Ex Parte Miyata

Board of Patent Appeals and Interferences

Feb 25, 2010

10347865 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KAZUNORI MIYATA
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Appeal 2009-008927
Application 10/347,865
Technology Center 2600
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Decided: February 25, 2010
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 5, 6, and 9. These claims stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by US 6,744,461 B1, issued to Wada June 1,
2004 (filing date August, 29, 2000). Claims 10-12 have been allowed.
Claims 1-4, 7, and 8 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b). Oral hearing was held on February 2, 2010.
We reverse the Examiner’s rejection of claims 5, 6, and 9. Pursuant to
our authority under 37 C.F.R. § 41.50(b), we withdraw the allowance of
claims 10-12, and we enter new grounds of rejection as to all of claims 5, 6,
and 9-12.
Appellant’s invention relates to a video camera system used for
monitoring purposes. Such camera systems include pan (right/left) and tilt
(up/down) controls for changing the camera’s direction, thereby changing
the area being monitored. Such systems are further capable of displaying a
video imaged by the camera on a video monitor as well as superimposing a
mask (“mask image”) over an object appearing in an area of the video
(“mask object”) that is desired to be blocked from view. As the camera pans
or tilts, and thereby causes the mask object to change position within the
video display, the mask image moves to track the mask object’s changing
position. During such movement, the mask image might not properly track
the mask object’s changing position, causing the mask object to protrude
from the mask image and become at least partially visible. (Spec. ¶¶ [0001]
– [0007]).
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Appellant’s invention relates to two sets of improvements for such
video camera systems. The first improvement relates to a means for
correcting the size and/or position of the mask images (“correcting the mask
images”) under specified conditions so as to prevent mask objects from
protruding from the mask images (Spec. ¶¶ [0008]-[0016]; claims 5, 6, and
9). For example, the size of the mask images can be enlarged in the
direction of the mask image’s movement (e.g., the mask image gets wider as
the camera pans), with the degree of correction depending on the speed of
the mask image’s movement (Spec. ¶ [0013]).
The second improvement relates to a means for assigning priorities to
individual ones of multiple mask images to be employed (Spec. ¶ [0017];
claims 10-12). The purpose of setting these priorities is to mask only the
most important mask objects when the number of mask objects appearing
within a display image is greater than the maximum number that the video
camera system can mask (Spec. ¶¶ [0017]-[0018]).
Independent claims 5 and 10 are illustrative:
5. In a video camera system capable of carrying out
panning/tilting control of a camera device and capable of
displaying a video imaged by the camera device on a monitor as
well as superimposing a mask image on an arbitrary area within
a range of imaging with the camera device,
the video camera system being characterized in that
in a case where the mask image is moved, the size of the
mask image is corrected both forward and backward or either
forward or backward in the direction of movement,
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the amount of correction of said mask image is adjusted
depending on the movement speed thereof and the amount of
correction increases as the movement speed increases.
10. In a video camera system capable of carrying out
panning/tilting control of a camera device, capable of
displaying a video imaged by the camera device on a monitor as
well as superimposing a maximum of n (n is a natural number
of one or more) mask images within a range of imaging with
the camera device, and capable of similarly superimposing a
maximum of n mask images even within a range of imaging
with the camera device at the time of imaging in another
direction;
the video camera system being characterized by
comprising
means for setting priorities in the mask images.

ISSUES
1. Do claims 5, 6, and 9 set forth the metes and bounds of claim
protection being sought in a manner that both clearly distinguishes what is
claimed from the prior art and also clearly circumscribes what is foreclosed
from future enterprise in accordance with 35 U.S.C. 112, ¶ 2?
2. Does the language of claim 10 render the claim non-enabled for undue
breadth under 35 U.S.C. 112, ¶ 1?
3. Does Appellant’s Specification set forth sufficient structure
corresponding to the “means-plus-function” limitation of claim 10 so as to
satisfy the requirements of 35 U.S.C. § 112, ¶¶ 2 and 6?

