Ex parte FITZPATRICK et al.

Board of Patent Appeals and Interferences

Jul 13, 1998

07812249 (B.P.A.I. Jul. 13, 1998)

Application for patent filed December 20, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________
Ex parte GREG FITZPATRICK, WILLIAM J. JOHNSON,
ROBERT S. KELLER and MARVIN L. WILLIAMS
___________
Appeal No. 94-3823
Application 07/812,2491
___________
ON BRIEF
___________
Before JERRY SMITH, LEE AND TORCZON, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-15. No claim has been
allowed.
References relied on by the Examiner
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Application 07/812,249
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Highleyman 2,978,675 Apr. 4, 1961
Clark 4,009,466 Feb. 22, 1977
Martin et al. (Martin) 4,876,735 Oct. 24, 1989
The Rejections on Appeal
Claims 1-15 stand finally rejected under 35 U.S.C. § 112,
first paragraph, as corresponding to a specification that lacks
an enabling disclosure. In addition, claims 1-15 stand finally
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite. Claims 1, 2, 6, 7, 11 and 12 stand finally rejected
under 35 U.S.C. § 103 as being unpatentable over Martin in view
of Clark. Claims 3-5, 8-10 and 13-15 stand finally rejected
under 35 U.S.C. § 103 as being unpatentable over Martin in view
of Clark and Highleyman.
For each of the above rejections, appellants have grouped
the claims together for argument purposes in this appeal. Brief
at 4.
An amendment was filed on September 3, 1993, and the
examiner refused to enter it because it raised new issues
(Paper No. 7). Nevertheless, the amendment was inadvertently
entered and this Board remanded the case to the Examining Group
to remove the amendment from the claims in the file. Such
correction occurred and this case was sent back to the Board.
Appeal No. 94-3823
Application 07/812,249
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The Invention
The invention is directed to machine recognition of color-
coded alphanumeric characters. Such recognition occurs because
the characters differ in geometries and because they contain
differing color pixels. More specifically, each alphanumeric
character has a predominate color, e.g., black, which applies
to the whole character. This predominate color is readily
distinguishable by humans.
Each character also has a non-predominate color which is
intermingled within that character's predominate color and is
non-distracting to humans. The non-predominate color, however,
is distinguishable to and can be detected by a color scanner.
As disclosed, each non-predominate color represents a separate
character. Thus, when the scanner recognizes a particular non-
predominate color, it can then readily recognize the character
associated with that color. In addition, the machine senses the
geometry of a character to determine which character has passed.
Claim 1 is directed to a method for recognizing the above-
discussed geometric color-coded characters by using a first
character recognition system which views the particular
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geometries of the characters, and a second character recognition
system which views the color that is coded within the characters.
Claim 1 is representative of the invention and is reproduced
below:
1. A method of recognizing a color coded character,
wherein said character comprises plural pixels which
are of a first color, said first color pixels being
predominate so as to allow humans to distinguish said
character and a small amount of a second color
associated with said character, said second color being
non-predominate so as to be non-distracting to humans,
but distinguishable by a color scanner, comprising the
steps of:
processing said character in a first processing step
by an optical character recognition means selected
from an optical character recognition group consisting
of geometric optical character recognition and non-
predominate color coded optical character recognition;
and
processing said character in a second processing
step by an optical character recognition means from
said optical character recognition group not selected
in said first processing step.
Opinion
We do not sustain the four rejections entered by the
examiner in this case. This decision is based solely on the
rationales as articulated by the examiner.
Enablement rejection
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The examiner rejected claims 1-15, under 35 U.S.C. § 112,
first paragraph, as corresponding to a specification that lacks
an enabling disclosure. In particular, the examiner states:
An integral part of applicant's invention is the
use of probabilities [in figures 2 and 3] to select
a recognized character. How are these probabilities
calculated (especially in regard to the color coded
characters)? This is a necessary part of the
invention, and has not been addressed in the
applicant's specification.
Answer at 4.
Appellants argue that such calculation of probabilities is
conventional and would be known to those with ordinary skill in
the art, as evidenced by Highleyman. Brief at 4. We agree.
