Ex Parte Luo

Board of Patent Appeals and Interferences

Aug 30, 2006

10046797 (B.P.A.I. Aug. 30, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte HUITAO LUO
_______________

Appeal No. 2006-1618
Application No. 10/046,797
_______________

ON BRIEF
_______________

Before THOMAS, JERRY SMITH, and BARRY, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s non-final rejection of claims 1-5, 7-14, and 16-36.1 Claims 6 and 15
have been indicated to contain allowable subject matter [answer, page 2].
The disclosed invention processes boundary information of a graphical
object. Specifically, multiple vertices are determined from the graphical object's
boundary information. A predetermined function detects a contour between a

1 Although this appeal is from the examiner's non-final rejection mailed Dec. 27, 2004, we have
jurisdiction over the appeal because the claims have been twice rejected. See 35 U.S.C. § 134.
Throughout this opinion, we refer to the examiner's non-final rejection mailed Dec. 27, 2004
(hereafter "non-final rejection").
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pair of vertices by analyzing the graphical image. The contour is detected by
computing the shortest path between vertices based upon weights generated by
the gradient of the underlying image.

Representative claim 1 is reproduced as follows:

A system for processing boundary information of a graphical object,
comprising:
code for receiving a graphical image that comprises said graphical object ,
[sic]
wherein said graphical object is defined by at Ieast said boundary
information;
code for detecting a plurality of contours between respective pairs of
points of said graphical image, wherein individual ones of the contours are
detected responsive to respective user input of a user; and
code for determining a plurality of vertices from said boundary
information, wherein respective contours, which are between adjacent vertices of
said plurality of vertices and are detected by said code for detecting, approximate
respective edges of said boundary information within a distortion criterion.

The examiner relies on the following references:

Catros et al. (Catros) 4,843,630 Jun. 27, 1989

Ikezawa et al. (Ikezawa) 5,471,535 Nov. 28, 1995

Kim 5,774,595 Jun. 30, 1998

Suzuki 5,974,175 Oct. 26, 1999

Kim (Kim '337) 6,055,337 Apr. 25, 2000

Makram-Ebeid et al.
(Makram-Ebeid)
6,332,034

Dec. 18, 2001

Huitao Luo & Alexandros Eleftheriadis, Designing an Interactive Tool for Video
Object Segmentation and Annotation, Advent Group, Columbia Univ., Jul. 12,
1999 ("Luo").

