Ex Parte Damberg et al

Patent Trial and Appeal Board

Apr 25, 2017

14112347 (P.T.A.B. Apr. 25, 2017)

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.
14/112,347 10/17/2013 Gerwin Damberg D11018US01 4492
68368 7590 04/27/2017
Barcelo, Harrison & Walker, LLP
2901 W. Coast Hwy
Suite 200
Newport Beach, CA 92663
EXAMINER
ELBINGER, STEVEN Z
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
04/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rey@bhiplaw.com
josh@bhiplaw.com
dwalker@bhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERWIN DAMBERG, MARTIN J. RICHARDS, and
CRAIG TODD
Appeal 2015-004606
Application 14/112,347
Technology Center 2600
Before JAMES R. HUGHES, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellants filed a Request for
Rehearing (Req. Reh’g) alleging a misapprehension or oversight by this
Board in a Decision on Appeal mailed February 2, 2017.1 In that Decision,
the Board affirmed the Examiner’s rejections of claims 1, 3—18, 20, 24, 25,
28, and 29 under 35 U.S.C. § 103(a).
1 We refer to Appellants’ Request for Rehearing (“Req. Reh’g.”) filed
Apr. 2, 2017 and our Decision on Appeal (“Dec.”) mailed Feb. 2, 2017. We
also refer to Appellants’ Appeal Brief (“App. Br.”), filed Oct. 30, 2014 and
Reply Brief (“Reply Br.”), filed Mar. 11, 2015, and the Examiner’s Answer
(“Ans.”), mailed Jan. 15, 2015 and Final Office Action (“Final Act.”),
mailed July 2, 2014.
Appeal 2015-004606
Application 14/112,347
ANALYSIS
In the Request for Rehearing received April 2, 2017, Appellants
contend “the Board misapprehended the teachings of Min regarding the
alleged processing of the saturated region” and “the Board . . . overlooked
Dolby’s arguments in the Reply Brief regarding the lack of rational
underpinning for combining Mori with Nishida and Min” (Req. Reh’g. 3).
We have carefully reviewed the Decision in light of Appellants’ allegations
of error. We find Appellants’ contentions to be without merit and we
decline to make any substantive change to our Decision.
The Board’s Purported Misapprehension of Min
With respect to Appellants’ first point of error, that “the Board
misapprehended the teachings of Min” (Req. Reh’g. 3), Appellants contend
the Examiner incorrectly interpreted Min and the Board erred in “basing its
decision on” (Req. Reh’g. 2) the Examiner’s improper findings. See Req.
Reh’g. 2—11. Appellants focus on statements by the Examiner (Ans. 3—6;
Final Act. 21) and the Board (Dec. 5—6) that Min purportedly performs
histogram stretching on saturated image portions. See Req. Reh’g. 2—11.
Even if, arguendo, Appellants are correct that the Examiner incorrectly
interpreted Min with respect to performing histogram stretching on saturated
image portions, these arguments fail to address the basis of Examiner’s
actual rejection and the corresponding support in Min for the rejection —
that is, the Examiner’s findings with respect to Min’s teaching of a second
threshold. Therefore, Appellants’ arguments do not persuade us that we
misapprehended any relevant fact in our original Decision. Nevertheless, we
address Appellants’ arguments to more thoroughly explain and clarify our
findings concerning Min.
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Application 14/112,347
In Appellants’ Appeal Brief and Reply Brief, Appellants focused their
arguments on the Examiner’s discussion of Min’s teaching of processing
saturated images, without addressing the actual basis of the Examiner’s
rejection — that Min teaches or suggests a threshold (second threshold) for
luminance values. See App. Br. 5—13; Reply Br. 4—11. In particular,
Appellants focused on the Examiner’s citations of Min, which Appellants
contend describe “a saturation threshold and saturated portions of an image,
which . . . have more than a predetermined number of high luminance
pixels” (App. Br. 10) rather than “no more than a predetermined number of
pixels” (claim 1) as required by the disputed limitations of claim 1. See
App. Br. 5—13; Reply Br. 4—11. The Board agreed with the Examiner and
explained that Min teaches or at least suggests a saturation (second)
threshold — “[w]e agree with the Examiner that Min at least suggests a
second threshold (saturation image level) and image processing such that no
more than a ‘predetermined number of pixels,’ that is Min’s frequency (of
pixels, see Fig. 5B), exceeds the second threshold (saturation image level).”
