Ex Parte Sasada

Board of Patent Appeals and Interferences

May 14, 2008

09460429 (B.P.A.I. May. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RYOJI SASADA
____________

Appeal 2008-1124
Application 09/460,429
Technology Center 2600
____________

Decided: May 14, 2008
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-7 and 9-30. We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was conducted on this appeal on April 10, 2008.
We affirm-in-part.
Appellant’s claimed invention relates to an image synthesizing system
that takes divisional images of portions of an object and uses additional
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information indicating relationships between the images, so that a
synthesized image can be output. (Spec. 1:6-11 and 4:14 – 5:1).
Claim 1 is illustrative of the invention and reads as follows:

1. An image synthesizing system for synthesizing more than one
item of divisional image data respectively representing more
than one image of more than one portion of an object, said
system comprising:

an input unit for inputting said more than one item of divisional
image data and additional information including information
indicating that said more than one item of divisional image data
represents a series of images related to each other, which are to
be synthesized, and position information which indicates
relative positions of the more than one item of divisional image
data at a time when photographs of the more than one item of
divisional image data are taken;

a synthesizing unit for synthesizing said more than one item of
divisional image data based on said additional information to
obtain an item of synthesized image data representing a
synthesized image; and

an output unit for outputting said item of synthesized image
data;

wherein the additional information and the more than one item
of divisional image data are input independently.

The Examiner relies on the following prior art references to show
unpatentability:
Baba US 5,485,500 Jan. 16, 1996
Burt US 5,991,444 Nov. 23, 1999
Le Beux US 6,128,400 Oct. 3, 2000
(filed Jan. 7, 1998)
Dewaele US 6,273,606 B1 Aug. 14, 2001
(filed Dec. 1, 1998)
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Claims 1, 5, 22, 23, 25, and 26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Baba.
Claims 1-7, 9, 13-21, 24, and 26-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dewaele and Le Beux.
Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dewaele, Le Beux and Burt.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but do not to make
in the Briefs have not been considered and are deemed to be waived [see 37
C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C § 102(b), with respect to appealed claims 1, 5, 22,
23, 25, and 26, does Baba disclose all of the elements of those claims to
render them anticipated?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 1-7, 9,
13-21, 24, and 26-30, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Dewaele and Le Beux to render
the claimed invention unpatentable?
(iii) Under 35 U.S.C § 103(a), with respect to appealed claims 10-12,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine Dewaele, Le Beux and Burt to render the claimed
invention unpatentable?

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FINDINGS OF FACT
1. The application details an image synthesizing system for
synthesizing divisional image data from multiple images of an object. The
divisional images and additional information, which indicates that a series of
images are related and the relative positions of the divisional images, are
input. The images and the additional information are used to synthesize the
images such that synthesized image data are output. (Spec. 1:6-11; 15:9 –
17:22; 22:23 – 23:4; Figs. 1, 2a and 2b, elements 1-7, 10, and 17).
2. Independent claim 1 recites, in part, that “the additional
information and the more than one item of divisional image data are input
independently,” and independent claim 26 recites, in part, that the additional
information is a discrete signal and that “the discrete signal is formed
independently of the divisional image data.”
3. Baba discloses an X-ray imaging system. X-rays that are
transmitted through a subject are detected using an X-ray grid to obtain
digital X-ray images. A plurality of images can be joined to form a single
image, using density differences between the images as a joining point to
create a unified coordinate system. The images can also be corrected using a
correction factor table to adjust pixel values of the images. (Abstract; col. 6,
ll. 60-63; col. 7, ll. 30-64; Fig. 3).
4. Dewaele discloses an assembly for recording a radiation image of
an elongate body using a plurality of cassettes, each conveying a recording
member. Supporting devices are arranged for holding the plurality of
cassettes in a staggered arrangement so that the length of the staggered
arrangement is at least equal to the length of the elongate body. This
assembly is exposed to the radiation image of an elongate body. By use of
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partial images which are read from each of the recording members, the entire
image of the elongate body is reconstructed. Grid information is also input
that provides the relative positions of the images with each other. (Abstract;
Col. 4, ll. 9-63; col. 6, ll. 4-11; Figs. 1a-1c, 4, and 5).
5. Le Beux discloses an automatic editing method for a digital
medical imaging unit. The unit obtains scanner output and takes into
account the size of the editing medium through the use of a barcode. Before
the insertion of the cartridge into the reading device, the information relating
to the editing template to be used in editing process is entered. (Abstract;
Col. 5, ll. 7-13 and 31-40; Figs. 2 and 3).
6. Burt discloses processes for performing mosaic based image
compression. The mosaic based display system utilizes special mosaic
storage and manipulation techniques that enable a user to rapidly have a
mosaic displayed on a computer monitor. (Abstract; col. 4, ll. 53-61).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d
628, 631 (Fed. Cir. 1987). 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 (Fed. Cir.
1988).
[T]here must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the
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challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

