Ex Parte Stearns

Board of Patent Appeals and Interferences

Jan 14, 2004

09440233 (B.P.A.I. Jan. 14, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES W. STEARNS
____________
Appeal No. 2002-1646
Application No. 09/440,233
____________
ON BRIEF
____________
Before THOMAS, KRASS, and RUGGIERO, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-22, which are all of the claims pending in the present
application.
The claimed invention relates to a method for converting
digitized image pixel values from an input dynamic range to an
output dynamic range for eventual display of an overall image. A
lower limit of the relevant portion of the input data dynamic range
is identified from a histogram representative of the number of
Appeal No. 2002-1646
Application No. 09/440,233
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pixels having predetermined digital intensity values. A log-
transformed histogram, which is used to determine a threshold value
for the log-transformed image, is developed based on the input
value histogram. An upper limit value of the relevant portion of
the input data range is identified from the log-transformed
histogram based on the determined threshold value. With the lower
and upper limits of the useful portion of the input dynamic range
determined, the pixel values are scaled from the input dynamic
range to the second dynamic range.
Claim 1 is illustrative of the invention and reads as follows:
1. A method for converting digitized image pixel values from
a first range to a second range, the method comprising the steps
of:
(a) determining a lower limit value of a relevant portion of
the first range based upon non-log transformed pixel values;
(b) generating an intensity histogram representative of pixel
populations having specified intensities, and transforming the
histogram to generate a log-transformed histogram;
(c) identifying a threshold value for an upper limit of log-
transformed values from the log-transformed histogram;
(d) identifying a population of pixels having log-transformed
values having a desired relationship to the threshold value;
(e) determining an upper limit value of the relevant portion
of the first range based upon the identified population;
(f) converting the non-log transformed pixel values to
converted values; and
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Application No. 09/440,233
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(g) transmitting information relating to an image associated
with the pixel values or source thereof between a first location
and a second location remote from the first location to provide
remote services.
The Examiner relies on the following prior art:
Hara et al. (Hara) 4,950,894 Aug. 21, 1990
Haskin 5,005,126 Apr. 02, 1991
Shimura 5,060,081 Oct. 22, 1991
Kobayashi et al. (Kobayashi) 5,757,022 May 26, 1998
Claims 1-22 stand finally rejected under 35 U.S.C. § 103(a).
As evidence of obviousness, the Examiner offers Kobayashi in view
of Shimura and Haskin with respect to claims 1-7, 9-11, and 13-21,
and adds Hara to the basic combination with respect to claims 8,
12, and 22.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 8) and Answer
(Paper No. 9) for the respective details.
OPINION
We have carefully considered the subject matter on appeal, the
rejection advanced by the Examiner and the evidence of obviousness
relied upon by the Examiner as support for the rejection. We have,
likewise, reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Brief along with
the Examiner’s rationale in support of the rejection and arguments
in rebuttal set forth in the Examiner’s Answer.
Appeal No. 2002-1646
Application No. 09/440,233
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It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims
1-22. Accordingly, we reverse.
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 is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Appeal No. 2002-1646
Application No. 09/440,233
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Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1, 9, and 15, Appellant’s
response to the obviousness rejection asserts a failure by the
Examiner to establish a prima facie case of obviousness since
proper motivation for the Examiner’s proposed combination of
references has not been set forth. After reviewing the arguments
of record from Appellant and the Examiner, we are in general
agreement with Appellant’s position as stated in the Brief.
Our interpretation of the applied Kobayashi and Shimura
references coincides with that of Appellant, i.e., in contrast to
the claimed invention which requires a combination of log-
transformed and non-log transformed data for image conversion,
Kobayasi utilizes only non-log transform values while Shimura
employs only log transform data. Given this deficiency in the
disclosures of the applied prior art, we can find no teaching or
suggestion, and the Examiner has pointed to none, as to how and in
what manner the Kobayashi and Shimura references might have been
combined to arrive at the claimed invention. The mere fact that
the prior art may be modified in the manner suggested by the
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Application No. 09/440,233
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Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
It is also our view, that, even assuming, arguendo, that
proper motivation were established for modifying Kobayashi with
Shimura, there is no indication as to how such modification would
address the particulars of the claim language of independent claims
1, 9, and 15. As discussed previously, each of claims 1, 9, and 15
sets forth a specific combination of non-log transform values and
log-transform values which are employed in the conversion of image
pixel values to output image pixel values over a desired output
range. More particularly, the claims require that, after a lower
limit value is determined from a first histogram of non-log
transformed pixel values, the first histogram is transformed into a
second histogram of log-transformed values from which an upper
limit value is determined.
In our view, the proposed combination of Kobayashi and Shimura
would, at best, result in the substitution of the log-transform
processing techniques of Shimura for the non-log transform
processing of Kobayashi, a result which falls far short of the
specific combination set forth in the appealed claims. Given the
factual situation presented to us, it is our opinion that any
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Application No. 09/440,233
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suggestion to make the combination suggested by the Examiner could
only come from Appellant’s own disclosure and not from any
teachings or suggestions in the references themselves.
We have also reviewed the Haskin and Hara references, applied
by the Examiner to address the remote location and threshold
resetting features, respectively, of several of the appealed
claims. We find nothing, however, in the disclosures of Haskin or
Hara which would overcome the previously discussed deficiencies of
Kobayashi and Shimura.
Accordingly, since we are of the opinion that the prior art
applied by the Examiner does not support the obviousness rejection,
we do not sustain the rejection of independent claims 1, 9, and 15,
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nor of claims 2-8, 10-14, and 16-22 dependent thereon. Therefore,
the decision of the Examiner rejecting claims 1-22 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED

JAMES THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/dal
Appeal No. 2002-1646
Application No. 09/440,233
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