Ex Parte MORIFUJI et al

Patent Trial and Appeal Board

Oct 19, 2018

14257129 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/257,129 04/21/2014 Takafumi MORIFUJI
60803 7590 10/19/2018
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
1946-0622 5761
EXAMINER
LE,SARAH
ART UNIT PAPER NUMBER
2619
MAIL DATE DELIVERY MODE
10/19/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAKAFUMI MORIFUJI, MASATO AKAO, and
MASAMI OGATA
Appeal 2018-002515
Application 14/257,129 1
Technology Center 2600
Before JOHN A. EV ANS, JASON J. CHUNG, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-5, 7, 8, 10-14, and 16-23. Appellants have canceled claims 2,
6, 9, and 15. Amend. 3 (filed October 26, 2016). We have jurisdiction over
the remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Sony Corporation as the real party in interest. App.
Br. 3.
Appeal 2018-002515
Application 14/257,129
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to an
image processing apparatus and method for reproducing the texture of an
object. Spec. 1:12-14. In a disclosed embodiment, physical property
parameters associated with an object (i.e., the subject of an image capture
operation) are acquired and used to control the texture of the object during
image production. Spec. 2:2-9.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. An image processing apparatus comprising:
a subject property analysis unit configured to obtain
information related to a subject within a captured image; and
an image synthesis unit configured to generate an output
image, corresponding to the captured image, in which a display
texture of the subject has been modified based on the obtained
information,
wherein the obtained information comprises at least one
physical property parameter of the subject including information
pertaining to at least one of a depth of the subject, a form of the
subject, a lighting at a time of capturing the image, a material of
the subject, and a reflection property of the subject,
wherein, when the at least one physical property
parameter of the subject indicates a dense form, the display
texture of the subject is modified by applying self shadow
emphasis,
wherein, when the at least one physical property
parameter of the subject indicates a sparse form, the display
texture of the subject is modified by applying cast shadow
emphasis, and
wherein the subject property analysis unit and the image
synthesis unit are each implemented via at least one processor.
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Application 14/257,129
The Examiner's Rejections
1. Claims 1, 3-5, 7, 8, 10-14, and 16-23 stand rejected under
35 U.S.C. § 112(b) as being indefinite. Final Act. 8-9.
2. Claims 1, 3, 8, 10, 12, 14, 16, 19-21, and23 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Tsukada (US
2011/0274351 Al; Nov. 10, 2011); Specular vs. Diffuse Reflection,
http://www.physicsclassroom.com/class/refln/Lesson-1/Specular-vs-Diffuse-
Reflection (Dec. 5, 2016) ("Physics"); Sato et al. (US 2009/0141027 Al;
June 4, 2009) ("Sato"); and Erum Arif Khan et al., Image-Based Material
Editing, ACM Transactions on Graphics (TOG) 25.3, 654---63 (2006)
("Khan"). Final Act. 10-35.
3. Claims4,5, 7, 13, 17, I8,and22standrejectedunder
35 U.S.C. § 103 as being unpatentable over Tsukada, Physics, Sato, Khan,
and Steinberg et al. (US 2007/0160307 Al; July 12, 2007) ("Steinberg").
Final Act. 35-56.
4. Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Tsukada, Physics, Sato, Khan, and Fujita et al. (US
2012/0177426 Al; July 12, 2012). Final Act. 56-60.
ANALYSIS 2
Re} ection under 3 5 US. C. § 112
The Examiner concludes independent claims 1, 14, and 23 are
indefinite under 35 U.S.C. § 112(b) because the terms "dense form" and
2 Throughout this Decision, we have considered the Appeal Brief, filed
September 6, 2017 ("App. Br."); the Reply Brief, filed January 8, 2018
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Application 14/257,129
"sparse form" are not defined by the claim, the Specification does not
provide a standard for determining a denseness or sparsity of an object, and
that an ordinarily skilled artisan would not be reasonably apprised of the
scope of the invention. Final Act. 8-9. Additionally, the Examiner finds
there is not an ordinary dictionary definition for either "dense form" or
"sparse form." Ans. 3.
Appellants contend a person of ordinary skill in the art would
understand the terms ( dense form and sparse form) to have their ordinary
and customary meanings. App. Br. 13; Reply Br. 4. In particular,
Appellants assert "'dense form' relates to compactness or opacity of the
form of a subject, and that the recited 'sparse form' relates to a scattered or
dispersed distribution of the form of the subject." Reply Br. 4.
The test for definiteness under 35 U.S.C. § 112(b) is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citation omitted). However, we are
mindful that "[t]he scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention." Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1350 (Fed. Cir. 2005). Further, "[a] claim is not 'indefinite'
simply because it is hard to understand when viewed without benefit of the
specification." S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir.
2001).
("Reply Br."); the Examiner's Answer, mailed November 7, 2017 ("Ans.");
and the Final Office Action, mailed December 13, 2016 ("Final Act."), from
which this Appeal is taken.
