Ex Parte Hong

Board of Patent Appeals and Interferences

Sep 21, 2010

11081075 (B.P.A.I. Sep. 21, 2010)

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.
11/081,075 03/16/2005 Min-Cheol Hong 63000-000003/US/DVB 9192
30593 7590 09/22/2010
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
DANG, DUY M
ART UNIT PAPER NUMBER
2624
MAIL DATE DELIVERY MODE
09/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MIN-CHEOL HONG
____________________

Appeal 2010-005214
Reissue Application 11/081,0751
Patent 6,535,643
Technology Center 2600
____________________

Before JAMESON LEE, RICHARD TORCZON, and SALLY MEDLEY,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

1 Application to reissue Patent 6,535,643. In this opinion, references to
the LG specification refers to column and line number of Patent 6,535,643.
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DECISION ON APPEAL2
A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest LG
Electronics Inc. (“LG”) under 35 U.S.C. § 134(a) from a final rejection of
claims 27-42. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Reference Relied on by the Examiner
Lee 6,167,164 Dec. 26, 2000

The Rejections on Appeal
The Examiner rejected claims 27-42 under 35 U.S.C. § 112, first
paragraph, as lacking written description.
The Examiner rejected claims 27-42 under 35 U.S.C. § 102 as
unpatentable over Lee.
The Examiner rejected claims 27-42 under 35 U.S.C. § 101 as being
drawn to non-statutory subject matter.
The Invention
The claimed invention on appeal is in the field of digital image
processing and is broadly directed to “a method of filtering an image.” In
the digital image processing art, the term “filtering” covers any manipulation
of the data that represents the original image being processed. Claims 27
and 37 are the only two independent claims and are reproduced below:

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the ‘NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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27. A method of filtering an image, comprising:

determining a filter strength based on whether a block
including a pixel to be filtered is intra-coded; and

filtering the pixel to be filtered using a filtering
methodology that adjusts a degree of filtering based on the
determined filter strength and a difference value, the difference
value being based on the pixel to be filtered and a neighboring
pixel.

37. A method of filtering an image, comprising:

determining a filter strength based on whether a block
including a pixel to be filtered is intra-coded;

obtaining a difference between values of two pixels in a
portion of an image; and

filtering the pixel to be filtered using a filtering
methodology that adjusts a degree of filtering based on the
difference and the determined filter strength.

B. ISSUES
1. Did the Examiner incorrectly determine that claims 27-42 are
without written description in the specification?
2. Did the Examiner incorrectly determine that claims 27-42 are
anticipated by Lee?
3. Did the Examiner incorrectly determine that the subject matter
of claims 27-42 does not perform any physical transformation of any article
or material and does not require the use of any particular apparatus?

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C. FINDINGS AND ANALYSIS
The Written Description Rejection
To satisfy the written description requirement under 35 U.S.C. § 112,
first paragraph, the specification must convey with reasonable clarity to
those skilled in the art that as of the filing date of the application the inventor
was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The Examiner bears the initial
burden of presenting a prima facie case of lack of written description support
in the disclosure. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
Note also that satisfaction of the written description requirement does not
require in haec verba antecedence in the originally filed application. In re
Lukach, 442 F.2d 967 (CCPA 1971).
Each of independent claims 27 and 37 recites a method of filtering an
image and a step of: “determining a filter strength based on whether a block
including a pixel to be filtered is intra-coded.”
The claim terms “filter” and “filter strength” are not expressly defined
in the specification. However, from the perspective of one with ordinary
skill in the digital image processing art, and applying the rule of broadest
reasonable construction in light of the specification, “filtering” covers any
manipulation or alteration of the data which represents the original image,
and “filter strength” is a characteristic of that manipulation and alteration.
The claim term “intra-coded” indicates that the original image, when
created in digital representation, was created by use of a known method of
encoding -- intra-coding. Based on the specification, an alternative known
encoding method is referred to as inter-coding.
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LG correctly states that data processing equations (8) and (9) define
filters each having a different filter strength. In column 6, lines 35-37, the
LG specification states: “The pixels expressed by Equation 8 are the pixels
included in the inter macro block.” In column 6, lines 45-46, the LG
specification states: “[T]he pixels included in the intra macro block may be
expressed in the following Equation 9.” The pixels included in the intra
macro block are obtained based on Equation 9. (Specification at 6:55-56).
Equations (8) and (9) have different numerator compositions as well
as a different denominator in the expression of an expressed pixel value.
They are not the same. Nor are they Equivalents. Thus, they have different
filter strengths. The equations are reproduced below:

