Ex Parte Sonoda

Board of Patent Appeals and Interferences

Sep 26, 2007

09774013 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FUMIHIRO SONODA
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Appeal 2007-1809
Application 09/774,013
Technology Center 2600
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Decided: September 26, 2007
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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Application 09/774,013

STATEMENT OF THE CASE
Appellant invented an image processing method that eliminates
blemishes (scratches, dust, etc.) on an image obtained by photoelectrically
reading an image on a film to obtain an actual image, and performing
blemish elimination processing. In particular, a defective image is read to
provide information regarding a defect on the film. Efficiency is improved
by performing preprocessing on the defective image for blemish elimination
processing while obtaining the actual image.1 Claim 1 is illustrative:
1. An image processing method for photoelectrically reading
an image on a film and then performing a blemish elimination
processing, comprising the steps of:

reading a defective image to provide information regarding a
defect on a film;

then, reading photoelectrically said image to obtain an actual
image;

performing preprocessing for the blemish elimination
processing on said defective image while reading photoelectrically
said image; and

performing the blemish elimination processing on a blemish of
said actual image, based on the defective image subjected to said
preprocessing,

wherein said preprocessing comprises edge enhancement
processing.

The Examiner relies on the following prior art references to show
unpatentability:

1 See generally Specification P. 1, ¶ 1 and P. 7, ¶ 1 – P. 9, ¶ 1.
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Yajima US 4,074,231 Feb. 14, 1978
Stavely US 5,969,372 Oct. 19, 1999

Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Stavely in view of Yajima.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answers for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
As an initial matter, we note that Appellant presents three claim
groups for consideration in the present appeal: (1) claims 1 and 72; (2) claim
2; and (3) claims 4, 5, 8, and 10 (Br. 9-10).
Regarding the first grouping, although Appellant’s arguments are
directed primarily to the patentability of independent claim 1, we would
select independent claim 7 as representative of this grouping because it is
broader than claim 1 and, indeed, is the broadest claim on appeal. See 37
C.F.R. § 41.37(c)(1)(vii).

2 Although Appellant’s arguments are primarily directed to the patentability
of independent claim 1 (Br. 10-15), Appellant also mentions independent
claim 7 in connection with this grouping as allowable for the same reasons
as claim 1 “[t]o the extent claim 7 recites similar elements [as claim 1]” (Br.
15). We therefore presume that Appellant intended to include claim 7 in this
grouping.
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Claim 7 is broader than claim 1 in two significant respects. First,
unlike claim 1, claim 7 does not require reading the image photoelectrically
to obtain an actual image after reading a defective image.3 Claim 7 merely
calls for, in pertinent part, reading a defective image and performing blemish
elimination processing on an actual image obtained by reading the image
photoelectrically.
Second, unlike claim 1, claim 7 does not require performing the
preprocessing step while the image is read photoelectrically.
In light of these key distinctions, we find claim 7 best represents the
subject matter recited in the first claim grouping. As such, we may consider
the patentability of claims in this grouping with respect to claim 7 alone.4
Nevertheless, we will also consider the rejection with respect to independent
claim 1 since all the arguments necessary to render this decision are of
record in this case.

Representative Claim 7
We now turn to the merits of the Examiner’s obviousness rejection of
representative claim 7. 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, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966).

