Ex Parte YamamotoDownload PDFBoard of Patent Appeals and InterferencesSep 5, 200709984227 (B.P.A.I. Sep. 5, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte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 ____________________ Appeal 2007-1544 Application 09/984,2271 Technology Center 2600 ____________________ 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. Appeal 2007-1544 Application 09/984,227 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. Appeal 2007-1544 Application 09/984,227 3 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). Appeal 2007-1544 Application 09/984,227 4 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). Appeal 2007-1544 Application 09/984,227 5 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). Appeal 2007-1544 Application 09/984,227 6 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. Appeal 2007-1544 Application 09/984,227 7 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. Appeal 2007-1544 Application 09/984,227 8 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 Appeal 2007-1544 Application 09/984,227 9 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. Appeal 2007-1544 Application 09/984,227 10 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 SUGHRUE & MION, PLLC 2100 Pennsylvania Avenue, N.W. Washington, DC 20037-3213 Copy with citationCopy as parenthetical citation