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Although neither equation is described expressly as a “filter,” they do
substantively define a filter for converting or transforming original image
data. The approximations are different and so their filter strength is
different. The Examiner has not articulated what he regards as the meaning
of a “filter.” Nor has the Examiner articulated what he regards as “filter
strength.” As is explained above, the disclosure also unmistakably describes
that Equation (8) is used for expressing inter coded data blocks and equation
(9) is used for expressing intra coded data blocks. Thus, each equation has a
different filter strength and reflects a different degree of filtering.
On this record, the Examiner’s conclusion that the disclosure has no
written description for determining a filter strength based on whether a block
including a pixel to be filtered is intra coded is unsupported and incorrect.
Claim 27 further recites the step of: “filtering the pixel to be filtered
using a filtering methodology that adjusts a degree of filtering based on
the determined filter strength and a difference value, the difference
value being based on the pixel to be filtered and a neighboring pixel.”
(Emphasis added.) Claim 37 has a similar feature, but it refers to a
difference between two pixels rather than the difference between the pixel
being filtered and a neighboring pixel:
obtaining a difference between values of two pixels in a
portion of an image; and

filtering the pixel to be filtered using a filtering
methodology that adjusts a degree of filtering based on the
difference and the determined filter strength.

The Examiner did not articulate how the above-noted claim feature is
interpreted in light of LG’s specification. Applying the rule of broadest
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reasonable interpretation, we regard it as simply requiring that there is a
defined filtering formula with its own associated filter strength, and that a
parameter within the filtering formula is the claimed difference. In the
context of claim 27, the difference is between the pixel to be filtered and a
neighboring pixel. In the context of claim 37, the difference is broadly
stated as just between two pixels.
The Examiner’s conclusion that the above-noted feature of claims 27
and 37 is without written description in the disclosure is unsupported. The
conclusion is undermined by the Examiner’s failure to recognize Equation
(9) as a filter and, in particular, a filter exhibiting its own filter strength. As
is pointed out by LG, Equation (9) has in its parameters the differences
between the pixel being filtered and adjacent pixels. The parameters appear
in the definition of αTOT which is shown in Equation (10) as reproduced
below (Spec. 7:20-32):

