Ex Parte Skvorc

Board of Patent Appeals and Interferences

Aug 4, 2010

10498188 (B.P.A.I. Aug. 4, 2010)

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.
10/498,188 06/08/2004 Paul Anthony Skvorc II 074941-0383220 4689
909 7590 08/04/2010
PILLSBURY WINTHROP SHAW PITTMAN, LLP
P.O. BOX 10500
MCLEAN, VA 22102
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
08/04/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL ANTHONY SKVORC, II
____________________

Appeal 2009-005020
Application 10/498,188
Technology Center 3600
____________________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and
MICAHEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005020
Application 10/498,188

2
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 1, 3, 6, 7, 11-15, 18, 19, 23 and 24 under 35 2
U.S.C. § 103(a) as being unpatentable over Kawaguchi (JP 5-304851 A, 3
publ. Nov. 19, 1993) and Ebele (EP 1 018 297 A1, publ. Jul. 12, 2000); 4
finally rejecting claim 2 under § 103(a) as being unpatentable over 5
Kawaguchi, Ebele and Jacob2 (FR 2 634 573 A1, publ. Jan. 26, 1990); 6
finally rejecting claims 4 and 16 under § 103(a) as being unpatentable over 7
Kawaguchi, Ebele and Cosman (US 6,006,126, issued Dec. 21, 2999); 8
finally rejecting claims 5 and 17 under § 103(a) as being unpatentable over 9
Kawaguchi, Ebele and Pippy (US 5,222,458, issued Jun. 29, 1993); and 10
finally rejecting claims 8-10 and 20-22 under § 103(a) as being unpatentable 11
over Kawaguchi, Ebele and Barten (4,226,540, issued Oct. 7, 1980). An 12
oral hearing was held on July 22, 2010. We have jurisdiction under 35 13
U.S.C. § 6(b). 14
We REVERSE. 15
Claim 1 recites: 16
1. A system for uniquely identifying a 17
particular individual subject from a group of 18
subjects, wherein each individual subject in said 19
group of subjects includes at least one external 20
characteristic having a plurality of features that are 21
unique to said individual subject, comprising: 22

2 All references to Kawaguchi will be to a computerized English-
language translation, a copy of which may be found in the prosecution
history of the underlying application. All references to Jacob will be to an
English language translation prepared by Shreiber Translations, Inc. in or
about March 2006, a copy of which may be found in the prosecution history
of the underlying application.
Appeal 2009-005020
Application 10/498,188

3
subject processing means for positioning an 1
individual subject from said group of subjects to 2
enable determination of said at least one external 3
characteristic that is unique to said individual 4
subject; 5
image generation means for obtaining an 6
image of said positioned subject that records said 7
plurality of features of said at least one of said 8
external characteristics that are unique to said 9
individual subject; 10
image data processing means for performing 11
a correlation of said plurality of features of said at 12
least one of said external characteristics that are 13
unique to said individual subject as recorded in 14
said image of said positioned individual subject 15
with said plurality of features of said at least one of 16
said external characteristics that are unique to 17
individual subjects in said group of subjects as 18
recorded in previously recorded images of said 19
individual subjects; and 20
database match means for generating an 21
indication of a match when said plurality of 22
features of said at least one of said external 23
characteristics that are unique to said individual 24
subject as recorded in said image of said 25
positioned individual subject matches said 26
plurality of features of said at least one of said 27
external characteristics that are unique to 28
individual subjects in said group of subjects as 29
recorded in one of said previously recorded images 30
of said individual subjects. 31
The limitation “database match means” is recited in “means-plus-32
function” form and is met only if the prior art renders obvious a system 33
including means performing a function identical to that recited for the 34
“database match means.” Claim 13, the only other independent claim on 35
Appeal 2009-005020
Application 10/498,188