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FINDINGS OF FACT (FF)
1. The term “system” includes the following definitions:
1. an assemblage or combination of things or parts forming a
complex or unitary whole: a mountain system; a railroad
system. . . .
4. a coordinated body of methods or a complex scheme or plan
or procedure: a system of government; a winning system at
bridge.
5. any formulated, regular, or special method or plan of
procedure: a system of marking, numbering, or measuring.
Webster’s Encyclopedic Unabridged Dictionary of the English Language, p.
1444 (1989).

PRINCIPLES OF LAW
“Before considering the rejections . . . , we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974).
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

35 U.S.C. § 101.
The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of
carrying out his invention.
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The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention. . . .
An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112, ¶¶ 1, 2, and 6.
35 U.S.C. § 112, ¶ 2 requires that the specification of a
patent “conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.” Because claims delineate
the patentee’s right to exclude, the patent statute requires that
the scope of the claims be sufficiently definite to inform the
public of the bounds of the protected invention, i.e., what
subject matter is covered by the exclusive rights of the patent.
Otherwise, competitors cannot avoid infringement, defeating
the public notice function of patent claims. (“[T]he primary
purpose of the requirement is ‘to guard against unreasonable
advantages to the patentee and disadvantages to others arising
from uncertainty as to their [respective] rights.’”) The Supreme
Court has stated that “[t]he statutory requirement of
particularity and distinctness in claims is met only when [the
claims] clearly distinguish what is claimed from what went
before in the art and clearly circumscribe what is foreclosed
from future enterprise.”
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir.
2008) (internal citations omitted).
[T]he patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
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prosecution rather than attempting to resolve the ambiguity in
litigation.
Id. at 1255.

ANALYSIS
Claims 5, 6, and 9 – 35 U.S.C. § 112, ¶ 2
As a general matter, the technical concepts embodied within claim 5
may be reasonably understandable (see STATEMENT OF THE CASE, supra.).
However, it is a fundamental statutory requirement that a claim be directed
to a process, machine, manufacture, or composition of matter – not merely a
“technology,” “concept,” or a “phenomenon” (see 35 U.S.C. § 101).
Moreover, a claim must also “particularly point[ ] out and distinctly claim [ ]
the subject matter which the applicant regards as his invention” (35 U.S.C. §
112, ¶ 2).
Claim 5, however, effectively recites, "In a video camera system
capable of [performing specified functions], the video camera system being
characterized in that [under certain circumstances, specified phenomena
occur]." As such, it is simply not reasonably clear what statutory class claim
5 is intended to be directed.
The preamble’s recitation of “a system” does not reasonably indicate
what statutory class is intended. A “system” may be either an apparatus or a
method (FF 1). And while it is common for the balance of a “system claim”
to reasonably clarify whether an apparatus or a method is intended, the
balance of claim 5 provides no such clarification. Claim 5 does not recite
any language that can be unambiguously characterized as a method step or a
structural element. Rather, the balance of claim 5 merely states that the
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“system”—or field in which the invention is used – possesses certain
characteristics. One of ordinary skill in the art, then, is not put on reasonable
notice of whether claim 5 is intended to be directed towards process steps
(e.g., changing the sizes of mask images) or alternatively directed towards
structural elements (e.g., a video camera, a pan/tilt controller, a video
monitor, and specially programmed processor).
Furthermore, even if one were to assume, solely for the sake of
argument, that claim 5 is intended to be directed to an apparatus, it is still not
clear what structural elements are intended to be covered. It seems
reasonably clear that the entire system is not intended to be covered because
claim 5 recites “[i]n a video camera system . . .” – as opposed to more
simply reciting “a video camera system . . . .” But this fact begs the
question: what structural elements are included? For example, the claim
may be intended to cover only a processor that is specially programmed to
execute the mask image corrections, but not one or more of the video
camera, pan/tilt controller, and/or video display monitor. Alternatively,
claim 5 may be intended to be directed to a computer readable medium
encoded with software for performing the mask image corrections when
executed on an unclaimed processor. Alternatively still, claim 5 may be
intended to be directed to only the software algorithm per se that performs
the mask image corrections. Or yet again, the claim may be intended to be
directed to only the corrected, enlarged mask image.
Seeing then that claim 5 might even be reasonably interpreted as
being directed to software per se, it is simply not clear whether claim 5 is
directed towards patent eligible subject matter under 35 U.S.C. § 101 (see In
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re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), cert. granted, 77
U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964)), much less
what the metes and bounds are of claim protection being sought. See Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (noting that “if a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite”).
Claims 6 and 9 also set forth claim language that is similar in format
to that of claim 5: "In a video camera system capable of [performing
specified functions], the video camera system being characterized in that
[under certain circumstances, specified phenomena occur]." For the
foregoing reasons, then, we enter a new ground of rejection for claims 5, 6
and 9 as being indefinite under 35 U.S.C. § 112, ¶ 2 for failing to distinctly
claim the subject matter which the applicant regards as his invention.