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The following rejections are on appeal before us:
1. Claims 1, 2, 10, 12, 16, 18, 25-27, 29, and 33-36 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kim in view of Suzuki.
2. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim in view of Suzuki and further in view of Ikezawa.
3. Claims 3-5, 7-9, 13, 14, 17, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kim in view of Suzuki and further in view of
Catros.
4. Claims 11 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim in view of Suzuki and further in view of Kim ('337).
5. Claims 20-23, 31, and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Catros in view of Makram-Ebeid.
6. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Catros in view of Makram-Ebeid and further in view of Luo.
Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner 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, the appellant's arguments set forth
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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 evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
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). The examiner must articulate reasons for the examiner’s
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002). In particular, the examiner must show that there is a teaching, motivation,
or suggestion of a motivation to combine references relied on as evidence of
obviousness. Id. 277 F.3d at 1343, 61 USPQ2d at 1433-34. The examiner
cannot simply reach conclusions based on the examiner’s own understanding or
experience - or on his or her assessment of what would be basic knowledge or
common sense. Rather, the examiner must point to some concrete evidence in
the record in support of these findings. In re Zurko, 258 F.3d 1379, 1386, 59
USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the examiner must not only assure
that the requisite findings are made, based on evidence of record, but must also
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explain the reasoning by which the findings are deemed to support the
examiner’s conclusion. However, a suggestion, teaching, or motivation to
combine the relevant prior art teachings does not have to be found explicitly in
the prior art, as the teaching, motivation, or suggestion may be implicit from the
prior art as a whole, rather than expressly stated in the references. The test for
an implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art. In re Kahn, 441 F.3d
977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (citing In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000)). See also In re
Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). 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). If that burden is met, the
burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Id.;
In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make in the briefs
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have not been considered and are deemed to be waived [see 37 CFR
§ 41.37(c)(1)(vii)(2004)].
We first consider the rejection of claims 1, 2, 10, 12, 16, 18, 25-27, 29,
and 33-36 under 35 U.S.C. § 103(a) based on Kim and Suzuki. Regarding
independent claims 1 and 33, the examiner's rejection essentially finds that Kim
teaches every claimed feature except for detecting individual contours
responsive to respective user input [non-final rejection, pages 3 and 4]. The
examiner cites Suzuki as disclosing a motion picture apparatus where a user
picks points adjacent boundary locations to detect a contour. The examiner finds
that it would have been obvious to one of ordinary skill in the art at the time of the
invention to modify Kim to respond to user input to specify a portion of an image
to separate [non-final rejection, page 4].
Appellant argues that there is no motivation to combine the references.
Appellant contends that Kim and Suzuki are directed towards entirely different
systems and methods that achieve different results and solutions for different
problems [brief, page 6; reply brief, pages 3 and 4]. Specifically, appellant notes
that Kim discloses a method of representing a contour of an object for a video
signal encoder. Suzuki, however, identifies a contour for extracting an object
from an image frame of a motion picture for subsequent editing. According to
appellant, modifying Kim to accept user input as taught by Suzuki as asserted by
the examiner would not only increase complexity, but also slow Kim's encoding
process unacceptably [brief, pages 6 and 7].
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Appellant further contends that no reasonable expectation of success
exists in combining Kim with Suzuki since slowdowns in Kim's system caused by
user intervention would destroy or frustrate Kim's purpose (i.e., encoding entire
frames of video) by encoding user-selected objects. Such a modification of Kim,
according to appellant, would result in unacceptable encoding speeds [brief,
page 10; reply brief page 4].
The examiner responds that Kim and Suzuki are properly combinable
since both references detect image contours -- albeit for different purposes
[answer, page 4]. The examiner further notes that applying the teachings of
Suzuki would not slow Kim's system unacceptably since Suzuki does not require
user input in every frame of video; rather, only one user input is required. After
such user input, contours are then detected automatically in subsequent frames
[answer, pages 4 and 5].
The examiner further notes that the motivation to combine the references
was expressly stated in Suzuki, namely so that the user can extract a single
object from a sequence of images of a motion picture on the basis of a detected
object contour. According to the examiner, without such a user input, Kim's video
encoder would be unable to select a single object for extraction [answer, page 5].
We will sustain the examiner's rejection of claim 1. We note at the outset
that Kim discloses selecting two starting vertices (A and B) depending on
whether the image is an open or closed loop [Kim, col. 3, lines 13-18; Fig. 2A].
Kim does not state that the starting vertices A and B are manually selected, but
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rather determined from the approximation technique performed by polygonal
approximation block 100 [Kim, col. 3, lines 30-34].
Turning to the secondary reference, Suzuki discloses detecting the
contour of an object within a sequence of images where the user specifies points
adjacent boundary locations of the object in a first image. Contours of
subsequent images are detected based on contour points detected by the first
image [Suzuki, abstract, col. 2, lines 1-50]. Based on the record before us, we
