Ex Parte Stanich et alDownload PDFPatent Trial and Appeal BoardAug 30, 201310442854 (P.T.A.B. Aug. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/442,854 05/21/2003 Mikel J. Stanich BLD920030016US1 4174 50441 7590 09/03/2013 DUFT BORNSEN & FETTIG, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 EXAMINER VO, QUANG N ART UNIT PAPER NUMBER 2671 MAIL DATE DELIVERY MODE 09/03/2013 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 ____________________ Ex parte MIKEL J. STANICH, GERHARD R. THOMPSON, and CHAI WAH WU ____________________ Appeal 2011-004803 Application 10/442,854 Technology Center 2600 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004803 Application 10/442,854 2 STATEMENT OF THE CASE Introduction Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-37, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s § 101 rejection, and affirm the Examiner’s anticipation rejection. Exemplary Claims An understanding of the invention can be derived from a reading of exemplary claims 1 and 21, the only independent claims present on appeal, which are reproduced below with emphasis added: 1. A method for performing digital halftoning in an electronic device, the method comprising the steps of: (a) generating an initial pattern of pixels within the electronic device; (b) comparing, within the electronic device, the pattern to an image and calculating, within the electronic device, a first potential and determining, within the electronic device, a first set of pixels to move wherein the first set of pixels is determined as those pixels in the image having a high first potential relative to other pixels not in the first set of pixels; (c) calculating, within the electronic device, a second potential and determining, within the electronic device, a second set of pixels in which to move the first set of pixels wherein the second set of pixels is determined as those pixels in the image having a low second potential relative to other pixels not in the second set of pixels; and (d) moving, within the electronic device, a plurality of pixels from the first set of pixels having high first potential values to pixel locations in the second set of pixels having low second potential values. 21. A computer readable medium containing program instructions which, when executed by a computational device, Appeal 2011-004803 Application 10/442,854 3 perform a method for digital halftoning, the program instructions for: (a) generating an initial pattern of pixels; (b) comparing the pattern to an image calculating a first potential and determining a first set of pixels to move wherein the first set of pixels is determined as those pixels in the image having a high first potential relative to other pixels not in the first set of pixels; (c) calculating a second potential and determining a second set of pixels in which to move the first set of pixels wherein the second set of pixels is determined as those pixels in the image having a low second potential relative to other pixels not in the second set of pixels; and (d) moving a plurality of pixels in the first set of pixels having high first potential values to pixel locations in the second set of pixels having low second potential values. The Examiner’s Rejections (1) The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Ans. 3-4. The Examiner determined that claims 1-20 (i) fail to recite a statutory process that passes the machine-or-transformation test (Ans. 3-4 and 14-15), and (ii) recite a method of performing digital halftoning that can be reasonably interpreted as a series of steps completed mentally, verbally or without a machine (Ans. 4 and 15). (2) The Examiner rejected claims 1-37 under 35 U.S.C. § 102(b) as being anticipated by Thompson (US 5,917,951; Jun. 29, 1999). Ans. 4-11. Appellant’s Contentions (1) Appellants contend (App. Br. 12-13; Reply Br. 4-5) that the Appeal 2011-004803 Application 10/442,854 4 Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the method recited in claims 1-20 is (i) performed within an electronic device or circuit that is a machine (App. Br. 12-13), and (ii) within the field of image processing and therefore is not abstract (Reply Br. 4-5); (2) Appellants contend (App. Br. 8-11; Reply Br. 4) that the Examiner erred in rejecting claims 1-37 under 35 U.S.C. § 102(b) as being anticipated by the Thompson for numerous reasons, including: (a) “[t]he method of claim 1 reads as a sequence of steps where each step derives an antecedent basis from each of the previous steps in the sequence” (App. Br. 10), and thus “step (d) requires that steps (a), (b), and (c) be performed first in order to properly define the first set of pixels and the second set of pixels” (App. Br. 9); (b) Thompson requires a new calculation after every pixel has been moved (App. Br. 9 citing Thompson, Fig. 3, step 44; col. 5, ll. 30-34), without requiring computationally costly new comparisons or calculations be performed to identify each pixel to be moved (App. Br. 9); (c) the language of claim 1 (and similar language in all claims) clearly and specifically requires that the calculations be performed to determine the ‘first set of pixels’ and the ‘second set of pixels’ be performed before the step of moving since the step of moving clearly recites moving a plurality of pixels between these two sets and “[t]he two sets of pixels must be previously determined before the moving of multiple pixels under any reasonable interpretation of the steps of Appeal 2011-004803 Application 10/442,854 5 claim 1 (and all other claims)” (Reply Br. 4);1 and (d) Thompson fails to teach that the number of pixels moved decreases on each iteration as recited in claim 2, because Thompson’s inner loop structure moves exactly one pixel at each iteration of potential calculation (App. Br. 10). Issues on Appeal Based on Appellants’ arguments in the Appeal Brief (App. Br. 8-25) and the Reply Brief (Reply Br. 4-6), the following two issues are presented on appeal: (1) Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the digital halftoning method recited in claim 1 is abstract and can be performed in the mind of a human being (i.e., electronic device); and (2) claims 1-37 under 35 U.S.C. § 102(b) as being anticipated by Thompson because Thompson discloses the method recited in representative claim 1, under an interpretation of claim 1 that the steps do not have to be performed in order? 