4
appeal, recites a method including the step of “generating an indication of a 1
match when said second image of said selected individual subject matches 2
one of said previously recorded first images of said individual subjects.” 3
Kawaguchi discloses a method for mechanically sorting male and 4
female ayu fish. (Kawaguchi, para. 0005). The method causes ayu fish to 5
pass one-by-one before a motion picture camera in conveyance buckets. 6
The motion picture camera photographs the anal fin of each ayu fish as the 7
fish pass before the camera. (Kawaguchi, para. 0012). An image processing 8
system analyses the image of the anal fin of each passing ayu fish to 9
determine whether the fin configuration is that of a male ayu fish or a female 10
ayu fish. (Kawaguchi, para. 0013). The image processing system 11
automatically counts the male and female fish, and then signals the 12
conveyance buckets to direct the male and female fish to separate containers. 13
(Kawaguchi, para. 0013-14). 14
The Examiner finds that Kawaguchi does not disclose: 15
the plurality of features of the at least one of the 16
external characteristics that are unique to the 17
individual subject as recorded in the image of the 18
positioned individual subject matches the plurality 19
of features of the at least one of the external 20
characteristics that are unique to individual 21
subjects in the group of subjects as recorded in one 22
of the previously recorded images of the individual 23
subjects. 24
(Ans. 4). On the other hand, Ebele discloses identifying an individual 25
animal by comparing an image of the iris or retina of the animal to a pre-26
existing visual eye information for known animals. (Ebele, para. 0013). 27
The Examiner concludes that it would have been obvious “to take the device 28
of [Kawaguchi] and add the image data processing means and database 29
Appeal 2009-005020
Application 10/498,188

5
match means of [Ebele], so as to allow for the animals to be quickly 1
identified in a group.” (Ans. 5). 2
The Appellant correctly argues that the Examiner has not articulated 3
reasoning with some rational underpinning adequate to support the 4
conclusion of obviousness. The device of Kawaguchi is designed to solve 5
the problem of sorting out many ayu fish according to sex in a short time. 6
(See Kawaguchi, para. 0005). Distinguishing individual fish by features not 7
shared by all male or all female fish would not assist in grouping the fish 8
according to sex. Therefore, the Examiner has not provided a rational 9
underpinning for the conclusion that one of ordinary skill in the art would 10
have had reason to add elements taught by Ebele to the device of Kawaguchi 11
in order to allow for individual fish to quickly be identified from the batch of 12
fish being sorted in Kawaguchi’s device. 13
In other words, the Examiner has not articulated reasoning with some 14
rational underpinning sufficient to show that one of ordinary skill in the art 15
might have had reason to modify Kawaguchi’s device to include a database 16
match means for performing the identical function recited in claim 1. 17
Neither has the Examiner articulated reasoning with some rational 18
underpinning sufficient to show that one of ordinary skill in the art might 19
have had reason to modify Kawaguchi’s method to include the step of 20
“generating an indication of a match when said second image of said 21
selected individual subject matches one of said previously recorded first 22
images of said individual subjects.” We do not sustain the rejection of 23
claims 1, 3, 6, 7, 11-15, 18, 19, 23 and 24 under § 103(a) as being 24
unpatentable over Kawaguchi and Ebele. 25
Appeal 2009-005020
Application 10/498,188

6
Jacob discloses a device for counting fish as the fish pass through a 1
pipe with a transparent window. (Jacob 2, ll. 12-13 and 5, lines 1-9). 2
Cosman discloses a system for registering between image scan data and real-3
time anatomy and equipment data in a surgical context. (Cosman, col 1, l. 4
63 – col. 2, l. 3). Cosman’s system includes a laser scanner for casting rays 5
in the form of a grid over the external contour of a patient’s head. (Cosman, 6
col. 17, ll. 16-21). Pippy discloses an apparatus that provides a silhouette 7
image with a uniform brightly lit background to facilitate the mechanical 8
counting and measuring of moving aquatic organisms. (Pippy, col. 1, ll. 46-9
55). Barten discloses an automated method for determining the quality of a 10
butchered animal carcass without contacting the carcass. (Barten, col. 2, ll. 11
12-24). 12
The Examiner articulated no reasoning which might explain how any 13
of these references might remedy the deficiencies of the combined teachings 14
of Kawaguchi and Ebele. We do not sustain the rejection of claim 2 under 15
§ 103(a) as being unpatentable over Kawaguchi, Ebele and Jacob; the 16
rejection of claims 4 and 16 under § 103(a) as being unpatentable over 17
Kawaguchi, Ebele and Cosman; the rejection of claims 5 and 17 under 18
§ 103(a) as being unpatentable over Kawaguchi, Ebele and Pippy; or the 19
rejection of claims 8-10 and 20-22 under § 103(a) as being unpatentable 20
over Kawaguchi, Ebele and Barten. 21
22
DECISION 23
We REVERSE the Examiner’s decision rejecting claims 1-24. 24
25
REVERSED 26
Appeal 2009-005020
Application 10/498,188

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mls 1
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PILLSBURY WINTHROP SHAW PITTMAN, LLP 3
P.O. BOX 10500 4
MCLEAN, VA 22102 5