Ex Parte Majewicz

Patent Trial and Appeal Board

Jan 13, 2017

13492274 (P.T.A.B. Jan. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/492,274 06/08/2012 Peter Majewicz 82974859 1749
22879
HP Tnr
7590 01/18/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
HALIYUR, PADMA
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
01/18/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER MAJEWICZ
Appeal 2016-003784
Application 13/492,2741
Technology Center 2600
Before LARRY J. HUME, LINZY T. McCARTNEY, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—9 and 12—21, which constitute of all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 2.
2 Claims 10 and 11 have been canceled. App. Br. 24.
Appeal 2016-003784
Application 13/492,274
INVENTION
Appellant’s application relates to creating adjusted digital images with
selected pixel values. Abstract. Claim 1 is illustrative and reads as follows:
1. A method for creating an adjusted digital image,
comprising:
taking or receiving multiple digital images of a view where
at least two of said multiple digital images are taken with light
from different angles, and wherein each of said multiple digital
images comprises a set of pixel values;
without performing calculations on said multiple digital
images, selecting a pixel value from one of said multiple digital
images for each pixel of said adjusted digital image; and
without performing calculations on said selected pixel
values, forming a composite of said selected pixel values to
create said adjusted digital image.
REJECTIONS
Claims 1 and 93 stand rejected under 35U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1—9 and 12—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Eisenmann et al. (US 7,362,882 B2;
issued Apr. 22, 2008) (“Eisenmann”) and Ikeda et al. (US 2004/0042640
Al; published Mar. 4, 2004) (“Ikeda”).
3 The Examiner did not reject dependent claims 2—8, 12, 16, and 21 as also
failing to comply with the written description requirement. See Final Act.
3^4. In case of further prosecution, the Examiner should also evaluate those
claims under 35 U.S.C. § 112, first paragraph.
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Application 13/492,274
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a)4 as
unpatentable over the combination of Eisenmann, Ikeda, and Berkovich et
al. (US 2011/0273620 Al; published Nov. 10, 2011).
Claims 18—21 stand rejected under 35 U.S.C. 103(a)5 as unpatentable
over the combination of Eisenmann, Ikeda, and Eemke (US 2005/0129324
Al; published June 16, 2005).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Rejection of Claims 1 and 9 under 35 U.S.C. § 112
In rejecting claim 1, the Examiner found the limitation “without
performing calculations on said multiple digital images” is not described in
the Specification in such a way as to reasonably convey to one skilled in the
4 The Examiner incorrectly indicated that claims 16 and 17 were rejected
under 35 U.S.C. § 102(b). Final Act. 13. Because the claims were rejected
over a combination of prior art references, we understand the Examiner to
have rejected the claims under 35 U.S.C. § 103(a). We find that the
Examiner’s misstatement amounts to harmless error.
5 The Examiner incorrectly indicated that claims 18—21 were rejected under
35 U.S.C. § 102(b). Final Act. 15. Because the claims were rejected over a
combination of prior art references, we understand the Examiner to have
rejected the claims under 35 U.S.C. § 103(a). We find that the Examiner’s
misstatement amounts to harmless error.
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Appeal 2016-003784
Application 13/492,274
relevant art that the inventor, at the time the application was filed, had
possession of the claimed invention. Final Act. 3^4.
Appellant contends the Examiner erred by not explaining why an
artisan of ordinary skill would not have recognized that the inventor was in
possession of the invention as claimed in view of the disclosure of the
application as filed. App. Br. 10. Appellant further contends the
Specification describes a processor that selects a highest or lowest pixel
values without calculations being performed on the digital images, which
supports the disputed limitation. Id. at 11 (citing Spec. 1 65).
Appellant’s arguments do not persuade us of Examiner error. We
agree with the Examiner that paragraph 65 of Appellant’s Specification
discloses “selection” of pixels, but does not disclose that “calculations are
not performed on these pixels.” See Ans. 20. Moreover, the disputed
limitation is a negative limitation that was added by amendment during
prosecution. Paragraph 65 of the Specification, however, does not identify
any “description of] a reason to exclude the relevant limitation.” Santarus,
Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)
(“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.”).
For these reasons, we are not persuaded the Examiner erred in finding
the disputed negative limitation is not described in the Specification in such
a way as would reasonably have conveyed to one skilled in the relevant art
that the inventor(s) had possession of the claimed invention.
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Application 13/492,274
Accordingly, we sustain the 35 U.S.C. § 112, first paragraph, written
description rejection of independent claim 1, as well as the 35 U.S.C. § 112,
first paragraph, rejection of independent claim 9, which Appellant argues is