3 Claim 1 recites, in pertinent part, “reading a defective image…” and “then,
reading photoelectrically said image to obtain an actual image” (emphasis
added).
4 See 37 C.F.R. § 41.37(c)(1)(vii).
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Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727, 82 USPQ2d 1395 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill. Sakraida [v.
AG Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness can
be based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” Id., 127 S. Ct. at 1740-41,
82 USPQ2d at 1396. Such a showing requires “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 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.” Id., 127 S. Ct. at 1741, 82 USPQ2d
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at 1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding the independent claims, the Examiner's rejection essentially
finds that Stavely teaches an image processing method for photoelectrically
reading an image on a film with every claimed feature except for the
preprocessing step to comprise edge enhancement processing. The
Examiner cites Yajima as teaching this feature and concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify Stavely’s preprocessing method to enhance edges as
well as detect them to make such boundaries of the defective portions more
recognizable (Answer 3-4).
Appellant argues that Stavely does not perform preprocessing for the
blemish elimination processing on the defective image while reading
photoelectrically the image as claimed (Br. 10) (emphasis in original).
Appellant emphasizes that image processing in Stavely is not preprocessing,
but rather obtains an actual image free of low intensity areas (Br. 10; Reply
Br. 4).
Appellant adds that Stavely’s image processing is not performed on a
defective image, but rather on an actual image. According to Appellant,
Stavely merely uses an infrared image as a template or guide to correct the
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normal image, but the defective image itself is not corrected (Br. 11; Reply
Br. 5-6).
The Examiner notes that Stavely initially identifies specific areas of
the defective image as blemishes. Such a process, the Examiner argues,
fully meets “preprocessing” in accordance with the term’s plain meaning
(Answer 5). The Examiner emphasizes that this “preprocessing” in Stavely
is performed on the defective image by locating surface defects via Scan B
(the infrared scan). According to the Examiner, following this “preprocess,”
Stavely eliminates blemishes on the normal image (i.e., the image obtained
via Scan A) by processing this normal image in accordance with the
blemishes identified in the defective image (i.e., the “preprocessing” stage)
(Answer 6-7).
Appellant also argues that the secondary reference, Yajima, does not
disclose edge enhancement preprocessing performed on the defective image
as claimed (Br. 13-14; Reply Br. 7). Appellant adds that combining Yajima
with Stavely is not obvious since, among other things, edge enhancement
emphasizes sudden changes in image signals. According to Appellant,
providing such processing on the defective image in Stavely would
emphasize small scattered points of low intensity and noise in the infrared
scan “to an unignorable level.” Such an emphasis, Appellant contends,
would lead to a failure in limiting image correction to larger features of the
image (Br. 14; Reply Br. 7-8).
The Examiner responds that since Yajima specifically teaches
enhancing edges without undue influence from outside noise, providing such
edge enhancement in Stavely’s infrared scan would not emphasize noise
(Answer 8).
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We will sustain the Examiner’s rejection with respect to our selected
representative claim 7. Stavely’s film scanner provides dust and scratch
correction by scanning the film 300 twice. In one scan, the image to be
corrected is produced by passing conventional direct visible illumination
through the image on the film and then onto a sensor. Stavely refers to this
normal scan as “Scan A.”
The second scan in Stavely provides a defect signature (i.e., an image
of surface defects) that is produced by passing either dark- or bright-field
infrared light or dark-field visible white light through the image on the film.
Stavely refers to this scan as “Scan B.” Using this defect signature obtained
from Scan B, image processing software then suitably alters corresponding
areas in the image produced by Scan A (Stavely, col. 2, ll. 26-34; col. 4, ll.
18-31; Fig. 3).
The order of Scan A and Scan B is not important (Stavely, col. 4, ll.
24-25). Stavely further notes that the entire image may be (1) sequentially
scanned twice in two separate passes, or (2) each line may be scanned twice
on a line-by-line basis. In the latter case, defect calculations and image
processing are likewise performed on a line-by-line basis (Stavely, col. 2, ll.
43-56; col. 5, ll. 5-23 and 45-65).
Turning to representative claim 7, Stavely’s Scan B -- a scan that can
occur prior to Scan A as the Examiner indicates5 -- fully meets reading a
defective image as claimed. We also agree with the Examiner that
“preprocessing” the defective image does not preclude merely identifying