find that the teachings of Suzuki are reasonably combinable with Kim essentially
for the reasons stated by the examiner. Although manually selecting points
would arguably slow Kim's encoding process, we disagree with appellant that
such manual selection would inevitably frustrate Kim's purpose of encoding
video. On the contrary, we see no reason why such manual selection would not
be useful and beneficial to Kim's system -- namely to enable the user to precisely
dictate and control the entry of vertices corresponding to a particular object,
particularly with complex contours. Moreover, we agree with the examiner that
applying the teachings of Suzuki would not slow Kim's system unacceptably
since Suzuki does not require user input in every frame of video; rather, only one
user input is required. After such user input, contours are then detected
automatically in subsequent frames as the examiner indicates.
Furthermore, even assuming that the starting vertices in Kim are
determined automatically, manually selecting starting vertices would add
numerous potential candidates for starting vertices for detecting contours of a
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particular image well beyond the two possibilities for initial starting vertices
disclosed in Kim. In Kim, only the end points (open loop image) or the farthest
points on the contour (closed loop image) are selected as the starting vertices
[see Kim, col. 3, lines 13-18]. Manually selecting verticies, however, would yield
significantly greater numbers of potential starting vertices and not be limited to
only two sets of vertices.
Ultimately, providing user input to Kim's system amounts to a tradeoff
between the useful and beneficial features afforded by such user input noted
above and efficiency. But such a tradeoff does not preclude the advantages
obtained that would be readily apparent to the skilled artisan by applying the
teachings of Suzuki to Kim's system as noted above.
Furthermore, we are not persuaded by appellant's argument that the
skilled artisan would not reasonably expect success from combining Kim and
Suzuki. It is well settled that the prior art can be modified or combined to reject
claims as prima facie obvious as long as there is a reasonable expectation of
success. In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
1986). Although obviousness does not require absolute predictability, at least
some degree of predictability is required. Evidence showing there was no
reasonable expectation of success may support a conclusion of nonobviousness.
In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
We see no reason why the skilled artisan would not reasonably expect
success if Suzuki's teachings were combined with Kim in the manner suggested
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by the examiner. Furthermore, apart from appellant's arguments, appellant has
provided no factual evidence on this record proving otherwise. It is well settled
that mere lawyer’s arguments and conclusory statements, which are unsupported
by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642,
199 USPQ 137, 140 (CCPA 1978); In re Lindner, 457 F.2d 506, 508-09, 173
USPQ 356, 358 (CCPA 1972). In short, the skilled artisan would reasonably
expect success if Suzuki and Kim were combined, and the art is predictable. The
examiner's obviousness rejection of independent claim 1 is therefore sustained.
We will also sustain the examiner's rejection of independent claim 33.
Because we find that it would have been obvious to one of ordinary skill in the art
at the time of the invention to provide user input to Kim's system for the reasons
noted previously, we likewise hold that it would have been obvious to one of
ordinary skill in the art at the time of the invention for the user to input information
via a user interface. As the examiner indicates, Suzuki's contour detection
system is computer-based [answer, page 8]. In our view, a user interface to
input such information to a computer would have been readily apparent to the
skilled artisan to facilitate prompt, easy, and accurate data entry. The examiner's
obviousness rejection of claim 33 is therefore sustained.
Regarding independent claim 12, the examiner indicates that Kim
discloses, among other things, (1) encoding at least the plurality of vertices in a
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data structure to represent boundary information, and (2) receiving input of a
contour image and transforming the image into a set of quantized transform
coefficients and segment data [non-final rejection, page 6]. The examiner then
asserts "that format changes in images and videos are very well-known in the
art" [non-final rejection, page 7]. The examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Kim to convert from one format to another to ensure compatibility with
various systems [id.].
Appellant notes that the claim recites converting graphical information of a
data structure in combination with encoding vertices in the data structure [brief,
page 11]. Appellant notes that the quantized transform coefficients and segment
data in Kim are not encoded into a data structure that is converted [id.]. Also,
appellant disagrees with the examiner's assertion that converting graphical
information of the data structure from a first format to a second, different format is
well known in the art [id.].
The examiner responds that the term "data structure" is broad and can
emcompass any method of storing data, including the quantized transform
coefficients of Kim [answer, page 7]. According to the examiner, Kim's transform
coefficients constitute data to be transmitted and must have some sort of
inherent structure; otherwise, the data cannot be read [id.]. The examiner also
contends that Kim even meets a second, narrower definition of "data structure"
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[id.].2 Appellant responds that any organization of data may not be fairly
considered a "data structure" under the narrower definition since data merely
arranged in a file or otherwise made available for communication or processing
with no specific ordering or arrangement is not a "data structure for better
algorithm efficiency" [reply brief, page 5].
We will sustain the examiner's rejection of claim 12. We agree with the
examiner that the scope and breadth of the limitation "data structure" fully reads
on the quantized transform coefficients of Kim and that format conversion of
graphical information is well known in the art. According to the Microsoft Press
Computer Dictionary, "data structure" is defined as follows:
data structure An organizational scheme, such as a
record or an array, applied to data so that it can be
interpreted and so that specific operations can be
performed upon that data.

