Ex parte Nagao

Board of Patent Appeals and Interferences

Dec 18, 1998

07828092 (B.P.A.I. Dec. 18, 1998)

Application for patent filed January 30, 1992. 1
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journal and (2) is not binding precedent of the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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAGENORI NAGAO
____________
Appeal No. 95-0792
Application No. 07/828,0921
____________
ON BRIEF
____________
Before JERRY SMITH, BARRETT, and FLEMING, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0792
Application No. 07/828,092
2
This is a decision on appeal from the final rejection of
claims 1 through 26, all of the claims pending in the
application.
The invention relates to an image processing method and
apparatus for improving image recognition rates when applied
to character and figure recognition.
The independent claim 1 is reproduced as follows:
1. A digital image processing method,
comprising the steps of:
(a) partitioning a multi-dimensional image
comprising a plurality of image elements into
overlapping multi-dimensional regions;
(b) applying a predetermined weighting
function to the image elements within each
region for distinguishing image elements at the
periphery of each region from image elements at
the center of each region, to provide a weighted
image element value for each image element; and
(c) determining a characteristic output of
each region from the weighted image element
values, the characteristic output comprising one
or more characteristics of the input image
within that region.

The Examiner relies on the following references:
Bishop et al. (Bishop) 4,589,140 May 13,
1986
Waksman et al. (Waksman) 4,745,633 May 17,
1988
Gold et al. (Gold) 4,748,679 May 31,
1988
Appeal No. 95-0792
Application No. 07/828,092
In the final action, claims 1 through 26 were rejected2
under 35 U.S.C. § 101. Upon reconsidering the rejection, the
Examiner withdrew the rejection for claims 2, 10 through 14
and 22 through 26. See the supplemental Examiner's answer
pages 1 and 2.
3
Clark 4,805,225 Feb. 14,
1989
Claims 1, 3 through 9, and 15 through 21 stand rejected
under 35 U.S.C. § 101 as being non-statutory subject matter . 2
Appeal No. 95-0792
Application No. 07/828,092
The Examiner responded to the brief with an Examiner's answer, mailed3
July 12, 1994. The Examiner mailed a supplemental Examiner's answer on June
11, 1996.
4
Claims 1 through 4, 7, 10, 12, 15, 17, 19 and 22 through 24
stand
rejected under 35 U.S.C. § 102 as being anticipated by Gold.
Claims 6, 11 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Gold. Claim 26 stands rejected under
35 U.S.C. § 103 as being unpatentable over Gold and Clark.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gold and Waksman. Claims 9, 14, 21 and 25
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Gold and Bishop.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answers for the3
respective details thereof.
OPINION
After a careful consideration of the record before us, we
will not sustain the 35 U.S.C. § 101 rejection of claims 1, 3
through 9, and 15 through 21, nor will we sustain the 35
U.S.C.
Appeal No. 95-0792
Application No. 07/828,092
5
§ 102 rejection or the 35 U.S.C. § 103 rejections.
With respect to the mathematical algorithm exception, the
Federal Circuit in State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596,
1600 (Fed. Cir. 1998) first identified the judicially created
three categories that are not patentable (laws of nature,
natural phenomena and abstract ideas) citing Diamond v. Diehr,
450 U.S.
175, 185, 209 USPQ 1, 7 (1981). The opinion went on to note
"the
mathematical algorithm is unpatentable only to the extent that
it represents an abstract idea" and is thus not "useful."
State
Street Bank 149 F.3d at 1373 & n.4, 47 USPQ2d at 1600-01 &
n.4. Later in its opinion, the court returned to this issue:
"[T]he mere fact that a claimed invention involves inputting
numbers, calculating numbers, outputting numbers, and storing
numbers, in and of itself, would not render it nonstatutory
subject matter, unless, of course, its operation does not
produce a ‘useful, concrete and tangible result.’" State
Appeal No. 95-0792
Application No. 07/828,092
6
Street Bank 149 F.3d at 1374, 47 USPQ2d at 1602. In this
case, the court stated that "the transformation of data,
representing discrete dollar amounts, by a machine through a
series of mathematical calcula-tions into a final share price,
constitutes a practical application of a mathematical
algorithm ... because it produces ’a useful, concrete and
tangible result’ ...." State Street Bank 149 F.3d at 1373, 47
USPQ2d at 1601.
Significantly, the court concluded its analysis of the
mathematical algorithm issue as follows: "The question of
Appeal No. 95-0792
Application No. 07/828,092
Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980).4
7
whether a claim encompasses statutory subject matter should
not
focus on which of the four categories of subject matter a
claim
is directed to . . . but rather on the essential
characteristics
of the subject matter, in particular, its practical utility."
State Street Bank 149 F.3d at 1375, 47 USPQ2d at 1602. With
respect to the Freeman-Walter-Abele test, the Federal Circuit
held the district court erred in applying it. According to
the court, after Diehr and Chakrabarty were decided by the4
Supreme Court, the test had "little, if any, applicability to
determining the presence of statutory subject matter." State
Street Bank 149 F.3d at 1374, 47 USPQ2d at 1601.
Appellant's independent claim 1 recites a
digital image processing method,
comprising the steps of:
(a) partitioning a multidimensional image
comprising a plurality of image elements into
overlapping multi-dimensional regions;
(b) applying a predetermined weighting function to
