided any support
as to why the deriving of a shifted image from a
gray scale image must necessarily occur in the
mathematical operations described in Gonzales.
Again, claim 14 recites a step of comparing the
shifted image to the gray scale image. As discussed
above, there is no connection described in Gonzales
between any inherent gray scale image and a shifted
image of it. Further, page 111, lines 10-20, of
Gonzales does not identically describe a gray scale
image and does not inherently require that
correlation be performed on a gray scale image.
Therefore, the step of comparing an image to a gray
Appeal No. 97-2706
Application No. 08/340,946
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scale image is not identically described and is thus
not anticipated by Gonzales.
We agree. Gonzales is concerned with gray-level shading
in image processing (pages 47 and 48), and indicates that
“relationships, called convolution and correlation, are of
fundamental importance to an understanding of image processing
techniques based on the Fourier transform” (page 100). The
remainder of the publication discusses convolution and
correlation strictly in terms of mathematics. In summary, the
35 U.S.C. § 102(b) rejection of claims 14 and 15 is reversed
because Gonzales does not disclose any of the steps of the
claimed method.
The 35 U.S.C. § 103 rejection of claims 16 and 17 is
reversed for the same reason.
DECISION
The decision of the examiner rejecting claims 14 through
17 under the first paragraph of 35 U.S.C. § 112 is reversed.
The decision of the examiner rejecting claims 14 and 15 under

Appeal No. 97-2706
Application No. 08/340,946
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35 U.S.C. § 102(b) is reversed, and the decision of the
examiner rejecting claims 16 and 17 under 35 U.S.C. § 103 is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
KWH:svt
Appeal No. 97-2706
Application No. 08/340,946
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Vincent B. Ingrassia
MOTOROLA INC.
Intellectual Property Department
P.O. Box 10219
Scottsdale, AZ 85271-0219