Microsoft Press Computer Dictionary, 2d ed., Microsoft Press, 1994, at 110.

Although "[d]ictionaries…are often useful to assist in understanding the
commonly understood meaning of words[,]…any reliance on dictionaries accords
with the intrinsic evidence: the claims themselves, the specification, and the
prosecution history." Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d
1343, 1348, 76 USPQ2d 1432, 1436 (Fed. Cir. 2005) (internal citations omitted).
The definition of "data structure" above fully comports with the term's usage in

2 Under this narrower definition, "data structure" is defined as "[a]n organization of information,
usually in memory, for better algorithm efficiency, such as queue, stack, linked list, heap,
dictionary, and tree, or conceptual unity, such as the name and address of a person. It may
include redundant information, such as length of the list of number of nodes in a subtree"
[answer, page 7].
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the specification. For example, the instant specification states that "[i]n Step 804,
post-processing and node editing of the closed boundary may be performed
utilizing additional user interaction. In Step 805, an object description data
structure (e.g. boundary definition, support map, and/or the like) is created to
define the object selected by the user" [see specification, Para. 0068; Fig. 8].
See also brief, page 2 (noting that exemplary data structures are described at
Step 804 of Fig. 8). Such a data structure can reasonably be considered an
organizational scheme applied to data so that it can be interpreted and
operations performed thereon and is therefore consistent with the definition
above.
Turning to the prior art, Kim stores vertex information in buffer 110. After
storing all vertices in buffer 110, the contour approximation process commences.
In this process, buffer 110 provides segment data representing the positions of
the two vertices of a given line segment to sampling circuit 115 [Kim, col. 3, lines
35-45; Fig. 1].
We find that Kim's storage of vertex information in the buffer fully meets a
"data structure" as claimed and fully comports with the definition cited above.
That is, the stored vertex information in Kim reasonably constitutes an
organizational scheme applied to the data so that it can be interpreted and
operations performed thereon, particularly since that same information is
interpreted and utilized subsequently in a contour approximation algorithm.
Furthermore, we find that the buffer's providing segment data representing the
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positions of two stored vertices of a particular line segment responsive to an
initiation signal reasonably constitutes a conversion of the graphical information
of the data structure from one format (i.e., stored vertex information) to another
format (i.e., segment data) as claimed.
We agree with the examiner that converting graphical information from
one format to another is well known in the art to ensure compatibility with various
systems, particularly video and graphics applications. In our view, it would have
been obvious to one of ordinary skill in the art at the time of the invention to
convert the stored vertex data string in Kim for compatibility with diverse
graphical systems.
Furthermore, we agree with the examiner that Kim's transform coefficients
reasonably constitute a "data structure" as claimed particularly since such
transform coefficients fully comport with the definition above. In our view, the
transform coefficients reasonably constitute an organizational scheme applied to
the data so that it can be interpreted and operations performed thereon.
Accordingly, the examiner's rejection of claim 12 is sustained.
Regarding dependent claims 25, 29, and 34, the examiner indicates that
because Suzuki takes user input each time a contour is detected, a different
contour would require a different input [non-final rejection, pages 7 and 8].
Appellant responds that the claimed limitation does not necessarily flow from the
references. Appellant notes that such a feature is not inherent to Suzuki
because detection of contours of subsequent images is based upon contour
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points detected by the first contour unit. Therefore, according to appellant,
operations of the second detection unit do not "take user input each time a
contour is detected" as the examiner alleges [brief, page 13]. The examiner