The test for enablement under 35 U.S.C. § 112, first
paragraph, is whether one reasonably skilled in the art could
make or use the claimed invention from the disclosed subject
matter together with information in the art without undue
experimentation. United States v. Telectronics, Inc., 857 F.2d
778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert. denied,
490 U.S. 1046 (1989). A disclosure can be enabling even though
some experimentation is necessary. Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir.
1986), cert. denied, 480 U.S. 947 (1987). The issue is whether
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the amount of required experimentation is undue. In re Vaeck,
947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
To support the enablement rejection, the examiner refers
to two flowchart steps, recited in figures 2 and 3, that read
"CALCULATE PROBABILITIES OF TARGETS BASED ON GEOMETRIC OCR"
and "CALCULATE PROBABILITY OF H1 BASED ON COLOR CODED OCR."
However, Highleyman, which is also directed to a character
recognition system, teaches, inter alia, "[p]robability
information . . . is generally obtained from an analysis of a
large sample of representative characters." Col. 1, lines 34-36.
Thus, it was known in the art that probabilities for a viewed
character, i.e., attempting to figure out what the character is,
could be determined on the basis of knowing what all the
possible, or large sample of, representative characters look
like. That is, starting with all the possible characters,
any image that is later viewed could be analyzed by determining
the likelihood or probability that it is one of the possible
characters.
The examiner has the initial burden to set forth a
reasonable basis to justify questioning the sufficiency of
disclosure for enabling one with ordinary skill in the art to
make and use the claimed invention without undue experimentation.
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In re Angstadt, 537 F.2d 498, 503-04, 190 USPQ 214, 219 (CCPA
1976); see also In re Ambruster, 512 F.2d 676, 678, 185 USPQ 152,
154 (CCPA 1975). However, for this rejection, the examiner
has not explained why an "undue" amount of experimentation is
necessary given what was known in the art, as demonstrated by
Highleyman. Accordingly, we will not sustain the examiner’s
rejection of claims 1-15 under 35 U.S.C. § 112, first paragraph.
Indefiniteness rejection
The examiner rejected claims 1-15, under 35 U.S.C. § 112,
second paragraph, for indefiniteness. In particular, the
examiner states:
In all the claims, the use of the terms
“predominate", "non-predominate", and "non-distracting"
is still indefinite. . . . What is distracting to one
person may, or may not be distracting to another
person. Similarly, the terms predominate and non-
predominate are subjective terms especially in the
way used by the applicant. . . .
The use of the phrase "small amount" (for
instance, in claim 1, line 5) falls in this same
category. That is, the use of the term small
recites an unbased comparison.
Claims 11-15 are unclear. . . . What is meant by
"A method of permitting recognition" is unclear. . . .
The recitation of steps such as "providing a first
means for processing" are [sic] unclear. The steps,
worded in this way, could be directed to a method that
takes place in a factory that assembles the invention,
or they could possibly be directed to a programmer
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sitting at a terminal writing the software for the
invention.
Answer at 4-5. Thus, the examiner views the following claim
phrases as indefinite: "predominate"; "non-predominate";
"non-distracting"; "small amount"; "permitting recognition";
and "processing." We disagree, however, with the examiner that
the foregoing claim phrases are indefinite within the meaning
of 35 U.S.C. § 112, second paragraph, and address each of them
below.
We agree with appellants that, in view of the specification
and claim language, "predominate" is reasonably viewed, by a
person of ordinary skill in the character recognition art, to
mean that a single color is visually associated with a character
and that color is readily distinguishable by humans. See
specification at 4, lines 20-25; claim 1 ("plural pixels which
are of a first color, said first color pixels being predominate
so as to allow humans to distinguish said character"). Thus,
this claim phrase is sufficiently defined. See In re Johnson,
558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA 1977) (only a
reasonable degree of certainty is required); In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970) (the purpose
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of the definiteness requirement is to provide reasonable notice
as to the boundaries of the patent protection involved). Of
course, it is implicit that it is the visual sensitivity of the
human population as a whole that is being referred to, rather
than that of any one individual.
