Ex Parte Kirchner et al

Patent Trial and Appeal Board

Mar 23, 2017

13265643 (P.T.A.B. Mar. 23, 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.
13/265,643 01/03/2012 Eric Jacob Jan Kirchner 16-837-WO-US 9151
141081 7590 03/23/2017
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP/AkzoNobel
300 S. WACKER DRIVE
3 2ND FLOOR
CHICAGO, IL 60606
EXAMINER
CASCHERA, ANTONIO A
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
03/23/2017 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 ERIC JACOB JAN KIRCHNER, ROELOF
JOHANNES BAPTIST GOTTENBOS, ANDRE HALF, and
IVO BERNARDUS NICOLAAS VAN DER LANS
Appeal 2014-010017
Application 13/265,643
Technology Center 2600
Before JUSTIN BUSCH, CATHERINE SHIANG, and
LINZY T. McCARTNEY, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, and 4—20 under 35 U.S.C. §§ 102(e) and 103(a). Final
Act. 3—9. Claim 3 is objected to as being dependent upon a rejected base
claim, but otherwise allowable if rewritten in independent form. Id. at 1, 12.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appeal 2014-010017
Application 13/265,643
CLAIMED SUBJECT MATTER
Claims 1 and 17 are independent claims. The claims relate generally
to “displaying an image of an effect coating having texture and colour
properties on an electronic display device.” Abstract. Claim 1 is
representative and reproduced below (with formatting added and the
disputed limitation italicized):
1. A method of displaying an image of an effect coating
having texture and color properties on an electronic display
device under the control of a data processing unit, the method
comprising
generating the image by using measured color data and
measured texture data as input for the data processing unit, and
displaying the textured image with visual color properties
which are maintained on a prescribed level independent of
possible variations in texture properties, such that the perceived
color is not influenced by the specific texture.
REJECTIONS1
Claims 1, 9, and 17 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Lamy (US 2008/0158239 Al; July 3, 2008). Final Act. 3^4.
Claims 2, 4—7, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lamy and Eric Kirchner et al. (Observation of
1 Appellants state that the objections to claim 3 and the lack of drawings are
appealed. Br. 2. We do not hear appeals based on objections. See
35 U.S.C. § 134; 37 C.F.R. §§ 1.181(a)(1) (petitions maybe taken to the
Director “[f]rom any action or requirement of any examiner in the ex parte
prosecution of an application . . . which is not subject to appeal to the Patent
Trial and Appeal Board or to the court”), 1.191 (“Appeals to the Patent Trial
and Appeal Board under 35 U.S.C. 134(a) and (b) are conducted according
to part 41 of this title.”); see also MPEP § 706.01 (“The Board will not hear
or decide issues pertaining to objections and formal matters which are not
properly before the Board. These formal matters should not be combined in
appeals to the Board.”).
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Visual Texture of Metallic and Pearlescent Materials, 32 Color Research &
Application 256 (2007)) (hereinafter, “Kirchner”). Final Act. 5—6.
Claims 8, 10-16, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lamy and Rodrigues (US 2005/0128484 Al;
June 16, 2005). Final Act. 6—9.
ANALYSIS
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969); In re Am. Acad. ofSci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We have reviewed
Appellants’ specification and find no disclosure sufficient for us to
determine the broadest reasonable interpretation of “displaying the textured
image with visual color properties which are maintained on a prescribed
level independent of possible variations in texture properties, such that the
perceived color is not influenced by the specific texture,” as recited in
independent claim 1 and similarly recited in claim 17, which is the only
other independent claim.
The patent statute requires that a claim “particularly point[] out and
distinctly claim[] the subject matter which the applicant regards as [the]
invention.” 35 U.S.C. § 112 12. Every word or phrase used in a claim must
have a clear meaning. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014)
(affirming Board’s conclusion, in context of ex parte appeal, that claims
were indefinite “on grounds that they ‘contain[] words or phrases whose
meaning is unclear’”). As such, a claim is invalid for indefmiteness if a
person of ordinary skill in the art would not understand the scope of the
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claim, when the claim is read in light of the specification. See Allen Eng'g
Corp. v. BartellIndus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
Regarding the recited phrase “the perceived color is not influenced by
the specific texture,” it is unclear what element has a “perceived color” that
is not influenced by the specific texture, and which texture is referred to in
the recited “specific texture.” Specifically, it is unclear whether the recited
“specific texture” refers to the texture recited in “an effect coating having
texture . . . properties,” the recited “measured texture data” used as input for
the data processing unit to generate an image, or some other texture. It is
also unclear whether the recited “perceived color” is related to the “visual
color properties,” and whether the “perceived color” refers to the perceived
color of the generated image. The prior portion of the limitation recites
“displaying the textured image with visual color properties which are
maintained on a prescribed level independent of possible variations in
texture properties.” Thus, it appears that the claim is referring to the
“perceived color” of “the textured image,” and that the textured image may
have one or more visual color properties. If referring to the generated
image, it is unclear whether the claim requires the perceived color of the
entire image, a single pixel of the image, or something in between to be
uninfluenced by the specific texture.
Moreover, “perceived color,” by its nature, seems to involve a
subjective determination. Appellants’ specification repeatedly refers to