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Application 14/257,129
In the Specification, Appellants describe an embodiment wherein a
physical property parameter comprising, inter alia, depth and form
information of the subject. Spec. 14:25-26. Based on this (and other)
information, a particular shading emphasis is performed. Spec. 15: 8-16: 10.
In particular, if the information indicates a dense form, a self shadow
shading emphasis is performed, whereas if the information indicates a sparse
form, a cast shadow shading emphasis is performed. Spec. 15:8-16: 10. The
processing details based on an indication of a dense form or sparse form are
also set forth in Figure 4 of the Specification, which provides various
examples of control parameters. Spec. 14: 11-14, Fig. 4.
Although the Specification does not provide a definition for either a
"dense form" or a "sparse form," it appears from the claim language
( considered in light of the Specification) that the density of an object is a
characteristic considered in applying shadow emphasis to an object. A
relatively dense form is associated with self shadow emphasis, whereas a
relatively less dense form (i.e., a sparse form) is associated with a cast
shadow emphasis. A person of ordinary skill in the art would understand
these terms according to the ordinary meaning of dense----closely compacted
in substance. Therefore, we do not conclude the terms "dense form" or
"sparse form" indefinite.
Additionally, we note the claim language merely requires a "physical
property parameter of the subject indicate[] a dense [(or sparse)] form." See,
e.g., claim 1 (emphasis added). Thus, contrary to the Examiner's statement
(see Final Act. 9), the claims do not require the determination of an object's
density or sparsity, but instead only require that a parameter provides an
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Application 14/257,129
indication of density ( or sparsity). Such an indication may be provided by a
particular value, a label, a binary setting, or any other various ways.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of claims 1, 3-5, 7, 8, 10-14, and 16-23 under 35 U.S.C. § 112(b).
Rejections under 35 US.C. § 103
In rejecting independent claim 1, the Examiner relies on the combined
teachings and suggestions of Tsukada, Physics, Sato, and Khan. Final
Act. 10-18. The Examiner finds Tsukada teaches many of the limitations
recited by claim 1. Final Act. 10-13. Of note, the Examiner finds Tsukada
teaches the reflectance of an object may be expressed as a Bi-directional
Reflectance Distribution Function (BRDF) and is composed of a specular
component and a body reflection component (i.e., a diffuse reflection
component). Final Act. 12 (citing Tsukada ,r,r 110, 115). Additionally, in
relevant part, the Examiner finds Physics teaches that specular reflection
characteristics indicate a dense form and diffuse reflection characteristics
indicate a sparse form. Final Act. 13-14 ( citing Physics 1 ). The Examiner
finds Sato teaches self-shadow (i.e., attached shadow) emphasis is present
when specular reflection characteristics are indicated and cast shadow
emphasis is present when diffuse reflection characteristics are indicated.
Final Act. 14--15 (citing Sato ,r,r 133-137). Further, the Examiner relies on
Khan to teach the application of self shadow and cast shadow emphasis.
Final Act. 15-16 (citing Khan§§ 1.2, 4.1)
Appellants assert the cited references do not teach or suggest the
recited relation between the forms of the subject (i.e., dense or sparse) and
the type of shadow emphasis (i.e., self shadow or cast shadow) to be applied.
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App. Br. 15-18; Reply Br. 8-9. In particular, Appellants contend that
although Sato relates to the observed relationship between reflection
characteristics (i.e., specular reflection and diffuse reflection), "there is
nothing in the reference related to a dense form or a sparse form, let alone
such forms having the particularly recited relation to a type of shadow
emphasis." App. Br. 15. Additionally, Appellants argue Khan does not
"remedy the lack of any teaching or suggestion in the references regarding
the recited relation between the forms (i.e.[,] dense/sparse) and types of
shadow emphasis (i.e.[,] self shadow/cast shadow)." App. Br. 16.
Appellants also assert it is unclear as to how the Examiner is applying each
of the references and that "there are contradictory statements throughout the
[Final] Office Action." App. Br. 16.
As an initial matter, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence). Appellants do not identify the alleged
contradictory statements made by the Examiner. Further, the Examiner has
set forth the findings associated with each reference and how they are
applied in combination with the other references. See, e.g., Final Act. 10-
18. In particular, with respect to independent claim 1, the Examiner sets
forth: (i) her findings regarding Tsukada (see Final Act. 10-13); (ii) her
findings regarding Physics (see Final Act. 13-14); (iii) the combined
teachings of Tsukada and Physics (see Final Act. 14); (iv) her findings
regarding Sato (see Final Act. 14--15); (v) the combined teachings of
Tsukada, Physics, and Sato (see Final Act. 15); (vi) her findings regarding
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Application 14/257,129
Khan (see Final Act. 16); and (vii) the combined teachings of Tsukada,
Physics, Sato, and Khan (see Final Act. 16-18).
As to Appellants' arguments that neither Sato nor Khan teach the
claimed relation between the forms (i.e., dense/sparse) and the types of
shadow emphasis (i.e., self shadow/cast shadow) (see App. Br. 15-18; Reply
Br. 8-9), we are unpersuaded of Examiner error at least because Appellants'
arguments are not responsive to the rejection as articulated by the Examiner.