Dec. 5—6. Appellants do not persuasively explain how or why the Board’s
findings result in reversible error— that is, how the Board’s interpretation of
Min or the Board’s agreement with the Examiner on this aspect of Min is
inaccurate or incorrect. In other words, Appellants do not persuasively
explain how the Board misapprehended these particular teachings of Min.
See Req. Reh’g. 2—11.
The Board also stated “[t]he Examiner found that Min describes
histogram stretching (image processing) of image portions (image data) that
are saturated, i.e., where a group of pixels (in the processed image) would
include too many pixels having luminance values that are too high” and
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Application 14/112,347
“Min further describes processing the image (histogram stretching) such that
some high luminance pixels are preserved, but the image portions are
desaturated — the number of pixels with a luminance above a threshold
(saturation) is reduced.” Dec. 5.
On review, we clarify our findings summarized in the above
statements to eliminate any ambiguity. In our Decision {id.) we agreed with
the Examiner that Min describes image processing of image data, including
histogram stretching of portions of the image data, where the original image
(image data) includes saturated portions having too many pixels with
luminance values that are too high.
Min describes histograms — frequency (quantity) distributions of data
having particular values — in this instance image level (brightness)
histograms, and determining an image saturation threshold (saturated image
level). See 1 54; Fig. 3A. Therefore, Min teaches a luminance value
(second) threshold.
Appellants are correct that Min also describes excluding the saturated
image portions (data having an image level above the saturated image level)
from histogram stretching. See Req. Reh’g. 2—11. Min, however, further
describes shifting image data (described in a histogram) prior to histogram
stretching such that the number of pixels (frequency) having a particular
image level (brightness) (see Fig. 5B, x-axis) is reduced (shifted to middle).
See 54, 59, 61; Figs. 3A, 5B, 6; Dec. 5—6 (citing Ans. 3—6). Therefore,
Min teaches processing image data such that no more than a predetermined
number (frequency) of pixels have an image level (brightness or luminance
value) that is greater that (exceeds) a particular image level (a luminance
value threshold (second threshold)). Appellants are correct that Min does
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Application 14/112,347
not describe a specific threshold value with respect to Fig. 5B (see Req.
Reh’g. 9—11), but the Examiner found and the Board agreed (supra) that
Min generally teaches reducing the frequency of pixels, i.e., a predetermined
number, above a particular image level, i.e., a threshold. Similarly,
Appellants’ claim 1 also does not recite a particular threshold value, so Min
need not recite a particular threshold value to meet the claim limitation at
issue.
Additionally, we note that Appellants misinterpret Min’s Fig. 5B,
stating that Fig. 5B depicts data that has already been stretched. See Req.
Reh’g. 4, 9—10. Min explicitly describes Fig. 5B as depicting input image
data (data that has not been stretched) and mapping the data using a gamma
curve to shift the data prior to stretching. See Tffl 49, 59. In view of Min’s
disclosure, the Board’s findings with respect to Min in the Decision, and
Appellants’ detailed but ultimately unavailing arguments in the Request for
Rehearing, Appellants’ do not persuade us that we overlooked or
misapprehended any relevant facts in our original Decision.
The Examiner’s Rationale for Combining
With respect to Appellants’ second point of error, that the Board
“overlooked [Appellants’] arguments in the Reply Brief regarding the lack
of rational underpinning for combining Mori with Nishida and Min” (Req.
Reh’g. 3), Appellants contend that the “Decision’s misapprehension of the
teachings of Min also taints its conclusion that the Examiner provided
adequate rational underpinning for the obviousness rejections, all of which
relied upon Min as teaching the limitation discussed in Section II above”
(Req. Reh’g. 11). See Req. Reh’g. 11—12. As we explained (supra), the
Board did not misapprehend the teachings of Min. Further, the Board
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Application 14/112,347
thoroughly addressed Appellants’ arguments concerning the combinability
of Mori, Nishida, and Min in the Decision. See Dec. 6—7.