5 See Answer, at 3; see also Stavely, at col. 4, ll. 24-25 (noting the
unimportance of the order of Scan A and Scan B).
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those areas of the defect signature of Scan B that qualify as defects or
blemishes (i.e., areas to be corrected on the image obtained from Scan A).
Additionally, Stavely’s image processing function eliminates
blemishes on the image obtained from Scan A in accordance with defect
information obtained via the image produced by Scan B – an image that was
“preprocessed” to identify the normal image’s defective areas. Such image
processing fully meets performing “blemish elimination processing” of the
image of Scan A – an image obtained by photoelectrically reading the image
on the film.
In sum, Stavely discloses every feature of representative claim 7
except for the preprocessing to comprise edge enhancement processing.
But, we see no reason why the skilled artisan could not have applied such
edge enhancement for the images produced by Scans A and B in Stavely in
view of the teachings of Yajima. Yajima notes that patterns obtained from
input devices can be blurry where (1) the characteristics of the image pickup
equipment are inferior, or (2) photographing conditions are inferior (Yajima,
col. 1, ll. 14-21). Yajima therefore provides a system that enhances the edge
of a line without being influenced by noises (e.g., smears and stains). To
this end, Yajima utilizes an edge enhancement processor 1 in conjunction
with a noise suppressor 3 (col. 3, l. 54 – col. 4, l. 13; col. 5, ll. 37-45; Fig. 4).
Such a system produces a good quality pattern from a blurred pattern
(Yajima, col. 2, ll. 40-47).
Although Yajima’s edge enhancement technique is used for optical
character recognition of printed and handwritten characters, we see no
reason why such edge enhancement techniques would not be applicable in
an image acquired from a film scanner such as that disclosed by Stavely.
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First, images obtained from a film scanner could be susceptible to blurring
due to a variety of factors including, among other things, the very factors
indicated by Yajima (e.g., inferior imaging equipment and operating
conditions). See Yajima, col. 1, ll. 14-21. Thus, enhancing the edges of the
images obtained from Scans A and B in Stavely would minimize blurring – a
benefit that would, in our view, only enhance Stavely’s image defect
correction. Among other things, such enhancement would more clearly and
accurately define the boundaries of respective image areas, including
defective areas to be corrected.
Appellant’s argument that such enhancement would emphasize low-
intensity points and noise in the infrared scan “to an unignorable level” is
merely speculative and lacks evidentiary support. It is well settled that mere
lawyer’s arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
In any event, even if we assume, without deciding, that enhancing an
image’s edges could emphasize certain lower-intensity points and noise in
and around an image’s boundary region, such emphasis would not
necessarily result in an outright failure to limit image correction to larger
features in Stavely as Appellant suggests. Skilled artisans would recognize
that the degree of edge enhancement would be dependent, at least in part,
upon the particular resolution desired. In our view, the skilled artisan would
readily adjust the appropriate enhancement parameters to provide a
resolution that would enhance the image’s edges, yet not sacrifice the
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system’s ability to discriminate larger image features from scattered low-
intensity points and noise.
For at least these reasons, we will sustain the Examiner’s rejection of
representative independent claim 7. Likewise, we will sustain the
Examiner’s rejection of claims 9, 11, 13, 16, and 20 which fall with claim 7.
See 37 C.F.R. § 41.37(c)(1)(vii).

Independent Claim 1
We now turn to the Examiner’s rejection of independent claim 1. As
an initial matter, our previous discussion in connection with independent
claim 7 with respect to commensurate limitations recited in claim 1 applies
equally here, and we incorporate that discussion by reference.
As we indicated previously, independent claim 1, unlike claim 7, calls
for performing preprocessing on the defective image while reading the
image photoelectrically. This particular limitation is a key point in dispute.
According to Appellant, Stavely does not disclose preprocessing while
reading photoelectrically the image, but rather performs image processing
after obtaining the normal and defective images (Reply Br. 6-7; Supp. Reply
Br. 5).
The Examiner responds that the limitation is met by Stavely for either
of two alternative scanning methods discussed in the reference: (1)
performing entire scans in succession, or (2) switching between scans on a
line-by-line basis. Regarding the latter method, the Examiner readily admits
that Stavely “is not explicit about when the timing of the preprocessing is
performed” (Supp. Answer 3). The Examiner nevertheless contends that
since Stavely is concerned with inefficiencies of performing operations
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serially as opposed to simultaneously (at least in part), it would be readily
apparent to the skilled artisan that preprocessing the defective image would
at least temporally overlap the process of scanning the actual image (Id.).
Appellant argues that since scanning in Stavely is performed on a
line-by-line basis, a defective image has not been read to provide
information regarding a defect on a film by the time preprocessing is
performed on a defective image while reading photoelectrically the image
(Supp. Reply Br. 6).
We will sustain the Examiner’s rejection of independent claim 1.
While we find the Examiner’s specific contention noted above with respect
to what the skilled artisan would ostensibly glean from Stavely
problematic,6 we nevertheless find Appellant’s arguments are simply not
commensurate with the scope of the claim language.
As we indicated previously, the entire image in Stavely may be (1)
sequentially scanned twice in two separate passes, or (2) each line may be
scanned twice on a line-by-line basis (i.e., Scans A and B occur on the same
line). In the latter case, defect calculations and image processing are
likewise performed on a line-by-line basis (Stavely, col. 2, ll. 43-56; col. 5,
ll. 6-23 and 45-65).
The line-by-line mode fully meets the recited order of process steps.
First, since Stavely indicates that the scanning order is unimportant, Scan B
can occur before Scan A. Second, Scan B, in our view, fully meets reading a
defective image to provide information regarding a defect on a film. Then,
Scan A is performed – a scan that involves photoelectrically reading the