Additionally, non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
( CCP A 1981 ). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, as discussed above, the Examiner finds the combination of
Tsukada and Physics teaches or reasonably suggests a physical property
parameter of a subject that indicates a dense form-i.e., a specular
reflection-and a physical property parameter that indicates a sparse form-
i.e., a diffuse reflection. Final Act. 10-14; Ans. 4--5. Appellants note the
Examiner relies on the combined teachings of Tsukada and Physics in
finding the reflection component and specular component may be related to
a form of an object. App. Br. 15. Appellants "do[] not concede" this
finding, but also do not contest it persuasively. See App. Br. 15. Further,
Sato teaches classifying shadow areas based on the reflection characteristics.
Sato ,r,r 133-137. In particular, where specular reflection characteristics are
indicated (i.e., a dense form), this corresponds to attached, or self shadow.
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Application 14/257,129
Sato ,r,r 134--135. However, where diffuse reflection characteristics are
indicated (i.e., a sparse form), the shadow area is classified as a cast shadow.
Sato ,r,r 13 6-13 7. Thus, contrary to Appellants' arguments, the Examiner
has shown by a preponderance of evidence that the cited references teach, or
reasonably suggest the recited relationship between the physical property
parameter (indicative of a dense or sparse form) and the type of shadow
emphasis (i.e., self shadow/cast shadow) to be applied.
Appellants also belatedly assert for the first time in the Reply Brief
that the Examiner conflates the smoothness of a surface with the density of
form of the object. Reply Br. 7 (referring to the Examiner's reliance on
Physics 1) cf Final Act. 13-14 (citing Physics 1); Adv. Act. 2 (citing
Physics 1) (mailed March 28, 2017). Appellants argue that although the
smoothness or roughness of a surface may relate to specular or diffuse
reflection, it does not teach the form of an object as being dense (i.e.,
compact or opaque) or sparse (i.e., dispersed or distributed). Reply Br. 7.
This argument was not made in the Appeal Brief, but could have been,
and is not responsive to any new evidence or finding set forth by the
Examiner in the Answer. In the absence of a showing of good cause by
Appellants, this argument is untimely and deemed waived.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
[E]xaminer' s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 4I.41(b)(2) (2016); see also Ex parte Nakashima, 93 USPQ2d
1834, 1837 (BP AI 2010) (informative) ( explaining that arguments and
evidence not presented timely in the principal brief, will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
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the argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.").
Notwithstanding the tardiness of Appellants' argument, we do not
agree that the Examiner improperly conflates surface smoothness with
density of form (see Reply Br. 7). Rather, as the Examiner finds, the surface
smoothness of a substance coincides with the level of compactness of the
substance at the surface. In other words, at the surface, if a substance is
more compacted, the smoother it will be ( e.g., glass), whereas if a substance
is not as compacted at the surface ( e.g., cloth), the rougher the surface will
be. Thus, the Examiner finds Physics teaches a smooth surface (i.e., a
compacted substance at the surface) corresponds to the claimed "dense
form" and a rough surface (i.e., less compacted substance at the surface)
corresponds to the claimed "sparse form." See Final Act. 13-14.
Appellants' arguments do not apprise us of Examiner error.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 103. For similar reasons, we also sustain the
Examiner's rejection of independent claims 14 and 23, which recite similar
limitations and were not argued separately. 3 See App. Br. 17; see also
3 In the event of further prosecution, we leave it to the Examiner to
determine whether the method of independent claim 14 recites conditional
limitations that should not be given patentable weight. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3---6 (PTAB April
28, 2016) ( concluding the broadest reasonable interpretation of a claim
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37 C.F.R. § 4I.37(c)(l)(iv). Additionally, we sustain the Examiner's
rejection of claims 3, 8, 10, 12, 16, and 19--21, which depend directly or
indirectly therefrom and were not argued separately. See App. Br. 17-18;
see also 37 C.F.R. § 41.37( c )(1 )(iv).
Appellants also argue the additional references cited by the Examiner
(i.e., Steinberg and Fujita) fail to remedy the alleged deficiencies in the base
combination of Tsukada, Physics, Sato, and Khan. App. Br. 18-20. As
discussed above, we are unpersuaded of Examiner error or deficiencies of
Tsukada, Physics, Sato, and Khan related to the independent claims.
Accordingly, we sustain the Examiner's rejections of dependent claims 4, 5,
7, 11, 13, 17, 18, and 22, which were not argued separately. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
We reverse the Examiner's decision rejecting claims 1, 3-5, 7, 8, 10-
14, and 16-23 under 35 U.S.C. § 112(b).
We sustain the Examiner's decision rejecting claims 1, 3-5, 7, 8, 10-
14, and 16-23 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1, 3-5, 7, 8,
10-14, and 16-23 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
encompassed situations in which conditional method steps "need not be
reached") (precedential)
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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.
§ 41.50(±).
AFFIRMED
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