Ex parte Mayer

Board of Patent Appeals and Interferences

Sep 11, 1998

07917108 (B.P.A.I. Sep. 11, 1998)

Application for patent filed August 9, 1993.1
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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(2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JORG MAYER
__________
Appeal No. 95-4373
Application 07/917,1081
__________
ON BRIEF
__________
Before HAIRSTON, MARTIN and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 10 through 19. Claims 1 through 9 have been canceled.
The invention is directed to a process for preparing image
data for transmission purposes, wherein the image data of an
Appeal No. 95-4373
Application 07/917,108
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original image are broken down into image zones, and transfor-
mation-coded data are prepared and/or a motion vector is
determined per image zone as a function of a change criterion,
for example a threshold value that serves to distinguish between
changed and unchanged image zones.
Independent claim 10 is reproduced as follows:
10. In a process for preparing image data in the form
of image data signals for transmission, wherein the
image represents successive original images, each
original image is divided into a plurality of image
regions, each image region is associated with a
respective portion of the image data and each image
data portion has a characteristic, the process
including comparing the characteristic of the image
data portion associated with each image region of each
original image with the characteristic of the image
data portion of the same image region of the
immediately preceding original image to produce an
indication of any difference between the image data
portions with respect to the characteristic, comparing
each difference indication with a threshold value
representing a selected difference indication, and,
based on each difference indication which exceeds the
threshold value, performing at least one operation
selected from the group consisting of preparing
transformation-coded data and determining a motion
vector, the improvement comprising changing the
threshold value from one original image to the next so
that the threshold value has a low value for a first
group of original images and a high value for a second
group of original images, where the original images of
the first group alternate with the original images of
the second group, the high value being selected so
that for each original image of the second group, said
performing step based on each difference indication
will be carried out for only a small number of image
regions in which major changes occur relative to the
preceding original image.
Appeal No. 95-4373
Application 07/917,108
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The reference relied on by the Examiner is as follows:
Tzou 4,698,689 Oct. 06, 1987
This specification is objected to under 35 U.S.C. § 112,
first paragraph, as the specification, as originally filed, does
not provide support for the invention as is now claimed. Claims
10 through 19 stand rejected under Claims 1 through 4 and 9
through 11 stand rejected under 35 U.S.C. § 112, first paragraph,
for not having support from the specification, as originally
filed. Claims 10 through 12 and 15 through 19 stand rejected
under 35 U.S.C. § 102 as being anticipated by Tzou. Claims 13
and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Tzou. On page 2 of the Examiner’s answer, the Examiner
states that the rejection under 35 U.S.C. § 101 has been
withdrawn.
Rather than repeat the arguments of Appellant or the
Appeal No. 95-4373
Application 07/917,108
Appellant filed an appeal brief on October 19, 1994. We will refer to2
this appeal brief as simply the brief. Appellant filed a supplemental appeal
brief on December 19, 1994. We will refer to this supplemental appeal brief
as the supplemental brief. Appellant filed a reply appeal brief on January
25, 1995. The Examiner's letter, paper number 24 mailed on March 15, 1995,
states that the supplemental brief has been entered and considered by the
Examiner, but the reply appeal brief has not been entered nor considered.
Appellant filed another reply appeal brief on May 28, 1997. We will refer to
this reply appeal brief as the reply brief. The Examiner responded to the
reply brief with a letter, paper number 31 mailed on July 9, 1997, stating
that the reply brief has been entered and considered by the Examiner but no
further response by the Examiner is deemed necessary.
The Examiner mailed an Examiner's answer on November 23, 1994. In3
response to our remand, the Examiner mailed another Examiner's answer on March
28, 1997. We note that the latter Examiner's answer is to replace the earlier
answer. Thus, the March 28, 1997 Examiner's answer is the only Examiner's
answer that is before us for our consideration. We will refer to the March
28, 1997 Examiner's answer as the answer.
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Examiner, we make reference to the briefs and the answer for 2 3
the details thereof.
OPINION
We will not sustain the rejection of claims 10 through 19
under 35 U.S.C. § 112, first paragraph.
"The function of the description requirement [of the first
paragraph of 35 U.S.C. 112] is to ensure that the inventor had
possession, as of the filing date of the application relied on,
of the specific subject matter later claimed by him." In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). "It is
not necessary that the application describe the claim limitations
exactly, . . . but only so clearly that persons of ordinary skill
in the art will recognize from the disclosure that appellants
Appeal No. 95-4373
Application 07/917,108
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invented processes including those limitations." Wertheim,
541 F.2d at 262, 191 USPQ at 96 (citing In re Smythe, 480 F.2d
1376, 1382, 178 USPQ 279, 284 (CCPA 1973)). Furthermore, the
Federal Circuit points out that "[i]t is not necessary that the
claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in the
art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372
(Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985), (citing In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983)).
The Examiner argues on pages 3 and 4 of the answer that the
disclosure as originally filed does not provide a description of
the amendments to the specification which recite “setting the
threshold value for an original image following a preceding
original image so high” and "for those images which the threshold
was set high." We note that appellant amended the specification
by filing an amendment on April 28, 1994. On page 2 of this
amendment, the specification is amended by adding the above
language to the specification.
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Application 07/917,108
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Appellant argues on page 3 of the supplemental brief that
these amendments to the specification are simply inserting the
language found in the original claims. Appellant points out that
original claim 1 recites "characterized in that the threshold
value for the next original image following the original image is
set so high that ...." Appellant points out on page 4 of the
supplemental brief that original claim 3 recites "for those
images in which the threshold was set high." Appellant argues
that the amendment to the specification corresponds in substance,
if not identically, to the recitation appearing in the original
claims and therefore cannot constitute new matter.
The issue before us is whether the inventor had possession,
as of the filing date of the application relied on, of the
specific subject matter later claimed by him. We note that
appellant’s original claims are to be considered as the original
disclosure as filed and are to be considered with the entire
filing in our determination of whether the inventor had
possession at the time of the filing date of the application.
We find that the above amendments to the specification
correspond in substance to the recitations found in the original
claims as filed on the application date and thereby Appellant did
Appeal No. 95-4373
Application 07/917,108
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have possession at the time of the filing date of the applica-
tion. Therefore, we will not sustain the Examiner’s rejection of
claims 10 through 19 under 35 U.S.C. § 112, first paragraph.
The Examiner further argues that claim 12 recites "trans-
mitting the prepared image data" which is not supported in the
original disclosure. However, we note that claim 12 was amended
so the claim does not recite this limitation. Therefore, this
argument is moot.
We now turn to the rejection under 35 U.S.C. § 102. After a
careful review of the evidence before us, we do not agree with
the Examiner that claims 10 through 12 and 15 through 19 are
anticipated by the applied references.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
Appellant argues on page 12 of the brief that Tzou fails to
teach Appellant's claimed invention of having two different
threshold values which alternate with one another from one
Appeal No. 95-4373
Application 07/917,108
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original image to the next. Appellant further argues on pages 2
and 3 of the reply brief that Appellant's independent claims 10
and 12 recite this limitation. In particular, Appellant states
that the Examiner has not taken into account the following
limitation of claims 10 and 12:
the improvement comprising changing the threshold value
from one original image to the next so that the
threshold value has a low value for a first group of
original images and a high value for a second group of
original images, where the original images of the first
group alternate with the original images of the second
group. [Emphasis added].