Likewise, in view of the specification and claim language,
"non-predominate" reasonably means that a color is associated
with a character and that the color is non-distracting to humans
but distinguishable by a color scanner. See specification at 4,
lines 23-29; claim 1 ("plural pixels which are of . . . a small
amount of a second color associated with said character, said
second color being non-predominate so as to be non-distracting
to humans, but distinguishable by a color scanner").
"Non-distracting" reasonably means indistinguishable by
humans. Specification at 4, lines 27-29 ("The non-predominate
color is non-distracting to humans, but distinguishable by
a color scanner"); claim 1 ("said second color being non-
predominate so as to be non-distracting to humans"). In claim 1,
"small amount" is used in the context of the non-predominate
color being distinguishable to a color scanner but non-
distracting to humans. Thus, a person of ordinary skill in
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the art would know to use that amount of color which is
distinguishable by a color scanning but not by humans.
The examiner also views the following language in claim 11
to be indefinite: "A method of permitting recognition." Answer
at 5. However, adding the term "permitting" to language that has
already been found to be definite (e.g., claim 1 - "A method of
recognizing a color coded character"), does not make the language
indefinite. These words reasonably appear to mean what they say
and do not, as the examiner argues, suggest "some sort of
security measure to prevent access to a recognition system."
Answer at 5. Finally, claim 11's phrase "providing a first
means for processing" is also reasonably definite because it
merely means selecting one of the two optical character
recognition means. In view of the above, we will not sustain
the examiner’s rejection of claims 1-15 under 35 U.S.C. § 112,
second paragraph.
Obviousness rejections
The examiner rejected claim 1 under 35 U.S.C. § 103 over
Martin in view of Clark and claim 3 under 35 U.S.C. § 103 over
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Martin in view of Clark and Highleyman. The examiner states,
inter alia, that:
Clark discloses a character coding and recognition
system which forms characters which have sections
of different colors as shown in figure 1. The
characters are formed as follows:
Some of the color sections are predominate
(such as the black sections) . . . . Therefore the
sections of predominate color (as well as those of
non-predominate color) do allow humans to recognize
the characters.
Answer at 7-8. However, as appellants amply point out, Clark
discloses plural colors used in various combinations throughout
multiple height bands. This can best be seen by figure 6 of
Clark. Since different colors are used for all of the
characters, there is no predominate color for any character,
i.e., no single color which defines a character to the human eye.
Thus, the claim limitation "plural pixels which are of a first
color, said first color pixels being predominate so as to allow
humans to distinguish said character and a small amount of a
second color . . ." (emphases added) is not met by Clark, which
has been relied on by the examiner to meet this limitation. The
appellants are correct that in Clark the characters do not have a
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predominate color which provides a basis for distinguishing the
characters, or a second color which is non-distracting to humans.
Moreover, the examiner did not find either Martin or Highleyman
as disclosing the predominate and non-predominate color features
of the appellants' claimed invention.
Absent a teaching of the above limitation concerning the
type of characters to be processed, and how they are processed,
we may not sustain the obviousness rejection of claim 1.
Similarly, since the examiner relied on Clark to meet this same
limitation in claim 3, we may not sustain the obviousness
rejection of claim 3, which was made in view of Martin, Clark
and Highleyman.
Conclusions
The rejection of claims 1-15 under 35 U.S.C. § 112, first
paragraph, as corresponding to a specification that lacks an
enabling disclosure is reversed.
The rejection of claims 1-15 under 35 U.S.C. § 112, second
paragraph, for indefiniteness is reversed.
The rejection of claims 1, 2, 6, 7, 11 and 12 under
35 U.S.C. § 103 as being unpatentable over Martin in view
of Clark is reversed.
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The rejection of claims 3-5, 8-10 and 13-15 under 35 U.S.C.
§ 103 as being unpatentable over Martin in view of Clark and
Highleyman is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
JAMESON LEE ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 94-3823
Application 07/812,249
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Edward H. Duffield
IBM Corporation, Intellectual Property Law
T81B/062
3039 Cornwallis Road
P.O. Box 12195
Research Triangle Park, N.C. 27709-2195