6 See Supp. Answer, at 3.
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image in part (i.e., one line at a time) to ultimately obtain an actual image as
claimed.
“Preprocessing” as claimed is fully met by the processing in Stavely
associated with Scan B (i.e., at least the identification of defects discussed
previously). Significantly, in the line-by-line mode, this “preprocessing”
step associated with Scan B – like Scan A – occurs every line of the image.
But nothing in the claim precludes the image that is read photoelectrically
during the preprocessing step to be the entire image. That is, the claim does
not preclude the “defective image” corresponding to the image of the
particular line that is scanned via Scan B, but the photoelectrically-read
image corresponding to the entire image (i.e., all lines read by Scan A).
In this sense, preprocessing on the defective image (i.e., processing of
a line via Scan B) would be performed, at least incrementally, while reading
the entire image photoelectrically. The scope and breadth of independent
claim 1 simply does not preclude this reasonable interpretation. Moreover,
with respect to dependent claim 2, preprocessing for a particular line in the
line-by-line mode would be complete prior to the time the actual entire
image is obtained.
For at least these reasons, we will sustain the Examiner’s rejection of
independent claim 1 and dependent claim 2. We will also sustain the
rejection of claims 3, 6, 12, 14, 15, 19, 21, and 22 which are grouped with
independent claim 1.

Claims 4, 5, 8, and 10
Regarding claims 4, 5, 8, and 10, Appellant contends that the
Examiner improperly referred to the same aspect of Stavely (i.e., the image
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of surface defects and defect signature information) as corresponding to the
“distinctly different” limitations of (1) claims 5 and 8 (flag information), and
(2) claims 4 and 10 (evaluated result) (Br. 15; Reply Br. 8).
We will sustain the Examiner’s rejection. At the outset, we note that
Appellant has cited no authority to support the assertion that a reference
cannot be applied in the manner proposed by the Examiner. Nor has
Appellant disputed the specific teachings in Stavely relied upon by the
Examiner as corresponding to the respective limitations of (1) claims 5 and
8, and (2) claims 4 and 10. Appellant has simply not rebutted the
Examiner’s position in this regard – a position that we find reasonable.
To be sure, claim differentiation principles require us to presume that
each claim has a different meaning and scope. Otherwise, certain claims
would be superfluous. See Free Motion Fitness, Inc. v. Cybex Int’l, Inc.,
423 F.3d 1343, 1351 (Fed. Cir. 2005).
But even if the limitations between (1) claims 5 and 8 (flag
information), and (2) claims 4 and 10 (evaluated result) are “distinctly
different” as Appellant argues, we find no error in the Examiner’s reliance
upon a similar aspect from Stavely to meet these respective limitations.
Dependent claims incorporate by reference all the limitations of the
claim to which they refer. 35 U.S.C. § 112, ¶ 4. For example, dependent
claims 4 and 5 respectively incorporate the limitations of independent claim
1. Similarly, claims 8 and 10 each incorporate the limitations of
independent claim 7. While these claims share common independent claims,
they nevertheless have independent significance and must be separately
assessed for patentability.
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In conducting such an individual assessment, the fact that the same or
similar aspect of an applied reference happens to anticipate or render
obvious distinct limitations recited in different claims hardly precludes such
an interpretation. The Examiner merely interpreted each claim separately
giving each limitation its broadest reasonable interpretation and found that
the Stavely reference taught or suggested these limitations. We find no error
in this approach. Accordingly, the Examiner’s prima facie case of
obviousness based on the collective teachings of Stavely and Yajima has not
been persuasively rebutted.
For the foregoing reasons, we will sustain the Examiner’s rejection of
claims 4, 5, 8, and 10. Likewise, we will sustain the rejection of claims 17
and 18 which fall with claim 4.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-22 is
affirmed.

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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

tdl/gw

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