the image elements within each region for
distinguishing image elements ...; and
Appeal No. 95-0792
Application No. 07/828,092
8
(c) determining a characteristic output of each
region ....
Appellant's other independent claim 15 recites an
apparatus for processing an image having
a plurality of image elements, comprising:
(a) masking means for partitioning a
multidimensional image into overlapping multi-
dimensional regions;
(b) adjusting means ... for applying a
predetermined weighting function to the image
elements within each region ...; and
(c) computing means ... for determining a
characteristic output of each region ....
For claims 1 and 3 through 9, Appellant argues on page 6 of
the brief that the process steps do not directly or indirectly
recite a mathematical algorithm, but instead define physical
processes performed on a digital image pixel data. In regard
to claims 15 through 21, Appellant argues on pages 6 and 7 of
the brief that the claims recite a machine in means-plus-
function form and these means reciting structural elements
must be construed to be the corresponding structure disclosed
in the specification.
In light of Appellant's arguments, we find that claims 1
and 3 through 9 recite subject matter that is a practical
application of processing a digital image pixel data having a
Appeal No. 95-0792
Application No. 07/828,092
9
plurality of image elements by partitioning the image into
overlapping multi-dimensional regions, applying a weighting
function to the image elements within each region and
determining a characteristic output of each region. In
addition, we find that claims 15 through 21 recite a machine
for processing a digital image pixel data using the above
process. Therefore, we find statutory subject matter.
Claims 1 through 4, 7, 10, 12, 15, 17, 19 and 22 through
24 stand rejected under 35 U.S.C. § 102 as being anticipated
by
Appeal No. 95-0792
Application No. 07/828,092
10
Gold. Appellant argues on page 8 of the brief that with
respect to method claims 1 through 4, 7, 10 and 12, Gold fails
to disclose the claimed steps of partitioning a multi-
dimensional image into overlapping multi-dimensional regions
and applying a predetermined weighting function to the image
elements within each region. Appellant further argues on page
9 that with respect to the apparatus claims 15, 17, 19, 22 and
23, Gold fails to disclose masking means for partitioning a
multi-dimensional image into overlapping multi-dimensional
regions.
On page 10 of the answer, the Examiner argues that Gold
teaches partitioning an image comprising a plurality of image
elements into overlapping regions. The Examiner directs our
attention to the teachings found in column 8, lines 10-29, and
Figure 7 of Gold. On page 18 of the answer, the Examiner
states that it is reasonable to interpret Figure 7 as showing
overlapping multi-dimensional regions.
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,
Appeal No. 95-0792
Application No. 07/828,092
11
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).
We note that the Examiner did not make clear what
elements in the Gold Figure 7 correspond to the claimed
"multi-dimensional image", "image elements" and "multi-
dimensional regions" as recited in Appellant's claims. As
disclosed on page 5 of Appellant's specification and the
abstract, Figure 5 shows a two-dimensional image 23 which is
divided or partitioned into a plurality of overlapping regions
25, 27, 29 and 31. Appellant further discloses that the
pixels, image elements, within each of these regions are
weighted in accordance with a predetermined function.
Turning to the claim language, Appellant's claim 1
recites "partitioning a multi-dimensional image comprising a
plurality of image elements into overlapping multi-dimensional
regions." Furthermore, we note that claim 1 recites "applying
a predetermined weighting function to the image elements
within each region." We note that Appellant's claim 15
recites similar language.
Appeal No. 95-0792
Application No. 07/828,092
12
Gold teaches in column 8, lines 6-12, that Figure 7 shows
a window 132 having a series of lapped pixels 130. We agree
that the Gold window 132 reads on a multi-dimensional image
and the Gold lapped pixels 130 read on image elements.
However, we fail to find that Gold teaches partitioning the
window into overlapping multi-dimensional regions having image
elements within each region as required by the claims.
Therefore, we fail
Appeal No. 95-0792
Application No. 07/828,092
13
to find that Gold teaches all of the limitations recited in
Appellant's claims and thereby we will not sustain the
Examiner's rejection.
Claims 6, 11 and 18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Gold. Claim 26 stands rejected
under
35 U.S.C. § 103 as being unpatentable over Gold and Clark.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gold and Waksman. Claims 9, 14, 21 and 25
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Gold and Bishop. We note that for all of these
rejections of these dependent claims the Examiner relies on
Gold for the above limitations. Therefore, we will not
sustain these rejections for the same reason pointed out
above.
Appeal No. 95-0792
Application No. 07/828,092
14
We have not sustained the rejections of claims 1, 3
through 9, and 15 through 21 under 35 U.S.C. § 101, claims 1
through 4, 7, 10, 12, 15, 17, 19 and 22 through 24 under 35
U.S.C. § 102 and claims 5, 6, 9, 11, 14, 16, 18, 21, 25 and 26
under 35 U.S.C.
§ 103. Accordingly, the Examiner's decision is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-0792
Application No. 07/828,092
15
Thomas H. Close
Eastman Kodak Company
Patent Department
Rochester, NY 14650-2201
Shereece
Appeal No. 95-0792
Application No. 07/828,092
APJ FLEMING
APJ BARRETT
APJ JERRY SMITH
REVERSED
Prepared: October 20, 2000