patentable for similar reasons. App. Br. 10.
Rejection of Claims 1, 4—9 and 12, 13, 16—21 under 35 U.S.C. § 103(a)
Appellant contends the Examiner erred in rejecting claim 1 as obvious
over the combination of Eisenmann and Ikeda because Ikeda does not teach
the limitation “without performing calculations on said multiple digital
images, selecting a pixel value from one of said multiple digital images for
each pixel of said adjusted digital image,” recited in claim 1. App. Br. 12.
Appellant argues that, in Ikeda, “pre-processing occurs on an input image
prior to selection of either the pre-processed image or the input image in
forming the composite image.” Id. (citing Ikeda H 44, 48).
Regarding the question of how much, if any, patentable weight should
be given to the negative limitation “without performing calculations on said
multiple digital images” in claim 1, we found above that Appellant’s cited
support in the Specification does not identify any description of a reason to
exclude the relevant limitation. Santarus, 694 F.3d at 1351. Thus, we do
not give the disputed limitation in claim 1 patentable weight.
To the extent the disputed limitation may be given patentable weight
by our reviewing court, however, Appellant fails to rebut the Examiner's
specific findings made in response to Appellant’s arguments. In the Answer,
the Examiner identified in Figure IB of Ikeda the selection of an input image
where no preprocessing is performed. Ans. 21—22 (citing Ikeda Figs. 1, 2;
49, 50). In particular, the Examiner identified the input from image input
section 11 to combining section 13 as teaching or suggesting the disputed
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Application 13/492,274
limitation. Id. at 21. In the Reply Brief, Appellant argues that “even images
input to the Ikeda system that are not processed via the pre-processing
section (12) are still processed via the local-area-specific determining
section (15).” Reply Br. 9. Appellant, however, does not persuasively rebut
the Examiner’s finding with regard to the input from input section 11 to
combining section 13 in Figure IB, which does not enter the local-area-
specific determining section 15.
Instead, Appellant presents two new arguments for the first time in the
Reply Brief. Reply Br. 10. Appellant argues neither Eisenmann nor Ikeda
describe selection of a pixel value, and that Ikeda only selects a pixel within
a range without considering “each pixel of [an] adjusted digital image.” Id.
Appellant, however, has waived these arguments because they were
presented for the first time in the Reply Brief without a showing of good
cause. See 37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93
USPQ2d 1473, 1473-74 (BPAI 2010 (informative opinion) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.”).
For these reasons, we are not persuaded the Examiner erred in finding
that the combination of Eisenmann and Ikeda teaches or suggests the
limitations of claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 1, as well as the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 9 and 13, which Appellant argues are
patentable for similar reasons. See App. Br. 14—17. We also sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of dependent claims 4—8 and 12,
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Application 13/492,274
16—21, for which Appellant presents no additional substantive arguments.
See id. at 17—20.
Rejection of Claims 2, 3, 14, and 15 under 35 U.S.C. § 103(a)
Claim 2 depends from claim 1 and further recites “wherein selecting a
pixel value from one of said multiple digital images comprises selecting a
highest pixel value from among corresponding pixels of said multiple digital
images.” App. Br. 22. Appellant contends Ikeda does not teach the
limitation recited in claim 2 because Ikeda processes only a single input
image. App. Br. 18. Appellant makes similar arguments for claims 3, 14,
and 15, which recite similar limitations. Id. at 18—19.
Appellant’s arguments do not persuade us the Examiner erred. In
response to Appellant’s arguments, the Examiner identified Figures 2A-2E
of Ikeda as teaching multiple images. Ans. 22. In the Reply Brief,
Appellant argues “simply because Ikeda describes an input image and a pre-
processed image (e.g., more than one kind of image), it does not follow that
Ikeda describes selecting a lowest or highest pixel value ‘from among
corresponding pixels of said multiple digital images. ”’ Reply Br. 17.
While Appellant addresses the input image and pre-processed images shown
in Figures 2A and 2B, Appellant does not address the input images for each
local area in Figures 2A, 2B, 2D, and 2E, or the multiple input images
shown in Figure 2C, for example. Thus, Appellant has not completely or
persuasively rebutted the Examiner’s findings with regard to Figures 2A—2E
of Ikeda.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Eisenmann and Ikeda teaches or suggests the limitations
of claim 2.
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Application 13/492,274
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of dependent claim 2, as well as the Examiner’s 35 U.S.C. § 103(a)
rejections of dependent claims 3, 14, and 15, which Appellant argues are
patentable for similar reasons. See App. Br. 17—20.
DECISION
We affirm the decision of the Examiner rejecting claims 1—9
and 12-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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