Ex Parte 6144763 et al

Patent Trial and Appeal Board

Jan 10, 2018

90020087 (P.T.A.B. Jan. 10, 2018)

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. 90/020,087 07/31/2015 6144763 100252-5001-REX 5655 9629 7590 01/11/2018 MORGAN LEWIS & BOCKIUS LLP (WA) 1111 PENNSYLVANIA AVENUE NW WASHINGTON, DC 20004 EXAMINER POKRZYWA, JOSEPH R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/11/2018 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 ____________ Ex parte FUJIFILM HOLDINGS CORPORATION, Patent Owner and Appellant ____________ Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and DAVID M. KOHUT, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON APPEAL This proceeding arose out of a request for ex parte reexamination of U.S. Patent No. 6,144,763 (“the ’763 patent”) to Kenji Ito, entitled Method and Apparatus for Compression Coding of Image Data Representative of a Color Image and Digital Camera Including the Same, issued November 7, 2000. Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 2 Patent Owner appeals under 35 U.S.C. § 134 and 306 from the Examiner’s rejection of claims 1-11. App. Br. 5-6.1 We have jurisdiction under 35 U.S.C. § 6(b). The disclosed invention relates generally to compressing image data. See Spec 1:10-11. Claim 1 reads as follows: 1. An apparatus for compressing and coding image data representative of a color image and including a luminance component and chrominance components, and outputting resulting coded image data, said apparatus comprising: a signal processing circuit for processing the image data to output processed image data; a storage for storing the processed image data and allowing the processed image data to be read out in preselected blocks component by component; a compression coding circuit for compressing and coding the processed image data read out of said storage component by component to output coded data; an outputting circuit for outputting the coded data; and a system controller for controlling said compression coding circuit in accordance with a mode for compressing the image data; said system controller being operative in response to a monochrome mode selected for compressing and coding the image data such that the image data render a monochrome image to fix the chrominance components of the image data to a single, fixed value, and control said compression coding circuit to compress and code resulting fixed chrominance components and the luminance component. 1 Appeal Brief, filed January 17, 2017 (“App. Br.”). Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 3 Patent Owner appeals the Examiner’s rejection of claims 1-3, 5, and 7-11 under 35 U.S.C. § 102(e) as anticipated by U.S. Patent 6,486,981 (“Shimura”); claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over Shimura and U.S. Patent 5,734,427 (“Hayashi”); and claims 1, 2, 7 and 11 under 35 U.S.C. § 103(a) as unpatentable over Shimura and JP H8-32997 (“Oguro”). App. Br. 5-6. ISSUE Did the Examiner err in rejecting claims 1-11? ANALYSIS Claim 1 recites in response to a monochrome mode selected for compressing and coding the image data such that the image data renders a monochrome image to fix the chrominance components of the image data to a single, fixed value, and control said compression coding circuit to compress and code resulting fixed chrominance components and the luminance component. The Examiner finds that Shimura discloses these features. Final Act. 4-5. Patent Owner argues that Shimura fails to disclose rendering a monochrome image. App. Br. 13-14. As Patent Owner states, Shimura discloses a “block” of image data “is discriminated as a monocolor area.” App. Br. 13 (citing Shimura 9:21-43). Hence, Shimura discloses rendering “monocolor” image data. Patent Owner does not explain a meaningful Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 4 difference between rendering a “monocolor” image of Shimura and the claim feature of rendering a “monochrome” image. One of ordinary skill in the art would have understood that rendering a “monocolor” image would entail rendering a “monochrome” image, the two terms being virtually synonymous. Instead, Patent Owner argues that the “monocolor” image of Shimura differs from the “monochrome” image, as recited in claim 1, because “the invention of claim 1 will render a monochrome image of [a] fire truck and [] grass . . .” while, according to Patent Owner, “Shimura’s processor will render a color image.” App. Br. 13. We are not persuaded by Patent Owner. As previously noted, Shimura discloses rendering a “monocolor” image. Patent Owner does not explain how one of skill in the art would have understood that rendering a “monocolor” image of Shimura would have been, in actuality, rendering a “color” image that somehow differs materially from a “monochrome” image. One of skill in the art, given the explicit disclosure of Shimura of