Claim 6
Claim 6 is indefinite under 35 U.S.C. § 112, ¶ 2 for an additional
reason. Claim 6 recites the following limitation (emphasis added):
“the video camera system being characterized in that in a case
where the mask image is moved, the position of the mask image
is corrected in the direction of movement in view of the fact that
the camera device is also moved during processing for
calculating the amount of movement of the mask image . . . .”

It is not reasonably clear what the italicized claim language “in view
of the fact” is intended to mean. For example, the limitation may be
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interpreted to mean that the position of the mask image is corrected when the
camera device is also moved. Alternatively, the limitation may be
interpreted to mean that the position of the moving mask image is corrected
in relation to the moving mask object. That is, at least two equally plausible
interpretations of claim 6 exist. See Miyazaki, supra.

Prior art rejection of claims 5, 6, and 9
For the reasons expressed in this opinion, claims 5, 6, and 9 are
indefinite. Therefore, the prior art rejection must fall, pro forma, because it
is necessarily based on speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be
understood, however, that our decision to reverse the Examiner’s prior art
rejection of claims 5, 6, and 9 is based solely on the indefiniteness of the
claimed subject matter and does not necessarily reflect on the adequacy of
the prior art evidence applied in support of the rejection of these claims.

Claim 10 – 35 U.S.C. § 112, ¶ 1
Independent claim 10 differs from claims 5, 6, and 9 in that claim 10
recites “the video camera system being characterized by comprising means
for setting priorities in the mask images.” Because claim 10 additionally
employs the transition word “comprising,” we understand the language that
follows “comprising” to be a claim limitation as opposed to being part of the
preamble. That is, we interpret claim 10 as possessing a single limitation:
“means for setting priorities in the mask images.”
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When a claim uses the term “means” to describe a limitation, a
presumption inheres that the inventor used the term to invoke § 112, ¶ 6.
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This
presumption can be rebutted where the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its
entirety.” Id. In the present case, though, no additional structure is recited.
As such, we conclude that the inventor used the term “means” to invoke §
112, ¶ 6.
Claim 10, then, is a “single means” claim: “a claim drafted in ‘means-
plus-function’ format yet reciting only a single element instead of a
combination” (see In re Hyatt, 708 F.2d 712 (Fed Circ. 1983)). We
therefore reject claim 10 as non-enabled for undue breadth under 35 U.S.C.
112, ¶ 1. See Hyatt, at 714-15 (holding that single means claims are subject
to rejection under 35 U.S.C. § 112, ¶ 1 for insufficient disclosure because
the claim “covers every conceivable means for achieving the stated result,
while the specification discloses at most only those means known to the
inventor”).
Claim 12 depends from claim 10 and sets forth further characteristics
of the video camera system. Because the Board of Patent Appeals and
Interferences is a review body, rather than a place of initial examination, we
have not reviewed claim 12 to the extent necessary to determine whether this
claim language is intended to (1) further narrow only the preamble of claim
10 (in which case claim 12 would also constitute a single-means claim), or
alternatively (2) constitute an additional claim limitation. We leave it to the
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Examiner to determine the appropriateness of any further rejections under 35
U.S.C. § 112, ¶ 1 for insufficient disclosure.

