Ex Parte Tanaka

Board of Patent Appeals and Interferences

Jun 28, 2007

09255352 (B.P.A.I. Jun. 28, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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 SUMIYO TANAKA
____________

Appeal 2007-0353
Application 09/255,352
Technology Center 2100
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Decided: June 28, 2007
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Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and JOSEPH L.
DIXON, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention relates to image searching in which common
key image feature values are extracted from a user specified plurality of key
Appeal 2007-0353
Application 09/255,352

images and used to retrieve images from a plurality of images stored in an
image database. The extracted common key image feature values are
compared with the plurality of images stored in the image database to
determine similarities between each of the common key image feature
values and respective ones of the database image feature values for each of
the plurality of stored database images.
Claim 1 is illustrative of the invention and reads as follows:
1. An image searching system comprising:
an image database storing a plurality of database images, each of said
plurality of database images having a plurality of features;

a specifying controller for specifying a plurality of key images, each
of said plurality of key images being specified by a user and having a
respective plurality of features;

an extracting controller for extracting common key image feature
values for common key image features that are common to the plurality of
key images;

a calculating controller for comparing the common key image feature
values, extracted by the extracting controller, with the respective feature
values of the plurality of database images to thereby sequentially calculate
similarities between each of the common key image feature values and
respective ones of the database image feature values for each of the plurality
of database images; and

a searching controller for retrieving from the database at least one of
the plurality of database images which is similar to the plurality of key
images, based on a similarity calculated by the calculating controller.

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Application 09/255,352

The Examiner relies on the following prior art reference to show
unpatentability:
Sato US 6,246,804 B1 Jun. 12, 2001
(filed Nov. 14, 1995)

Claims 1-32, all of the appealed claims, stand rejected under
35 U.S.C. § 102(e) as being anticipated by Sato.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief 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 chose not to
make in the Brief have not been considered and are deemed waived [see
37 C.F.R. § 41.37(c)(1)(vii)].
ISSUE
Under 35 U.S.C § 102(e), does Sato have a disclosure which
anticipates the invention set forth in claims 1-32?

PRINCIPLES OF LAW
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 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).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
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Application 09/255,352

citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

ANALYSIS
With respect to the 35 U.S.C. § 102(e) rejection of independent claims
1, 4, 7, 11, 14, 17, 21, 24, 27, 31, and 32 based on the teachings of Sato, the
Examiner indicates (Answer 3-6) how the various limitations are read on the
disclosure of Sato. In particular, the Examiner directs attention to the
illustrations in Figures 1, 21, 31, and 32 of Sato, as well as the disclosure at
various portions of columns 1, 5, 14, 21, 22, and 27 of Sato.
Appellant’s arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Sato
so as to establish a prima facie case of anticipation. Appellant’s arguments
(Br. 11) focus on the contention that, in contrast to the language of the
appealed claims which requires the determination of common key image
feature values from a user specified plurality of key images to be used as
search criteria, Sato never makes any determination of any common feature
values in the user designated image information to be used for comparison
with stored images in a database.
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Application 09/255,352

After reviewing the disclosure of Sato in light of the arguments of
record, we are in general agreement with Appellant’s position as stated in
the Brief. We would point out that we don’t necessarily agree with
Appellant that Sato uses only a single designated image as a source for
search criteria. We find in Sato a suggestion that the designated input image
100 (Figure 5, col. 7, ll. 52-60 and Figure 21) is segmented into regions
which, in our view, could reasonably be interpreted as being a plurality of
images.
We do agree with Appellant, however, that Sato is not concerned
with, and never makes any determination of, any features in the designated
input image, or the plurality of designated input segments, that might be
common to each other. As argued by Appellant (Br. 10-11), the portions of
Sato cited by the Examiner describe the comparison search for features of
images in the stored database which might be common to the features in the
designated image, or segmented regions of the designated image, to
determine which stored images might be the best matches for the designated
input image. Sato, however, never performs any comparison of feature
values in the designated input image, or regions thereof, to determine any
common features that might exist. As a consequence, Sato never uses, as
search criteria, the common feature values of the designated input or input
regions as required by each of the appealed independent claims.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Sato, we do not sustain the Examiner’s
35 U.S.C. § 102(e) rejection of independent claims 1, 4, 7, 11, 14, 17, 21,
24, 27, 31, and 32, nor of claims 2, 3, 5, 6, 8-10, 12, 13, 15, 16, 18-20, 22,
23, 25, 26, and 28-30 dependent thereon.
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CONCLUSION
In summary, we have not sustained the Examiner’s 35 U.S.C. § 102(e)
rejection of any of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-32 is reversed.
REVERSED

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