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The dependent claims include the limitations of all claims on which
they depend. For the foregoing reasons, the rejection of claims 27-42 under
35 U.S.C. § 112, first paragraph, as lacking written description cannot be
sustained.
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The Anticipation Rejection
Anticipation under 35 U.S.C. § 102 requires that each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999).
Both independent claims 27 and 37 recite a filtering method including
the step of determining a filter strength based on whether a block including a
pixel to be filtered is intra-coded. All claims depending on claim 27 or 37
share the same limitation.
Claim 27 and claims dependent thereon further require filtering by
adjusting the degree of filtering based on the determined filter strength and a
difference between the pixel to be filtered and a neighboring pixel. Claim
37 and claims dependent thereon have a similar feature, but it refers to a
difference between two pixels rather than the difference between the pixel
being filtered and a neighboring pixel.
As we have already explained above, applying the rule of broadest
reasonable interpretation, we regard the above-noted additional feature as
simply requiring that there is a defined filtering formula with its own
associated filter strength, and that a parameter within the filtering formula is
the claimed difference. In the context of claim 27 and claims dependent
thereon, the difference is between the pixel to be filtered and a neighboring
pixel. In the context of claim 37 and claims dependent thereon, the
difference is broadly stated as just between two pixels. The filter strength
can be but does not have to be any particular multiplier. Indeed, all defined
filter formulas has a filter strength based on the formulas themselves.
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The Examiner cited to the intraframe determination step 305 in Lee’s
Figure 3A and Lee’s threshold value calculator 110 in Lee’s Figure 1 as
satisfying the claimed feature of determining a filter strength based on
whether a block including a pixel to be filtered is intra-coded. (Ans. 8:27 to
9:2). According to LG (Br. 15), however, Lee’s intraframe determination
305 is used only to determine if filtering is to be performed at all and not to
determine a particular filter strength to be applied.
LG’s argument is rejected. Under the principle of broadest reasonable
interpretation, a filter strength of zero or none can correspond to no filtering
at all. Accordingly, a decision whether to apply filtering satisfies the
requirement of determining a filter strength, e.g., some or none. “Absent
claim language carrying a narrow meaning, the PTO should only limit the
claim based on the specification or prosecution history when those sources
expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). In this case, LG’s specification and prosecution history
have not expressly disclaimed regarding no filtering at all as corresponding
to a filter strength of zero or none.
The Examiner, however, has not established that Lee discloses the
claim feature of adjusting the degree of filtering based on the determined
filter strength and a difference between the pixel to be filtered and a
neighboring pixel (claim 27) or a difference between two pixels (claim 37).
As we have construed these claims, the pertinent feature of claim 27 requires
the difference between the pixel being filtered and a neighboring pixel be a
parameter within the defined filtering formula, and the pertinent feature of
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claim 37 requires the difference between two pixels be a parameter within
the defined filtering formula.
For the feature of relying on a difference value in the filtering process,
the Examiner points to a plethora of components in Lee’s disclosure,
including the threshold value calculator 110, the intraframe determination
step 305 of Figure 3A and the intraframe determination step 405 of Figure
3B, the gradient operation unit 120, the binary edge map generator 140, the
weighted filter value generator 150, and filter 160. (Ans. 8:28 to 9:15).
However, nowhere has the Examiner identified where the difference value is
involved as a parameter within a filtering formula applied by filter 160.
The Examiner bears the initial burden of presenting a prima facie
case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Although the
gradient operation unit 120 does compute a difference between a pixel to be
filtered and a neighboring filter, that difference is involved only in the
determination of whether the pixel is an edge pixel. In that regard, Lee
states (col. 5:56-63):
The threshold value comparator 130 compares each
gradient operation value of the pixels within the one-
dimensional windows, calculated by the gradient operation unit
120, with the threshold value T calculated by the threshold
calculator 110, to determine whether or not the pixel is an edge
pixel (step 335). Also, the binary edge map generator 140
generates the results of the threshold value comparator 130 as a
binary value for each pixel.