ANALYSIS
I. Anticipation by Baba
Claims 1, 5, 22, 23, 25, and 26
Appellant argues that Baba is concerned with corrections of image
distortion and the correction table, relied on by the Examiner as teaching the
additional information, (Ans. 3-4), does not provide relative positions of the
divisional images. (App. Br. 14-15; Reply Br. 4-6). The Examiner asserts
that the correction table is information indicating relative positions of the
divisional images since it allows for the images to be joined. (Ans. 12).
Appellant responds that the correction table provides a relation between the
original image and a corrected image, but that is not the same as the position
information recites in independent claims 1 and 26. (Reply Br. 4-6). We
agree with Appellant.
Baba provides that the images can be corrected using a correction
factor table to adjust pixel values of the images. (FF 3). And while a
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plurality of images can be joined to form a single image in Baba, the
correction table is not used for such a purpose. The correction table is used
to correct images before joining and is not used to provide “position
information which indicates relative positions of the more than one item of
divisional image data.” As such, we find that Baba fails to teach all of the
elements of claims 1 and 26 and the anticipation rejection of claims 1 and 26
was made in error.
In view of the above discussion, the Examiner’s anticipation rejection
has been overcome and we reverse the Examiner’s 35 U.S.C. § 102(b)
rejection, based on Baba, of independent claims 1 and 26, as well as
dependent claims 5, 22, 23 and 25.

II. Obviousness over Dewaele and Le Beux
Claims 1-7, 9, 13-21, 24, and 26-30
With respect to the obviousness rejection over Dewaele and Le Beux,
Appellant argues Dewaele’s information, the grid lines, are dependent on the
image data and is not the same as the independently formed discrete signal
and divisional image data, recited in claim 26, or input independently, as
recited in claim 1. (App. Br. 10-12; Reply Br. 6-8). While the Examiner
finds such aspects of the independent claims to be “anticipated by Dewaele,”
(Ans. 10-11), we find the Examiner’s original rejection to be sufficient to
withstand scrutiny without considering the Examiner’s “extra” arguments.
As discussed below, we find Le Beux as teaching these aspects of claims 1
and 26, and need only consider the propriety of combining Dewaele and Le
Beux.
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We note that Figure 3 of Le Beux provides the size of the overall
template and discloses how the individual images fill out that template. The
relative positions of the images would be determined by the specific barcode
that is readout. In other words, the positions of images “1” and “2” would
be different for five of the six templates illustrated, and specifying the
barcode would provide position information. (FF. 5). While Appellant
argues that Le Beux “requires the user to enter the images in the correct
sequence,” (App. Br. 12), independent claim 1 recites no such requirement.
Claim 1 recites that the additional information includes “position
information.” We find it reasonable that the positions of the image in the
templates are analogous to the positions when the photographs were taken.
Claim 1 was rejected over Dewaele and Le Beux and the rejection
finds that it would have been obvious to one of ordinary skill in the art to
have modified Dewaele by using the barcode system of Le Beux to allow
users to group several radiographs together on a single editing page without
manual intervention. (Ans. 7-8). As such, we find that Le Beux provides
such position information and the combination of Dewaele and Le Beux
would provide such additional information being provided independently, as
recited in claim 1. Given the disclosures of the references and the
motivation to combine provided, we find no error in the rejection of claim 1
as being obvious over Dewaele and Le Beux.
With respect to independent claim 26, claim 26 recites that the
additional information includes “information indicating that said more than
one item of divisional image data represents a series of images related to
each other.” It is clear that the barcode in Le Beux provides such relation
data between the images, since the barcode provides the template layout of
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images that are to be taken together. It is also clear that the barcode and its
reading by the system constitute a “discrete signal” that is formed
independently of the image data. (FF. 5). Further, while Appellant argues
that claim 26 also requires that the discrete signal provides “3) the relative
positions of the image data,” (App. Br. 13), we can find no equivalent
recitation in claim 26. As such, we find that Le Beux provides such an
independent discrete signal and the combination of Dewaele and Le Beux
would provide such an image synthesizing system, as recited in claim 26.
With respect to claim 24, Appellant also argues that the teachings of
Le Beux, that the barcode data provides orientation and information, do not
teach or suggest that the additional information does not comprise reference
lattice data. (App. Br. 13-14). The Examiner finds that the reference pattern
may take many different forms, as disclosed by Dewaele. (Ans. 12). We
find that the combination of Dewaele and Le Beux would not need a
reference lattice pattern given the barcode data provided separately from the
image data. As such, we do not find Appellant’s argument with respect to
claim 24 to be compelling.
With respect to claim 27, Appellant argues that neither Dewaele nor
Le Beux teaches that the additional information indicates sequential order of
the images. Appellant argues that Le Beux’s barcode merely provides a
counting device and does not disclose sequential order. (App. Br. 14). The
Examiner responds that Dewaele teaches the sequential order limitation.
(Ans. 12). However, as we have discussed above, Fig. 3 of Le Beux details
the relative orientations of the images, and we find that the disclosure in that
figure would have informed one of ordinary skill in the art. In other words,
the fact that the images are referred to using the numbers one through nine
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implies a specific order of the images. As such, we find that providing the
sequential order of the images in the additional information would have been
obvious to one of ordinary skill in the art in view of Dewaele and Le Beux.
In view of the above discussion, since the Examiner’s obviousness
rejection has not been overcome by any convincing arguments from
Appellant, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection, based on
Dewaele and Le Beux, of claims 1, 24, 26, and 27, as well as dependent
claims 2-7, 9, 13-21, and 28-30, not separately argued by Appellant.