responds that if the invention of Suzuki were restarted, a second contour would
be selected with different user input [answer, page 9].
We will sustain the examiner's rejection of claims 25, 29, and 34. The
scope and breadth of the claim language does not preclude the collective
teachings of Kim and Suzuki. Certainly, when a user manually selects a different
contour (e.g., when Suzuki's invention is restarted), the user input would be
different for that contour. In that case, the user input would be different for
individual ones of the contours (i.e., multiple contour selections). The rejection is
proper and therefore sustained.
Regarding dependent claim 35, the examiner indicates that Suzuki
discloses extracting the graphical information defined by boundary information
from the image [non-final rejection, page 8]. Appellant argues that no motivation
exists to combine the references since Kim is concerned with data compression
including previously-defined contours and encoding entire frames. Kim,
however, is not concerned with extracting graphical information defined by
boundary information from the image as claimed [brief, page 15; reply brief, page
8]. The examiner responds that the combination is proper since Kim pertains to
fitting and encoding contours in addition to compressing data [answer, pages 11
and 12].
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We will sustain the examiner's rejection of claim 35. As the examiner
indicates, although Kim does not disclose extracting contour information, Suzuki
amply teaches such extraction for image manipulation and editing [Suzuki, col. 1,
lines 10-24]. As we noted previously, the references are reasonably combinable
and our rationale is also applicable here. See Pages 8-10, supra, of this opinion.
The examiner's rejection of claim 35 is reasonable and therefore sustained.
Since appellant has not separately argued the patentability of dependent
claims 2, 10, 16, 18, 26, 27, and 36, these claims fall with independent claims 1,
12, and 33. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987). See also 37 CFR § 41.37(c)(vii).
We next consider the examiner's rejection of claim 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Kim in view of Suzuki and further in view of
Ikezawa. The examiner essentially finds that the claim differs from the teachings
of Kim and Suzuki in calling for the user input to select, for individual ones of the
contours, at least one of the respective vertices and width of an area of the
graphical image [non-final rejection, pages 8 and 9]. The examiner cites Ikezawa
as disclosing a system where the user can select vertices and the width of an
area [id.]. The examiner then finds that it would have been obvious to one of
ordinary skill in the art at the time of the invention to allow the user to specify
vertices of a contour and width of a contour area to account for complicated
contours [id.].
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Appellant argues that there is no motivation to combine the references
[brief, page 14]. Specifically, appellant argues that no objective evidence exists
establishing that Kim or Suzuki suffer from an inability to process complicated
shapes to motivate one to look to teachings of other references [id.]. The
examiner responds that Ikezawa expressly provides such a motivation -- namely
to better process complicated images by allowing user editing [answer, pages 9
and 10].
We will sustain the examiner's rejection of claim 28. As the examiner
indicates, Ikezawa discloses a contour detection method that enables the user to
designate a rectangular range (i.e., the height and width) of a given area for
contours with complicated shapes [Ikezawa, col. 11, lines 60-66]. We find that
this teaching is reasonably combinable with Kim and Suzuki essentially for the
reasons stated by the examiner. Certainly, complex contours are detected in
Kim and Suzuki, and we see no reason why such complex contour detection
would not benefit from the user-definable input feature of Ikezawa. The
examiner's combination of Ikezawa with Kim and Suzuki is therefore proper and
the rejection is therefore sustained.
We next consider the examiner's rejection of claims 3-5, 7-9, 13, 14, 17,
and 30 under 35 U.S.C. § 103(a) as being unpatentable over Kim in view of
Suzuki and further in view of Catros. Regarding claim 3, the examiner finds that
the claim differs from Kim and Suzuki in calling for using a predetermined
function operable to calculate gradients. The examiner cites Catros as teaching