As is shown in the operational flow diagrams of Lee (Figures 3A and
3B), no filtering is performed if the pixel is an edge pixel. The binary edge
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map does not contain any difference value between two pixels. It is a map
simply indicating whether each pixel is an edge pixel. (Lee 5:61-63).
The weighted filter value generator 150 generates weighted values
according to the information in the binary edge map. (Lee 6:23-25). The
filter 160 filters the image data using the weighted values generated by the
weighted filter value generator 150, to generate new pixel values. (Lee
6:29-32). It is not evident, and the Examiner has not articulated, how the
filter 160 employs a conversion formula having as a parameter a difference
value between two pixels according to claim 37 or between the pixel being
filtered and a neighboring pixel according to claim 27.
For the foregoing reasons, the rejection of claims 27-42 as anticipated
by Lee cannot be sustained.
The Non-Statutory Subject Matter Rejection
The Examiner concluded that all of the claims are drawn to non-
statutory subject matter under 35 U.S.C. § 101. According to the Examiner,
the claims do not meet the “machine or transformation” test, i.e., (1) tied to a
particular machine or apparatus, and (2) transforms a particular article into a
different state or thing. On appeal, LG has grouped all rejected claims with
claims 27 and 37. We regard claims 27 and 37 as representative. See
37 C.F.R. § 41.37 c(1)(vii).
Both independent claims include the limitation “determining a filter
strength based on whether a block including a pixel to be filtered is intra-
coded.” As we have discussed above, the feature is sufficiently broad to
read on selecting, under a particular circumstance, a mathematical formula
to convert data from one set of values to another.
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Claim 27 further recites: “filtering the pixel to be filtered . . . based
on the determined filter strength and a difference value, the difference value
being based on the pixel to be filtered and a neighboring pixel.”
Claim 37 further recites: “obtaining a difference between values of
two pixels . . . ,” and “filtering the pixel to be filtered . . . based on the
difference and the determined filter strength.”
Obtaining a difference between values of two pixels reads on merely a
mathematical operation on two sets of numbers. And as has been discussed
above, the step of filtering the pixel, whether it is based on the difference
between the pixel being filtered and a neighboring pixel or just between two
pixels, is broad enough to read on mere mathematical manipulation of data.
The mathematical computation is not tied to a particular machine, and is
insufficient to cause transformation of an article from one state to another.
The claims read on mere application of a mathematical formula to input
data.
We have considered LG’s arguments and do not find them persuasive.
According to LG, a “pixel” is the smallest adjustable piece of a displayed
image and thus is itself a physical object. (Reply Br. 10:4-5). Alternatively,
LG asserts that in any event a “pixel” still must be a unit of a visual
depiction of a physical object. (Reply Br. 10:8-9). We do not reject the
position that a pixel can refer to an element on a visual display and also to a
physical visual depiction of an image. However, the term is sufficiently
broad to also read on a numeric or mathematical representation of an image.
LG has submitted no declaration evidence to indicate the contrary.
Moreover, LG’s own specification is filled with examples of using the term
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“pixel” to refer to the mathematical representation or value expression of a
real or physical pixel on a display. For instance, from column 6, line 64 to
column 7, line 2, the specification states:
As seen in equation 5, each regularization parameter
variable includes an original pixel, a neighboring pixel, and a
recovering pixel (compressed pixel). In addition, since the
original pixel f(i,j) and four neighboring pixels f(i, j-1), f(i,j+1),
f(i-1,j), f(i+1,j) are the original pixels, these values do not exist
in the decoder. (Emphasis added.)

LG’s assertion that filtering a pixel necessarily produces a visual
depiction of a physical object or transforms a physical object is without
merit and rejected. “Filtering a pixel . . .” is a sufficiently broad recitation to
read on applying a mathematical formula on one set of data values to result
in a different set of data values. The claims on appeal read on mere
mathematical manipulation of data.
LG further likens the rejected claims to claim 6 involved in In re
Abele, 684 F.2d 902, 908 (CCPA 1982), which LG asserts (Reply Br. 9:8 to
10:2) was discussed with approval by the Federal Circuit in In re Bilski, 545
F.3d 943 (Fed. Cir. 2008):
5. A method of displaying data in a field comprising
the steps of

calculating the difference between the local value of the
data at a data point in the field and the average value of the data
in a region of the field which surrounds said point for each
point in said field, and

displaying the value of said difference as a signed gray
scale at a point in a picture which corresponds to said data
point.
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6. The method of claim 5 wherein said data is X-ray
attenuation data produced in a two dimensional field by a
computed tomography scanner.

The comparison is misplaced. The rejected claims are unlike the
above-quoted claims. Note that claim 5 as reproduced above includes the
physical, non-computational, step of displaying something in a picture.
Neither claim 27 nor claim 37 on appeal includes such a displaying step. LG
is incorrect that claims 27 and 37 require the production of a visual output.
No such displaying step is included in these claims. Both claims can be met
completely by mere mathematical computation.
Under Supreme Court precedent, claims sufficiently broad to
cover mere mathematical computation are non-statutory under
35 U.S.C. § 101. See Gottschalk v. Benson, 409 U.S. 63, 70 (1972).
For the foregoing reasons, we sustain the rejection of claims 27-42
under 35 U.S.C. § 101, as being drawn to non-statutory subject matter.
D. CONCLUSION
The rejection of claims 27-42 under 35 U.S.C. § 112, first paragraph,
as without written description is reversed.
The rejection of claims 27-42 under 35 U.S.C. § 102 as anticipated by
Lee is reversed.
The rejection of claims 27-42 under 35 U.S.C. § 101 as being drawn
to non-statutory subject matter is affirmed.

AFFIRMED

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HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195