Ex Parte Yamamoto

Board of Patent Appeals and Interferences

Sep 5, 2007

09984227 (B.P.A.I. Sep. 5, 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is not binding precedent of the Board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 HIROYASU YAMAMOTO
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Appeal 2007-1544
Application 09/984,2271
Technology Center 2600
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Decided: September 5, 2007
____________________

Before: JOSEPH F. RUGGIERO, ALLEN R. MacDONALD,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Application filed October 29, 2001. The application claims priority under
35 U.S.C. § 119 from Japanese Application No. 2000-328728, filed October
27, 2001. The real party in interest is Fuji Photo Film Co., Ltd.
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2
Appellant’s invention relates to a method for printing a plurality of
test prints of a photographic image, in which a user-selected portion of an
image is reproduced a number of times, with an image processing parameter
being varied across the plurality of test prints, which enables the user to
inspect the test prints and select the preferred image for full printing.
Claim 1 is exemplary:
1. A method of producing a test print by applying image
processing to a digital image data representing a photograph image
based on a plurality of image processing conditions including one or
more image processing parameters and their ranges, in which each
value of said one or more image processing2 is changed, and then
recording processed digital image data on a predetermined recording
medium, said method comprising the steps of:
setting a predetermined area in said photograph image as an
area for said test print;
setting said one or more image processing parameters to be
changed and their ranges to be changed in said plurality of image
processing conditions when producing said test print;
applying said image processing under said plurality of image
processing conditions in which each value of said set one or more
image processing parameters is changed according to said set ranges
to said digital image data in the area for said test print to obtain image
data for a plurality of test print images; and
recording said image data for said plurality of test print images
obtained on one or more predetermined recording media in a
predetermined layout to produce one or more test print.

2 The word “parameters” appears to be missing from the claim, and is
needed for proper antecedence.
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Application 09/984,227

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Henderson US 5,450,165 Sep. 12, 1995
LeClair US 5,717,838 Feb. 10, 1998
Tsai US 6,043,476 Mar. 28, 2000
Claims 1-11 and 14-30 stand rejected under 35 U.S.C. § 103(a) as
being obvious over LeClair in view of Henderson. Claims 12 and 13 stand
rejected under 35 U.S.C. § 103(a) as being obvious over LeClair in view of
Henderson and Tsai.
Appellant contends that the Examiner erred because neither LeClair
nor Henderson teaches setting a predetermined area in a photographic image
as an area for a test print, then printing a plurality of versions of that area
while varying image processing parameters. The Examiner contends that
Henderson’s system, in which a plurality of densitometers serves to detect
an area of defined toner density, meets Appellant’s limitation.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).3

3 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
The principal issue in the appeal before us is whether the Examiner
erred in holding that Henderson teaches setting a predetermined area in a
photograph image as an area for a test print, and applying image processing
in which the value of the image processing parameters to be changed is
varied, within set ranges, to obtain image data for a plurality of test print
images of the predetermined area.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Appellant invented a method of producing a plurality of test
prints of a photographic image, in which image processing parameters are
varied (Specification 1:5-10).
2. An image is displayed on a display screen. An operator
designates an area of the image for the test print, using a keyboard and/or
mouse (Specification 26:11-15).
3. An operator also specifies the image processing parameters to
vary, what upper and lower values of those parameters to use, and a step
amount between these values (Specification 28:5-8).
4. One or more test prints are printed out, in which the designated
area is reproduced several times, each image being produced with one set of
values of the image processing parameters that were varied (Specification
30:17-31:8).
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LeClair
5. LeClair teaches a method of producing a plurality of test prints
of a photographic image in which image processing parameters are varied
among the prints.
6. LeClair’s invention produces a plurality of reduced-size
versions of a full image, known as “thumbnail” images, each of which is
processed according to the varied image processing parameters (col. 2, ll.
43-55).
Henderson
7. Henderson teaches monitoring the overall print quality of a
printing system, by optically measuring the density of an area of a print
having a predetermined desired density (col. 1, ll. 6-16).
8. Henderson employs a plurality of densitometers, each
positioned to sample a different “swath” along a photoreceptor belt. A
sufficient number of densitometers may be employed so that the full width
of the photoreceptor belt may be covered (col. 4, l. 59 – col. 5, l. 3).
9. Henderson’s example image (Fig. 1) includes some solid-
density areas. As the image moves past the row of densitometers, one will
examine an area of a given size and of solid toner density, “much in the
manner of a deliberately-created test patch,” which happens to be already in
the image to be printed by the user (col. 5, ll. 11-24).
10. Henderson discloses that it is common, when desiring to
monitor the quality of prints, to artificially create a test patch of a
predetermined desired density (col. 1, ll. 12-14).
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11. One advantage asserted for Henderson’s invention is that it
“does not rely on placing test patches in specific non-image areas,” or on
cover sheets (col. 2, ll. 39-43).
12. For an image to be suitable for Henderson’s testing, there must
be provided in the image, in an area accessible to one of the densitometers,
an area of intended solid toner density approximately 1 centimeter square
(col. 5, ll. 48-52).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Piasecki,
745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner must not only
assure that the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed to support
the Examiner’s conclusion.
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the references.
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Appellant may sustain this burden by showing that, where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Appellant did. United States v. Adams, 383 U.S. 39
(1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
2006). The mere fact that all the claimed elements or steps appear in the
prior art is not per se sufficient to establish that it would have been obvious
to combine those elements. United States v. Adams, Id.; Smith Industries
Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
1415, 1420 (Fed. Cir. 1999).