images having perceived colors or textures that match or “agree with”
measured values or prescribed colors. Appellants’ specification, however,
provides no guidance regarding how one would objectively determine that
the “perceived color” matches a measured value from, for example, a
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spectrophotometer. When a purely subjective phrase is used in a patent
claim, the specification must provide some objective standard for measuring
that degree or the scope of that phrase. See Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350—55 (Fed. Cir. 2005) (“The scope of
claim language cannot depend solely on the unrestrained, subjective opinion
of a particular individual purportedly practicing the invention. Some
objective standard must be provided in order to allow the public to
determine the scope of the claimed invention.” (internal citation omitted)),
abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014).
Finally, we find the recited claim language is unclear regarding
Appellants’ intended meaning of the phrase “the perceived color is not
influenced by the specific texture,” upon which Appellants focus their
arguments. Appellants argue their invention improves on prior techniques,
which allegedly include the technique describe by Lamy, because
Appellants’ claimed method recites “displaying the textured image with
visual color properties which are maintained on a prescribed level
independent of possible variations in texture properties, such that the
perceived color is not influenced by the specific texture.” Br. 2—6; Spec.
2:25-3:28.
Appellants’ invention “relates to a method of displaying an image of
an effect coating having texture and colour properties on an electronic
display device.” Abstract. Appellants’ specification states that the
electronic display device “can be a computer monitor, a projector, a TV
screen, a personal digital assistant (PDA) device, a cell phone, a smart phone
that combines PDA and cell phone, a flexible thin film display, or any other
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devices that can display information or images based on digital signals.”
Spec. 8:20—24. The display device may also be a printer. Id. at 8:24—27.
It is unclear how the conventional display devices described in
Appellants’ specification, such as a monitor, can render a textured image
without “the color being influenced by the specific texture,” as recited.
Specifically, a conventional two-dimensional electronic display rendering a
textured image varies the color of certain pixels so that someone viewing the
display perceives texture. Accordingly, it is unclear how or whether a three-
dimensional image can be rendered in a conventional electronic display
without the texture affecting or influencing the perceived color.
In fact, Appellants’ specification explains that the final red, green,
blue (RGB) value of each pixel is calculated using data including texture
data. Spec. 14:20-15:13. Working backwards from the final image (of
which an observer may perceive a color) generated by Appellants’ method,
Appellants’ specification discloses that “the final coloured digital image
showing the resulting texture under the specified lighting conditions is
constructed” based on two intermediate digital colored images, one showing
“the specified texture aspect of glint impression” and one showing the
specified texture aspect of diffuse coarseness. Spec. 14:20—24. The two
intermediate digital colored images are generated by determining pixel
values, taking into account the texture aspects; one intermediate image takes
into account diffuse coarseness using a grayscale digital image, id. at 14:4—
18, and the other intermediate takes into account glint impression, id. at
12:24—13:8. One grayscale “image is made to simulate the diffuse
coarseness aspects, whereas the second [grayscale] image is made to
simulate the glint impression aspects.” Id. at 9:18—20. Thus, the final image
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results from combining two colored images, each of which is determined
using information from a grayscale image that simulates texture (either glint
impression or diffuse coarseness), and it appears that the disclosed method
results in an image whose perceived color is “influenced by” both the glint
impression and the diffuse coarseness textures. Accordingly, the proper
construction of “the perceived color is not influenced by the specific texture”
is unclear because the allegedly improved technique disclosed in the
specification results in an image whose perceived color is influenced by
textures.
We do not analyze the teachings of the asserted prior art because, for
the reasons stated above, we cannot determine the scope of claims 1, 2, and
4—20. Before a proper review of the rejection can be performed, the subject
matter encompassed by the claims on appeal must be reasonably understood
without resort to speculation. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language.). Because we cannot discern the
proper construction of the claims, we are constrained to reverse, pro
forma, the prior art rejection of claims 1, 2, and 4—20. See also In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite meaning can
be ascribed to certain terms in the claim, the subject matter does not become
obvious—the claim becomes indefinite.”). For these same reasons, we enter
a new ground of rejection under 35U.S.C§ 112 12 because claims 1,2, and
4—20 are indefinite. In re Packard, 751 F.3d at 1309 (affirming Board’s
conclusion, in context of ex parte appeal, that claims were indefinite because
they contained words or phrases whose meaning was unclear).
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DECISION
For the above reasons, we reverse the Examiner’s decision to reject 1,
2, and 4—20.
We enter a new ground of rejection for claims 1,2, and 4—20 under
35 U.S.C. § 112.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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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)(l)(iv).
REVERSED
37 C.F.R. $ 41.50(b)
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