rendering a “monocolor” image, would not have then performed the opposite - i.e., rendering a “color” image. Patent Owner argues that Shimura fails to disclose “values of . . . chrominance components . . . fixed to a single, fixed value.” App. Br. 13. We are not persuaded by Patent Owner’s argument. For example, Shimura discloses that “[o]n the area discriminated as a non-chromatic character area, the sub-sampling ratio is maintained [i.e., “fixed”] as 4:1:1,” “values of Cb and Cr components [i.e., chrominance components] are fixed values,” and Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 5 “the Cb and Cr components [i.e., chrominance components] will have fixed values.” Shimura 5:43-44, 6:60, 7:13. Based at least on these explicit disclosures of Shimura that the chrominance components are fixed to a value, we are not persuaded by Patent Owner’s argument that Shimura supposedly fails to disclose this feature. Patent Owner also argues that Shimura fails to disclose “‘image data representative of a color image’ as being a 16x16 block of pixels” or that “a single 16x16 block can be representative of [a color image].” App. Br. 15. Claim 1 recites a “color image.” Patent Owner does not demonstrate sufficiently that claim 1 also recites a “color image” that is “a 16x16 block of pixels.” Nor do we independently identify such a claim limitation. Therefore, we need not consider whether or not Shimura (or any other reference) discloses a color image that is “a 16x16 block of pixels.” Patent Owner argues that Shimura fails to disclose “selection of a monochrome mode.” App. Br. 19. Claim 1 recites a controller that fixes chrominance components of image data in response to “a monochrome mode selected.” As previously noted, Shimura discloses fixing chrominance components of image data. Shimura also discloses chrominance components of image data are “fixed” when the system “discriminates” a “monocolor area.” See e.g., Shimura 6:58-60. In other words, Shimura discloses that when a “monocolor area” is “discriminated” (i.e., a “monochrome mode” is “selected”), chrominance components of image data are “fixed.” We disagree with Patent Owner’s argument that Shimura Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 6 differs from the claim feature of a controller fixing chrominance components in response to “a monochrome mode [being] selected,” as recited in claim 1. Patent Owner also argues that Shimura discloses a “discrimination unit . . . [that] determines whether [a] . . . block of an image is . . . monocolor” but that the “discrimination unit” of Shimura “is not responsive to the selection of a monochrome mode.” App. Br. 18-19. As previously discussed, claim 1 recites a controller that fixes the chrominance components of image data in response to “a monochrome mode selected.” Claim 1 does not also recite or otherwise require a “discrimination unit” that is “responsive to the selection of a monochrome mode,” as Patent Owner appears to contend. Rather, claim 1 merely requires “a monochrome mode selected” and, in response, a controller fixing chrominance components of image data. As previously described, Shimura discloses this feature. Patent Owner argues that Shimura fails to disclose “that data is read out . . . in preselected blocks component by component, as recited in claim 1.” App. Br. 20. Claim 1 recites processing image data and allowing the processed image data to be read out in preselected blocks component by component. As the Examiner explains, Shimura discloses “input image data,” “dividing the input image data into blocks and discriminating [the image data] (i.e., “processing” the data),” “a latch circuit for holding [i.e., “storing”] . . . the data of the Cb signal,” another “latch circuit for holding [i.e., “storing”] the data of the Cr signal,” and another “latch circuit for holding [i.e., “storing”] the data of the area of four blocks of the Y signal.” Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 7 Final Act. 3-4; see also Shimura 7:55-63. Shimura also discloses that the data in each of the latches are output (separately from respective latch circuits - i.e., separately in preselected blocks and “component by component”). Patent Owner argues that “Shimura does not disclose how the Cb, Cr and Y components are output from latches 82, 83, and 84.” App. Br. 22. As noted above, claim 1 recites allowing processed image data to be read out in preselected blocks component by component. Patent Owner does not indicate a specific feature recited in claim 1 pertaining to “how” blocks of data are read out component by component that Shimura fails to disclose. Rather, as previously discussed, Shimura discloses allowing processed image data to be read out in preselected blocks component by component, as recited in claim 1. We are not persuaded by Patent Owner’s argument. Patent Owner does not provide additional arguments in support of claims 4 and 6 or arguments with respect to Hayashi. App. Br. 21. Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Shimura and Oguro because, according to Patent Owner, “Oguro and Shimura are directed to different technologies.” App. Br. 22. Shimura discloses an image processing method and apparatus. Shimura Title, Abstract. Oguro discloses an “image recording and reproducing device” and method. Oguro Title, Abstract. Patent Owner contends that Shimura and Oguro are “directed to different technologies” but fails to explain sufficiently the Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 8 supposed differences between a system for image processing (Shimura) and a system for image recording and reproducing (Oguro). In the absence of an adequate explanation, we conclude that one of ordinary skill in the art would have understood a system for “image processing” to be related to a system for “image recording” and “reproducing,” given that both such systems would have been expected to process image data. In any event, while Patent Owner’s precise argument is not entirely clear, even assuming Patent Owner’s implied contention that there is supposedly a substantial difference between “image processing” (Shimura) and “image recording and reproducing” (Oguro), and assuming Patent Owner intends to argue that Shimura and Oguro are non-analogous art, Patent Owner does not explain sufficiently how this presumed difference in technology refutes the Examiner’s prima facie showing of obviousness of the combination of the references. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Hence, even assuming that Shimura’s image processing system is “in a different field from” Oguro’s image recording and reproducing system and that both references are “in a different field from” the claimed invention (Patent Owner fails to provide this showing, however), Patent Owner does not demonstrate persuasively that any of the “matter with which” Shimura Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 9 “deals” (i.e., an image processing system and method) or the “matter with which” Oguro “deals” (i.e., an image recording and reproducing system) does not “logically . . . commend[] itself to” the inventor’s attention (i.e., an apparatus for processing an image, as claimed). In the absence of such a showing, we conclude that either one of Shimura’s image processing system and method or Oguro’s image recording and reproducing system would have logically commended themselves to the inventor’s attention in providing an apparatus for processing an image, at least because each of the systems process image data. One of ordinary skill in the art of providing an image processing apparatus, as recited in claim 1, would have logically referred to references that disclose providing image processing systems or methods. In view of the fact that both Shimura and Oguro disclose systems/methods for image processing (or image recording and reproducing) similar to that which is recited in claim 1 (i.e., an apparatus for image processing), we agree with the Examiner that either of Shimura or Oguro would have commended itself to the inventor’s attention. Patent Owner also argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Shimura and Oguro because “[t]here would be no proper reason to insert latches 82, 83 and 84 of Shimura, which are provided before the Cb and Cr values may be changed, into the blocking/shuffling circuit 43 of Oguro, which is provided in the signal path after the switch SW22 connects either the output of A/D converters 207, 208 or the output of constant value generating circuit 209 Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 10 into the signal path,” “[t]here is no teaching or suggestion that intermediate data generated by Oguro’s circuit should be stored for use by other later processes,” and “Oguro is seeking to record video” rather than processing “still photographic images,” and that “[i]f the Oguro system were modified to use a JPEG system for compression and coding the modified system could not use the recorded mode information during playback to implement the ‘color killer’ operation and, therefore would not operate satisfactorily for its original intended purpose.” Final Act. 23-25. We disagree with Patent Owner for at least the reasons set forth by the Examiner. See, e.g., Ans. 28- 29. To the extent that Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have bodily incorporated the teachings of Oguro into the disclosure of Shimura (or vice versa), we note that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . .. Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Hence, we are not persuaded by Patent Owner’s argument for at least this reason. SUMMARY We affirm the Examiner’s rejection of claims 1-11. Appeal 2017-008864 Reexamination Control 90/020,087 Patent 6,144,763 11 AFFIRMED