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using data representing grey levels of the image of the amplitudes and/or
orientations of the gradients as starting data to elaborate image contours
[answer, page 9]. The examiner then finds that it would have been obvious to
one of ordinary skill in the art at the time of the invention to use gradient values
for contour detection in Kim and Suzuki to better represent contours [answer,
page 10]. Regarding claim 4, the examiner further notes that Catros also uses
amplitude values as weights and reduces the contour detection problem to a
"shortest path" problem.
Appellant responds that no motivation exists to combine the references
[brief, page 14]. Specifically, appellant argues that the skilled artisan concerned
with video encoding of known complete boundary image data in Kim would not
be motivated to look to disparate teachings of Catros regarding bridging
disjointed contour elements [id.]. The examiner responds by noting, among other
things, that if Kim's invention were used on an image that contained missing
contours, the skilled artisan would reasonably refer to the teachings of Catros for
a solution to fill in the missing contours [answer, pages 10 and 11]. Appellant
responds that combining Catros with Kim and Suzuki in the manner suggested
by the examiner is improper since, among other things, neither Kim nor Suzuki is
concerned with such discontinuities [reply brief, page 7].
We will sustain the examiner's rejection of claims 3 and 4. We find that
the teachings of Catros are reasonably combinable with Kim and Suzuki
essentially for the reasons stated by the examiner. Indeed, any two adjacent
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vertices (points) in the contour detection systems disclosed in Kim and Suzuki
are essentially "disjointed contour elements" that are "bridged" by detecting a
contour between the points. We see no reason why the skilled artisan would not
reasonably refer to the teachings of Catros for a method to connect such
adjacent "discontinuities" (i.e., points) together by the shortest path that accounts
for image gradient information. The examiner's combination of Catros with Kim
and Suzuki is reasonable; the rejection of claims 3 and 4 is therefore sustained.
Likewise, we will sustain the examiner's rejection of dependent claims 5,
7-9, 13, 14, 17, and 30 under 35 U.S.C. § 103(a) as being unpatentable over the
teachings of Kim in view of the teachings of Suzuki and Catros. We find that (1)
the examiner has established at least a prima facie case of obviousness for
these claims on pages 9-13 of the non-final rejection, and (2) appellant has not
persuasively rebutted the examiner's prima facie case. The rejection is therefore
sustained.
We next consider the examiner's rejection of claims 20-23, 31, and 32
under 35 U.S.C. § 103(a) as being unpatentable over Catros in view of Makram-
Ebeid. Regarding independent claim 20, the examiner finds that Catros
discloses essentially all of the claimed subject matter except for (1) regions
defined by a scale parameter, and (2) contours associated with a scale
parameter [non-final rejection, page 17]. The examiner cites Makram-Ebeid as
teaching a method of merging regions where each region and contour is
associated with a certain scale parameter [non-final rejection, page 18]. The
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examiner concludes that, in view of Makram-Ebeid, it would have been obvious
to one of ordinary skill in the art at the time of the invention to modify Catros to
include a scale parameter to merge similar adjacent regions to aid in correctly
identifying contours [id.].
Appellant argues that there is no motivation to combine the references
[brief, page 15]. According to appellant, the examiner's stated reasoning in citing
Makram-Ebeid pertains solely to problems or concerns of Makram-Ebeid -- not
Catros. Moreover, Catros is concerned with bridging disjointed ends, not
merging regions. According to appellant, the skilled artisan would therefore not
look to Makram-Ebeid to modify Catros [brief, page 16]. The examiner responds
that applying the teachings of Makram-Ebeid to Catros would eliminate a number
of contours (interfaces, boundaries, etc.). According to the examiner, Catros'
goal of bridging contours would be more easily achieved by applying the
teachings of Makram-Ebeid by reducing the number of contours to bridge
[answer, page 13].
Appellant also argues that even if Catros and Makram-Ebeid were