III. Obviousness over Dewaele, Le Beux and Burt
Claims 10-12
We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claims 10-12 based on the combination of Dewaele, Le Beux and
Burt. Appellant has argued that Burt does not make up for the deficiencies
of Dewaele and Le Beux. (App. Br. 15). Since we find no error in the
rejection of claim 1 over Dewaele and Le Beux, from which claims 10-12
depend, we find no deficiencies therein. Consequently, we find no error in
the Examiner’s combination of Dewaele, Le Beux and Burt in the rejection
of claims 10-12.

NEW GROUND OF REJECTION
We enter the following new rejection of claims 22, 23, and 25
pursuant to the provisions of 37 C.F.R. § 41.50(b). Claims 22, 23, and 25
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dewaele in
view of Le Beux and Baba.
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Claims 1 and 5 were rejected by the Examiner as being obvious over
Dewaele in view of Le Beux. (Ans. 5-6). As discussed above, we sustain
that rejection. Neither Dewaele nor Le Beux appears to disclose that the
additional information includes a uniform condition on at least one of the
density and the contrast of more than one item of the divisional image data.
Baba details the use of density differences between the images as a
joining point. (FF. 3). The use of such density data is taught, by Baba, as
allowing for the removal of geometric distortion and density of an image, to
reduce the discontinuity at image joining regions and to perform a more
precise diagnosis. (Baba, Col. 3, ll. 28-34). Thus, we find it would have
been obvious to one of ordinary skill in the art to modify Dewaele and Le
Beux in view of Baba to teach or suggest all of the elements of claims 22,
23, and 25.
Accordingly, claims 22, 23, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dewaele in view of Le Beux and Baba.

CONCLUSION
The decision of the Examiner rejecting claims 1, 5, 22, 23, 25, and 26
under 35 U.S.C. § 102(b) based on Baba is reversed. The decisions of the
Examiner rejecting claims 1-7, 9, 13-21, 24, and 26-30 under 35 U.S.C.
§ 103(a) over the Dewaele and Le Beux, and rejecting claims 10-12 under
35 U.S.C. § 103(a) over the Dewaele, Le Beux and Burt, are affirmed.
Claims 22, 23, and 25 are newly rejected under 35 U.S.C. § 103 as being
unpatentable over Dewaele, Le Beux and Baba.
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Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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. . . .

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

KIS

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