Ex Parte Watanabe

Board of Patent Appeals and Interferences

Aug 3, 2007

09451097 (B.P.A.I. Aug. 3, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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 SHUICHI WATANABE
____________

Appeal 2007-1251
Application 09/451,097
Technology Center 2600
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Decided: August 3, 2007
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Before ANITA PELLMAN GROSS, JEAN R. HOMERE,
and JOHN A. JEFFERY, Administrative Patent Judges.

GROSS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Watanabe (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1, 27, and 37. Claims 15 through 18
have been allowed, claims 5 through 14 and 19 through 26 have been
withdrawn from consideration, and claims 2 through 4, 28 through 36, and
38 have been canceled.
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Appellant's invention relates to a method of associating frame feature
values with plural image frames and to the storing apparatus for storing the
associated frame feature values. (See Specification 9-10.) Claims 1 and 37
are illustrative of the claimed invention, and they read as follows:
1. An image retrieval information storing apparatus for storing frame
feature values in association with a plurality of frames of image data,
comprising:

a calculating unit for calculating statistics of motion vector
information related to said image data;

a frame feature value generating unit for generating a frame feature
value which is numerical information representing quantity of a feature
contained in a frame of said image data using the calculated statistics; and

a frame feature value storing unit for storing said frame feature value
in correlating form with the frame of said image data, the frame feature
value storing unit being connected to said frame feature value generating
unit.

37. A method of associating frame feature values with a plurality of
frames of image data, comprising the steps of:

calculating statistics of motion vector information related to said
image data; and

generating a frame feature value comprising numerical information
representing a quantity of a feature contained in a frame of said image data
using the calculated statistics.

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Takashima US 5,754,233 May 19, 1998
Nagasaki US 6,400,890 B1 Jun. 04, 2002
(filed May 11, 1998)
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Claims 37 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Takashima.
Claims 1 and 27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Takashima in view of Nagasaka.
We refer to the Examiner's Answer (mailed August 22, 2006) and to
Appellant's Brief (filed December 15, 2005) and Reply Brief (filed
October 10, 2006) for the respective arguments.

SUMMARY OF DECISION
As a consequence of our review, we will reverse both the anticipation
rejection of claim 37 and also the obviousness rejection of claims 1 and 27.
We also enter a new ground of rejection under 35 U.S.C. § 101 for claim 37.

OPINION
Regarding claim 37, the Examiner asserts (Answer 3) that Takashima
discloses the step of calculating statistics of motion vector information, as
recited in claim 37, "as provided by motion estimation circuit 103 of Figure
11, since scene changes are detected by exploiting of motion vector
detection operations performed by motion estimation circuit 103, with the
exploiting of motion vectors providing the calculating of statistics of motion
vector information." Appellant contends (Br. 7) that Takashima does not
disclose calculating statistics of motion vectors, since finding a motion
vector is not the same as calculating statistics of motion vectors. Further,
Appellant contends (Reply Br. 2) that "'[e]xploit' means to use to one's
advantage, not to 'calculate statistics,' and Takashima in no manners suggests
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calculating statistics of motion vectors." Thus, the issue for claim 37 is
whether Takashima discloses calculating statistics of motion vectors.
Takashima discusses motion vectors in column 15. Specifically,
Takashima discloses (col. 15, ll. 11-14) that an encoding apparatus detects
scene changes "by exploiting motion vector detection operations performed
by the ME [motion vector detection or motion estimator] circuit 103."
Further, Takashima states (col. 15, ll. 34-37) that "for exploiting the detected
motion vector, the motion vector detected by the ME circuit 103 needs to be
stored for one I-picture period." Thus, Takashima detects motion vectors,
stores the detected motion vectors, and uses the detected motion vectors to
detect scene changes. However, Takashima makes no mention of
calculating statistics of motion vectors, and "exploiting" the detected motion
vectors does not suggest calculating statistics1 of the motion vectors.
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim." In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). See also
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co.,
730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Since
Takashima fails to disclose calculating statistics of motion vectors,
Takashima cannot anticipate claim 37. Therefore, we cannot sustain the
anticipation rejection of claim 37.
As to claims 1 and 27, as Takashima fails to disclose calculating
statistics of motion vectors, Takashima likewise fails to disclose any