Claims 10 through 12 – 35 U.S.C. § 112, ¶ 2
Claims 10 through 12 are rejected under 35 U.S.C. § 112 ¶ 2 as
indefinite for failing to distinctly claim the subject matter which the
applicant regards as his invention.
Once a court concludes that a claim limitation is a means-plus-
function limitation, two steps of claim construction remain: 1) the court must
first identify the function of the limitation; and 2) the court must then look to
the Specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003). “If there is no structure in the specification
corresponding to the means-plus-function limitation in the claims, the claim
will be found invalid as indefinite.” Biomedino, LLC v. Waters
Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
In a means-plus-function claim in which the disclosed structure is a
computer or microprocessor programmed to carry out an algorithm, the
Specification need not “produce a listing of source code or a highly detailed
description of the algorithm to be used to achieve the claimed functions in
order to satisfy 35 U.S.C. § 112 ¶ 6.” Aristocrat Techs. Austl. Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008). However, the
Specification must “at least disclose the algorithm that transforms the
general purpose microprocessor to a ‘special purpose computer programmed
to perform the disclosed algorithm.’” Id. (citing WMS Gaming, Inc. v. Int’l
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Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). If a person of ordinary
skill in the art recognizes the patent as not disclosing any algorithm at all,
the means-plus-function limitation lacks sufficient disclosure of structure
under 35 U.S.C. § 112 ¶ 6 and is therefore indefinite under 35 U.S.C. § 112
¶ 2. Aristocrat at 1338.
Turning to the present Specification, we find no disclosure of any
underlying structure corresponding to claim 10’s recited function of “setting
priorities in the mask images.” For example, in the discussion of the mask
image display processing flowchart that is depicted in Figure 8, the
Specification merely states, “First, a priority assigned to a mask image to be
checked is designated as the highest priority (step S1)” (Spec. ¶ [0050]).
Also, the flowchart box, step S1, of Figure 8 merely states “DESIGNATE
PRIORITY ASSIGNED TO MASK IMAGE TO BE CHECKED AS
HEGHEST [sic] PRIORITY.”
Without any further disclosure or clarification, then, one cannot
reasonably determine whether the claimed “means for setting priorities” is,
for example, (1) a keyboard or mouse that a human uses to enter data after
mentally determining the priorities, or alternatively (2) a software algorithm
that automatically sets priorities based upon programmed factors.
Accordingly, we find that the means-plus-function limitation of claim 10
lacks sufficient disclosure of structure under 35 U.S.C. § 112 ¶ 6. As such,
claim 10, as well as dependent claims 11 and 12, is indefinite under 35
U.S.C. § 112 ¶ 2.
Dependent claim 11 sets forth an additional mean-plus-function
limitation. However, because the Board of Patent Appeals and Interferences
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is a review body, rather than a place of initial examination, we have not
reviewed claim 11 to the extent necessary to determine whether this
limitation, in fact, also invokes 35 U.S.C. § 112 ¶ 6 or if so, whether the
Specification provides sufficient disclosure of structure corresponding to this
claim language. We leave it to the Examiner to determine the
appropriateness of any further rejections under 35 U.S.C. § 112, ¶ 2 for
indefiniteness.

CONCLUSIONS
1. Claims 5, 6, and 9 do not set forth the metes and bounds of claim
protection being sought in a manner that both clearly distinguishes what is
claimed from the prior art and also clearly circumscribes what is foreclosed
from future enterprise in accordance with 35 U.S.C. 112, ¶ 2.
2. The language of claim 10 renders the claim non-enabled for undue
breadth under 35 U.S.C. 112, ¶ 1.
3. Appellant’s Specification does not set forth sufficient structure
corresponding to the “means-plus-function” limitation of claim 10 so as to
satisfy the requirements of 35 U.S.C. § 112 ¶¶ 2 and 6.

DECISION
(1) We do not reach the merits of the Examiner’s art-based rejection of
claims 5, 6, and 9 under 35 U.S.C. § 102. Therefore, the Examiner’s
decision rejecting claims 5, 6, and 9 is reversed pro forma.
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(2) Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection for claims 5, 6, and 9-12 under 35 U.S.C. § 112, ¶¶ 1
and 2.
(3) Since we have entered new grounds of rejection, our decision is not a
final agency action.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).

REVERSED
37 C.F.R. § 41.50(b)

gvw

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