ANALYSIS
Appellant argues that the Examiner erred in holding claims 1 and 11
to be obvious over LeClair in view of Henderson, because neither LeClair
nor Henderson teaches setting a predetermined area in the photograph image
as an area for a test print. Appellant argues that LeClair generates a plurality
of thumbnail images, i.e., reduced-size versions of the full original image,
which are printed with varied parameters (FF 6); thus, according to
Appellant, LeClair contains no selection of a predetermined area. Appellant
further argues that the system of Henderson, in which a printed image is
passed over a plurality of densitometers, one or more of which will detect an
area of high-density printing on an image, also fails to set a predetermined
area for a test print.
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We agree with Appellant. The Examiner admits that LeClair does not
teach or suggest setting a predetermined area for a test print (Examiner’s
Ans. 3:15-16), but asserts that Henderson teaches this feature, in that an area
of an image passing under a densitometer meets the limitation (Examiner’s
Ans. 3:18-19). The Examiner points to column 5 of Henderson as
explaining that one of the densitometers will have an opportunity to examine
an area of solid toner density, “much in the manner of a deliberately-created
test patch,” which happens to be already in the image to be printed by the
user (FF 9). We disagree that the area of solid toner density in Henderson
meets the limitation of “setting a predetermined area for a test print,” for
three reasons. First, we regard Henderson’s description of the area of solid
toner density as being “much in the manner of a deliberately-created test
patch” as an admission that the area is NOT a deliberately created test print,
but simply a high density area of an image the user wishes to print.
Henderson admits that not all images are even suitable for testing, if they do
not contain an area of the appropriate toner density (FF 12). Second, if the
operator in Henderson had actually set a predetermined area of the image as
the test print area, there would be no need for a plurality of densitometers,
because the operator would know exactly where the predetermined area was,
and could use a single densitometer, positioned such that the solid toner
density area would pass directly over it. Third, Henderson explicitly states
that one advantage of his invention is that it does not rely on placing test
patches in specific non-image areas, or on cover sheets (FF 10). Because we
find that neither reference teaches setting a predetermined area for a test
print, we find that the Examiner erred in rejecting claims 1 and 11 under 35
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U.S.C. § 103(a), as well as claims 2-10, 14-17, and 24-30 dependent
therefrom.4
Appellant argues that the Examiner erred in rejecting claims 12 and
13 as obvious over LeClair in view of Henderson and Tsai, for the same
reasons noted supra with regard to parent claim 11, and because Tsai fails to
overcome the deficiencies asserted with respect to LeClair and Henderson.
We agree with Appellant that Tsai contains no disclosure that overcomes the
previously discussed deficiencies of LeClair and Henderson. As a result, we
find that the Examiner erred in rejecting claims 12 and 13 under 35 U.S.C.
§ 103(a).
Appellant argues that the Examiner erred in rejecting claim 18,
because neither LeClair nor Henderson teaches “selecting a portion of the
pre-scanned image data; generating a plurality of digital images, each having
the selected portion … [and] printing a test print comprising the plurality of
digital images.” We agree with Appellant. As noted supra, neither LeClair
nor Henderson teaches selecting a portion of the image. As a result, neither
reference teaches generating a plurality of digital images, each having the
selected portion. We therefore find that the Examiner erred in rejecting
claim 18, as well as claims 19-23 dependent therefrom.5
Because Appellant has shown that the Examiner erred in holding
claims 1-11 and 14-30 to be obvious over LeClair in view of Henderson, we
will reverse the Examiner’s rejection of claims 1-11 and 14-30 under 35
U.S.C. § 103(a). Because Appellant has shown that the Examiner erred in

4 We need not reach Appellant’s arguments concerning dependent claims 24
and 25.
5 We need not reach Appellant’s arguments concerning dependent claim 20.
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holding claims 12 and 13 to be obvious over LeClair in view of Henderson
and Tsai, we will reverse the Examiner’s rejection of claims 12 and 13 under
35 U.S.C. § 103(a).

CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-30. Claims 1-30 have not been shown to be unpatentable.

DECISION
The Examiner’s rejection of claims 1-30 is reversed.

REVERSED

KIS

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