1 We note that Appellant indicates (Specification 12:5-15) that "motion
vector statistics" refers to average value of vector magnitudes, average
vector, or other statistics of the motion vectors.
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structure for calculating the statistics. The Examiner combines Nagasaka
with Takashima but does not rely upon Nagasaka for calculating statistics of
motion vectors. Furthermore, we find no disclosure in Nagasaka that would
have suggested to the skilled artisan a calculating unit for calculating
statistics of motion vectors. Accordingly, Nagasaka fails to cure the
deficiency of Takashima, and we cannot sustain the obviousness rejection of
claims 1 and 27.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection against Appellant's claim 37 under 35 U.S.C. § 101
as being nonstatutory.
The Supreme Court has held that claims that, as a whole, are directed
to nothing more than abstract ideas, natural phenomena, or laws of nature
are not statutory under 35 U.S.C. § 101. See Diamond v. Diehr, 450 U.S.
175, 185, 209 USPQ 1, 7 (1981). An application of a law of nature or
mathematical formula to a known structure or process, though, may be
patentable. Id. at 187, 209 USPQ at 8. However, a process that comprises
"no substantial practical application" of an abstract idea is not patentable, as
such a patent would in effect be a patent on the abstract idea itself.
Gottschalk v. Benson, 409 U.S. 63, 71-72, 175 USPQ 673, 676 (1972).
Clearly, the present claim recites neither a natural phenomenon nor a
law of nature, so the issue is whether it is directed to an abstract idea. We
note that mathematical algorithms are considered to be abstract ideas. Thus,
processes that are merely mathematical algorithms are nonstatutory under
35 U.S.C. § 101. We further note that it is generally difficult to ascertain
whether a process is merely an abstract idea, particularly since claims are
often drafted to include minor physical limitations such as data gathering
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steps or post-solution activity. However, if a claim is considered to be an
abstract idea, then the claim is not eligible for and, therefore, is excluded
from patent protection.
Claim 37 recites two steps, (1) calculating statistics of motion vector
information, and (2) generating a frame feature value comprising numerical
information representing a quantity of a feature contained in a frame of
image data using the calculated statistics. Both steps are mathematical
functions, and the result is a mathematical value. Further, the claimed
method includes no recitation of a computer. Thus, the method appears to
be a disembodied concept. Accordingly, claim 37 merely recites a
mathematical algorithm.
Nonetheless, assuming arguendo that claim 37 is not solely directed
to an algorithm, the next question is whether the claimed invention is
directed to a practical application of an abstract idea. "[W]hen a claim
containing [an abstract idea] implements or applies that [idea] in a structure
or process which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of § 101." Diehr, 450 U.S. at 192, 209 USPQ at 10. Also,
according to the test set forth in State Street Bank & Trust Co. v. Signature
Finance Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596, 1601 (Fed.
Cir. 1998), the production of a useful, concrete, and tangible result equates
to a practical application of an abstract idea.
In claim 37, we find no physical subject matter being transformed,
just numerical values being manipulated. Further, though the preamble
recites "[a] method of associating frame feature values with a plurality of
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frames of image data," the method steps merely calculate statistics and
generate a numerical value from the statistics. Thus, we find no physical
subject matter being transformed.
We also find that the method of claim 37 fails to produce a useful,
concrete, and tangible result. Specifically, the result of claim 37 is a
numerical representation of a quantity of a feature. However, a number is
neither concrete nor tangible. Thus, claim 37 is an abstract idea that is
nonstatutory under 35 U.S.C. § 101.

ORDER
The decision of the Examiner rejecting claim 37 under 35 U.S.C.
§ 102(b) and claims 1 and 27 under 35 U.S.C. § 103 is reversed. A new
ground of rejection under 35 U.S.C. § 101 is entered against claim 37.
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 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. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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

REVERSED
37 C.F.R. § 41.50(b)

KIS

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