Appellant argues that Tzou fails to teach a procedure in which
the high threshold value will alternate with a low threshold
value from one original image to the next.
On pages 4 and 5 of the answer, the Examiner argues that
Tzou teaches changing the threshold for the original image to the
next in tables 1 and 2 and in column 5, lines 32-36 and column 6,
lines 12-29. The Examiner argues that Appellant's claims do not
require only two different threshold values which alternate.
However, we find that when reading the Appellant's claims as
a whole, the claims do require a process in which the high
threshold value will alternate with a low threshold value from
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Application 07/917,108
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one original image to the next when properly taking into account
that the claims require the original images of the first group
that are assigned a low threshold value to alternate with the
original images of the second group that are assigned a high
threshold value. Upon a careful review of Tzou, we fail to find
that Tzou teaches this process. Therefore, we find that Tzou
fails to teach all of the limitations of claims 10 through 12 and
15 through 19, and thereby the claims are not anticipated by
Tzou.
In regard to the rejection of claim 13 and 14 under 35
U.S.C. § 103 as being unpatentable over Tzou, we note that the
Examiner is relying on the above argument. Therefore, we will
not sustain this rejection as well for the same reasons as above.
In view of the foregoing, the decision of the Examiner
rejecting claims 10 through 19 is reversed.
REVERSED
Appeal No. 95-4373
Application 07/917,108
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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN C. MARTIN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4373
Application 07/917,108
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