Ex Parte Ali

Patent Trial and Appeal Board

Jul 29, 2013

11211363 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WALID S. ALI1
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Appeal 2011-000205
Application 11/211,363
Technology Center 2600
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Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The Real Party in Interest is Intel Corporation. (App. Br. 2.)
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Application 11/211,363

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STATEMENT OF THE CASE 2
The Invention
Appellant’s invention relates to techniques to improve contrast
enhancement between lighter and darker regions within an image. Spec.
¶ [0001].
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. An apparatus, comprising:
a media processing node to receive an input image
having a first level of contrast, and create an output image
having a second level of contrast using a scaled stored
pre-determined luminance transfer function,
wherein said creating said output image using said
scaled stored pre-determined luminance transfer function
excludes modifying a luminance histogram.

2 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
May 5, 2010); Examiner’s Answer (“Ans.,” mailed June 24, 2010); Final
Office Action (“FOA,” mailed Oct. 14, 2009); and the original Specification
(“Spec.,” filed Aug. 24, 2005).
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Rejections on Appeal3
Claims 1, 7, 13 and 17 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4.
ISSUE
Appellant argues (App. Br. 8-11) that the Examiner’s rejection of
claim 1 under 35 U.S.C. § 112, first paragraph as lacking written description
support in the Specification is in error. These contentions present us with
the following issue:
Did the Examiner err in finding that the recitation of “creating said
output image” lacks written description support by improperly introducing
new matter due to the negative limitation of “creating . . . [by] exclud[ing]
modifying a luminance histogram,” as recited in claim 1, and as
commensurately recited in each of independent claims 7, 13, and 17?
ANALYSIS
We agree with Appellant’s conclusions with respect to claim 1, and
we disagree with (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.

3 We note that the § 112, ¶1 written description rejection is the sole
rejection before us on appeal, as no prior art rejections under §§ 102 or 103
have been made of record by the Examiner.
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“[C]ompliance with the written description requirement is a question
of fact.” Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (citing Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). “[Section]
112, first paragraph, contains two separate description requirements: a
‘written description [i] of the invention, and [ii] of the manner and process
of making and using [the invention’].” Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1344 (Fed.Cir. 2010) (en banc).
A written “description must ‘clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed.’” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (quoting Vas-Cath, 935 F.2d 1555, 1563) (Fed. Cir. 1991). “In other
words, the test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
(citing Vas-Cath, 935 F.2d at 1563). “Although [the applicant] does not
have to describe exactly the subject matter claimed . . . the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed.” Vas-Cath, 935 F.2d at 1563 (quoting In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)).
Any negative limitation or exclusionary proviso must have basis in the
original disclosure. If alternative elements are positively recited in the
specification, they may be explicitly excluded in the claims. See In re
Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the]
specification, having described the whole, necessarily described the part
remaining.”). “Negative claim limitations are adequately supported when
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the specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012).
Appellant contends that their original disclosure provides support for
the negative limitation in dispute, i.e., the Specification supports
“exclud[ing] modifying a luminance histogram,” (App. Br. 8 (citing Spec.
¶ [0027])) by discussing conventional luminance histograms and their
associated deficiencies. We therefore disagree with the Examiner’s finding
that Appellant’s Specification does not provide adequate written description
support for the negative limitation in dispute. We disagree with the
Examiner because, similar to Santarus, cited supra, Appellant’s
Specification provides support for alternative implementations which avoid
the use of undesirable (in the context of Appellant’s invention) conventional
luminance histograms. App. Br. 10-11 (citing Spec. ¶¶ [0028], [0035]).
We agree with Appellant’s contention (App. Br. 11) that Appellant’s
disclosure of the alternative use of a predefined or predetermined luminance
transfer function stored in memory would avoid or exclude the need to use a
conventional luminance histogram such that the negative limitation in
dispute has adequate written description support, and therefore does not
constitute new matter.
Accordingly, Appellant has provided sufficient evidence or argument
to persuade us of at least one reversible error in the Examiner’s
interpretation of the Specification and related claim construction. Therefore,
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we do not sustain the Examiner’s written description rejection of
independent claim 1.
For essentially the same reasons argued by Appellant, cited above, we
reverse the Examiner’s rejection of independent claims 7, 13, and 17, which
recite the disputed negative limitation in commensurate form. For the same
reasons, we also reverse the rejections of all claims 2-6, 8-12, 14-16, and 18-
20 that depend therefrom.
CONCLUSION
The Examiner erred with respect to the written description rejection of
claims 1-20 under 35 U.S.C. § 112, first paragraph, and the rejection is not
sustained.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED

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