properly combinable, the references still do not disclose all recited claim
limitations, namely (1) weighting the respective shortest path by gradient
calculations; (2) associating contours with a respective scale parameter; and (3)
determining a scale parameter that minimizes variances between regions defined
by the respective contours [brief, pages 18 and 19].
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The examiner responds that Catros uses gradient amplitudes in an
algorithm to determine the best path to connect a disjointed contour [answer,
page 14]. According to the examiner, since these amplitudes are numerical
values associated with a gradient, they reasonably teach weight values [id.]. The
examiner further notes that Makram-Ebeid teaches eliminating interfaces when a
scale parameter increases. Therefore, each eliminated interface has an
associated scale parameter at which it exists [id.]. Moreover, the examiner
indicates that when two regions are merged in Makram-Ebeid, the function
"Energy" is minimized thus likely minimizing intensity variance [answer, pages 14
and 15].
We will sustain the examiner's rejection of claim 20. Makram-Ebeid
discloses an algorithm that eliminates the largest possible number of interfaces
to ultimately merge adjacent regions with practically identical intensities
[Makram-Ebeid, col. 1, lines 43-45]. To this end, the algorithm uses the Energy
function that comprises (1) a first term that accounts for intensity variance in each
image region, and (2) a second term that accounts for the total length of the
image's boundaries, weighted by a scale parameter (λ) [Makram-Ebeid, col. 1,
lines 48-53]. Initially, the value "1" is assigned to the scale parameter λ and
adjacent regions are merged that minimize the Energy function. The resultant
regions are then re-organized and, following a recalculation of the Energy
function terms, a new merger attempt is made with λ=1. This operation is
repeated until there is no longer any region with an adjacent region to merge
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when the scale factor λ=1 [Makram-Ebeid, col. 1, lines 60-62]. The scale factor λ
is then increased to 2, and the process repeated. Ultimately, the goal of
Makram-Ebeid is to merge the regions using the lowest value of the scale
parameter λ [Makram-Ebeid, col. 2, lines 8-10]. Thus, as the value of the scale
parameter increases, the regions are merged until the Energy function cannot be
minimized further [Makram-Ebeid, col. 2, lines 13-15].
In our view, Makram-Ebeid's teaching of eliminating contours is
reasonably combinable with the teachings of Catros essentially for the reasons
stated by the examiner. Furthermore, we agree with the examiner that Catros'
use of gradient amplitudes in an algorithm to determine the most appropriate
path to connect a disjointed contour reasonably constitutes numerical values
associated with a gradient and therefore weight values.
Furthermore, Makram-Ebeid's goal of merging regions by using the lowest
value of the scale parameter λ reasonably suggests selecting an optimal scale
parameter from a plurality of scale parameters by determining a scale parameter
that minimizes variance between regions as claimed. As noted above, Makram-
Ebeid's goal is to merge adjacent regions using the lowest value of the scale
parameter λ [Makram-Ebeid, col. 2, lines 8-10]. This teaching strongly suggests
that the lowest value of the scale parameter is the optimal scale parameter. And
such a scale parameter would also minimize variance between regions via
Makram-Ebeid's merging process that ultimately merges adjacent regions with
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practically identical intensities [Makram-Ebeid, col. 1, lines 43-45]. The
examiner's rejection of claim 20 is proper and is therefore sustained.
Likewise, we will sustain the examiner's rejection of dependent claims 21-
23, 31, and 32 under 35 U.S.C. § 103(a) as being unpatentable over the
teachings of Catros and Makram-Ebeid. We find that (1) the examiner has
established at least a prima facie case of obviousness for these claims on pages
17-20 of the non-final rejection, and (2) appellant has not persuasively rebutted
the examiner's prima facie case. The rejection is therefore sustained.
We next consider the examiner's rejection of claim 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Catros in view of Makram-Ebeid and further
in view of Luo. The examiner's rejection finds that Catros and Makram-Ebeid