1 In response to the § 102(b) rejection, Appellants present the same substantive arguments on the merits with regard to independent claim 21 as provided for claim 1 (App. Br. 10). Like independent claim 1, independent claim 21 similarly recites performing a method for digital halftoning. Appellants argue that dependent claims 3-20 are patentable for their dependence from claim 1 (App. Br. 10), and dependent claims 22-37 are patentable for their dependence from claim 21. In view of the foregoing, we select claim 1 as representative of the group of claims 1-37. 37 C.F.R. § 41.37(c)(1)(vii). Our analysis will only address representative claim 1 and dependent claim 2, which was argued separately. Appeal 2011-004803 Application 10/442,854 6 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 8-25) and the Reply Brief (Reply Br. 4-6) that the Examiner has erred. We agree with Appellants’ arguments that the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the method recited in claims 1-20 is (i) performed within an electronic device or circuit that is a machine (App. Br. 12-13), and (ii) within the field of image processing and therefore is not abstract (Reply Br. 4-5). We conclude that claim 1 as a whole is directed to a sequence of steps for digital halftoning performed within an electronic device or machine, and not entirely within the human mind.2 Appellants’ claim 1 explicitly recites that “sets of pixels” are moved, calculated, generated, and determined. We also conclude that the steps of claim 1 inherently require that the “pixels” at least temporarily be stored within the machine. We further conclude that the process of digital halftoning produces a data structure comprising pixels arranged in a rectangular array with a certain height and width. Therefore, we do not sustain the Examiner’s § 101 rejection of claims 1-20. We disagree with the Appellants’ conclusions as to the anticipation rejection of claims 1-37. We adopt as our own (1) the findings and reasons 2 See Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868-69 (Fed. Cir. 2010) (where the inventive method could not, as a practical matter, be performed entirely in a human’s mind, but “present[ed] functional palpable applications in the field of computer technology,” and the Federal Circuit held that the invention was not abstract). Appeal 2011-004803 Application 10/442,854 7 set forth by the Examiner in the action from which this appeal is taken (Ans. 4-11), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans. 12-14). Representative claim 1 does not require that step (d), the step of moving a plurality of pixels, occur prior to steps (a), (b), and/or (c). See Baldwin Graphic Sys. Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (“[A]lthough a method claim necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.”) (citation omitted). “[A]lthough a method claim necessarily recites the steps of the method in a particular order, as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphics Systems, Inc. v. Siebert Inc., 512, F.3d 1338, 1345 (Fed. Cir. 2008); see also Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1343-44 (Fed. Cir. 2001). Unless the steps of a method actually recite an order in which the step must be performed, the steps are not ordinarily construed to require one. Interactive Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). See also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-71 (Fed. Cir. 2003) (district court erred in claim construction by reading a step order from the written description into the claims). We agree with the Examiner (Ans. 13) that the language of claim 1 does not require any specific order or other timing for the execution of the steps. Thompson discloses a method for digital halftoning in which all four steps (a), (b), (c), and (d) are performed. Notably, Appellants’ Figure 2 Appeal 2011-004803 Application 10/442,854 8 (steps 58 and 60) and Figure 3 (see lines 12 and 14 therein) support our finding that Appellants’ disclosed process is also iterative, similar to Thompson’s. Therefore, Appellants’ arguments (App. Br. 9-10) that Thompson’s process performs calculations iteratively multiple times, and not once as recited in claim 1, are not persuasive. We also agree with the Examiner (Ans. 14) that Thompson discloses decreasing the number of pixels as recited in claim 2. Therefore, we will sustain the Examiner’s § 102(b) rejection of claims 1-37. CONCLUSIONS (1) The Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the digital halftoning method recited in claim 1 is not abstract and is performed in an electronic device. (2) The Examiner did not err in rejecting claims 1-37 under 35 U.S.C. § 102(b) as being anticipated by Thompson because Thompson discloses the method for digital halftoning including steps (a), (b), (c), and (d), as recited in representative claim 1, under an interpretation of claim 1 that the steps do not have to be performed in order. DECISION (1) The Examiner’s rejection of claims 1-20 under § 101 is reversed. (2) The Examiner’s anticipation rejection of claims 1-37 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2011-004803 Application 10/442,854 9 AFFIRMED ke Copy with citationCopy as parenthetical citation