Appellants further contend that the Board overlooked combinability
arguments made in the Reply Brief with respect to the secondary references.
See Req. Reh’g. 12—16 (referencing Reply Br. 14—18). Appellants are
correct that the “Decision makes no reference to any of the above
arguments” (Req. Reh’g. 15). The Board did not, however, overlook
Appellants’ arguments in the Reply Brief concerning the secondary
references. Rather, the Decision addressed Appellants’ combinability
arguments with respect to the secondary references (Kroll, Holman,
Gliickstad ’874, Gliickstad ’948, and Routley) made in the Appeal Brief.
See Dec. 7—8 (referencing Appeal Br. 16—18). The Board addressed
Appellants’ arguments concerning the combinability of the secondary
references with Mori, Nishida, and Min in the Decision and explained that
Appellants’ arguments were not persuasive of Examiner error. See Dec. 7—
8. The Board did not address Appellants combinability arguments made for
the first time in the Reply Brief (see Reply Br. 14—18) because those
arguments were 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 examiner’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 CFR § 41.41(b)(2) (2012); see also Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 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
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Application 14/112,347
cause explaining why the argument could not have been presented in the
principal brief). The 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.” Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (“Informative”).
Appellants’ combinability arguments {supra) were not made in the
Appeal Brief, but could have been, and are not responsive to any new
evidence set forth by the Examiner in the Answer. Absent a showing of
good cause why the arguments could not have been presented in the Appeal
Brief, which Appellants’ did not provide, Appellants’ arguments are
untimely and deemed waived. We declined to consider these arguments
raised for the first time in the Reply Brief. See Ex parte Nakashima, 93
USPQ2d at 1837; Ex parte Borden, 93 USPQ2d at 1477.
In the Appeal Brief, Appellants made general arguments concerning
the combinability of the secondary references with Mori, Nishida, and Min.
See supra', Dec. 7—8; Appeal Br. 16—18. The Examiner, in response to
Appellants’ general combinability arguments, clarified and supplemented
the rationale for combining each of these references in the Examiner’s
Answer. See Ans. 9, 11—14. Appellants, for the first time in their Reply
Brief, responded with more detailed contentions concerning purported
deficiencies in the Examiner’s rationale for combining the references. See
Reply Br. 14—18. The Examiner, however, has not been provided an
opportunity to respond to Appellants’ new contentions. Further, as with the
Appeal Brief (see Appeal Br. 16—18), Appellants’ quoted the Examiner’s
response and averred that the Examiner failed to sufficiently explain why
one of ordinary skill in the art would have modified and/or combined Mori,
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Application 14/112,347
Nishida, and Min with the discussed features of the secondary references.
See Reply Br. 14—18. As in their Appeal Brief (see Dec. 8), Appellants did
not explain how the Examiner’s rationale lacked the requisite rational
underpinning — that is, how the Examiner’s rationale for combining the
references (generally, improved functionality) (see Ans. 9, 11—14) was
improper or beyond the skill of the ordinarily skilled artisan (see Dec. 8).
See Reply Br. 14—18.
None of Appellants’ arguments persuade us that we misapprehended
any points of law or fact in our original Decision. For these reasons, we find
Appellants’ arguments unpersuasive of error, either in our Decision or the
Examiner’s rejection, and we decline to modify our Decision.
CONCLUSION
To the extent we have provided additional clarification beyond that of
our Decision, Appellants’ Request for Rehearing is granted, in that we have
considered Appellants’ arguments and provided additional explanation
which we incorporate into the Decision. We provide, herein, additional
explanation with respect to the Min reference and Appellants’ combinability
arguments presented in the Reply Brief and we modify our Decision to
further incorporate these explanations and clarifications. As discussed
supra, however, we find Appellants’ arguments unpersuasive of Examiner
error and maintain our Decision affirming the Examiner’s decision rejecting
claims 1, 3—18, 20, 24, 25, 28, and 29.
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing. We decline to modify our original Decision.
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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).
REQUEST FOR REHEARING - GRANTED
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