disclose essentially all of the claimed subject matter except a user interface for
selecting a width parameter and the two vertices [non-final rejection, pages 20
and 21]. The examiner cites Luo as teaching enabling the user to determine the
width and height of a search stripe for video object segmentation. The examiner
further notes that Luo teaches that the user can define a video object by
specifying its contour [non-final rejection, page 21]. The examiner concludes that
it would have been obvious to one of ordinary skill in the art at the time of the
invention to modify Catros and Makram-Ebeid to include a user interface to
simplify video object segmentation [id.].
Appellant argues that no motivation exists to combine the references
[brief, page 19]. Specifically, appellant emphasizes that Catros uses a square
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with sides equal to the distance separating the respective points A and B at the
ends of the discontinuity [id.]. According to appellant, modifying Catros to
accommodate selection via a user interface is contrary to Catros' teachings and
therefore teaches away from such a combination [id.]. Moreover, appellant
argues that the examiner has provided no objective evidence that Catros suffers
from the problems that concern Luo, namely fully automatic image segmentation
[reply brief, page 9].
The examiner responds that Catros' width parameter D is part of a search
space that is determined automatically [answer, page 15]. The examiner further
notes that Luo discloses a search stripe with a width parameter that can be
limited by a user. The examiner also notes that Luo expressly provides a
motivation to combine the references, namely making image segmentation less
difficult [answer, page 15].
We will sustain the examiner's rejection of claim 24. We agree with the
examiner that Luo reasonably teaches enabling a user to specify both the width
and height of a search stripe for video segmentation. In our view, such a
teaching is reasonably combinable with Catros and Makram-Ebeid essentially for
the reasons stated by the examiner. Although the search space in Catros is a
square, the reference hardly teaches away from providing the ability for a user to
define the search space area as appellant alleges. “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led in a
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direction divergent from the path that was taken by the applicant.” In re Kahn,
441 F.3d at 990, 78 USPQ2d at 1338 (Fed. Cir. 2006) (quoting In re Gurley, 27
F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994)). Nothing in Catros can
be reasonably considered to discourage the skilled artisan from enabling the user
to interactively define the search space area as taught in Luo in the cited
combination or to lead the skilled artisan in a direction divergent from the path
taken by the appellant. At the very least, interactively determining the search
space area would provide at least some degree of flexibility in defining the search
space in Catros. In our view, combining the teachings of Luo with Catros and
Makram-Ebeid is reasonable. The examiner's rejection of claim 24 is therefore
sustained.
Lastly, we consider the examiner's rejection of claims 11 and 19 under
35 U.S.C. § 103(a) as being unpatentable over Kim in view of Suzuki and further
in view of Kim ('337). We find that the examiner has established at least a prima
facie case of obviousness of those claims that appellant has not persuasively
rebutted. Specifically, the examiner has (1) pointed out the teachings of Kim, (2)
pointed out the perceived differences between Kim and the claimed invention,
and (3) reasonably indicated how and why Kim would have been modified to
arrive at the claimed invention [non-final rejection, pages 15 and 16]. Once the
examiner satisfied the burden of presenting a prima facie case of obviousness,
the burden then shifted to appellant to present evidence or arguments that
persuasively rebut the examiner's prima facie case. Here, appellant did not
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persuasively rebut the examiner's prima facie case. The rejection is therefore
sustained.
In summary, we have sustained the examiner's rejection with respect to all
of the claims on appeal. Therefore, the decision of the examiner rejecting claims
1-5, 7-14, and 16-36 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

JS/jaj/rwk

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