Ex Parte Lee et al

Patent Trial and Appeal Board

Apr 28, 2017

13755214 (P.T.A.B. Apr. 28, 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.
13/755,214 01/31/2013 Hyunjoon Lee 2905US01 1998
108982 7590
Wolfe-SBMC
116 W. Pacific Avenue
Suite 300
Spokane, WA 99201
05/02/2017 EXAMINER
ROZ, MARK
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYUNJOON LEE, ELYA SHECHTMAN, and JUE WANG1
Appeal 2016-008573
Application 13/755,214
Technology Center 2600
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Adobe Systems Inc.
Appeal Br. 2.
Appeal 2016-008573
Application 13/755,214
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—11 and 21—29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary claims 1 and 21 under appeal read as follows (emphasis
added):
1. A method implemented by a computing device, the
method comprising:
determining, by the computing device and prior to
performing a first image adjustment technique, that the
first image adjustment technique is unable to correct
perspective distortion of the image; and
responsive to determining the first image
adjustment technique is unable to correct perspective
distortion of the image, determining, by the computing
device and prior to performance of a second image
adjustment technique, that the second image adjustment
technique is able to correct perspective distortion of the
image; and
responsive to determining the second image
adjustment technique is able to correct perspective
distortion of the image, performing, by the computing
device, the second image adjustment technique on the
image to alter pixels of the image and generate an
adjusted image.
21. A system comprising:
one or more computing devices configured to
perform operations comprising:
determining, prior to performing a first
image adjustment technique, that the first image
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adjustment technique is unable to correct
perspective distortion of the image;
responsive to determining the first image
adjustment technique is unable to correct
perspective distortion of the image, determining,
prior to performance of a second image adjustment
technique, that the second image adjustment
technique is able to correct perspective distortion
of the image and
responsive to the determining the second
image adjustment technique is able to correct
perspective distortion of the image, performing, by
the computing device, the second image
adjustment technique on the image to alter pixels
of the image and generate an adjusted image.
Rejections on Appeal
1. The Examiner rejected claims 1—4, 6, 8, and 21—24 under
35 U.S.C. § 102(b) as being anticipated by Peterson (US 2002/0181802 Al;
published Dec. 5, 2002).2
2. The Examiner rejected claims 10—11 and 28—29 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Peterson
and Baron (US 2003/0016883 Al; published Jan. 23, 2003).
2 The patentability of claims 2 and 22 is not separately argued from that of
independent claims 1 and 21. See App. Br. 20, 30. Further, although
Appellants separately argue the patentability of independent claim 21, the
arguments are substantially identical to the arguments for independent claim
1. See Appeal Br. 25—30, 52—58. Similarly, although Appellants separately
argue the patentability of claims 23—29, the arguments are substantially
identical to the respective arguments for claims 3—6, 8, and 10-11. See
Appeal Br. 30-32, 36—39, and 58—63. Thus, except for our ultimate
decision, claims 2 and 21—29 are not discussed further herein.
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3. The Examiner rejected claims 1, 4—9, 21, and 24—27 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Lee
(US 2011/0243466 Al; published Oct. 6, 2011), Thales Sehn Korting, C4.5
Algorithm and Multivariate Decision Trees, Image Processing Division,
National Institute for Space Research — INPE, SP, Brazil, 2006 (herein
“Korting”), and Peterson.
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
Peterson fails to disclose “determining, by the computing
device and prior to performing a first image adjustment
technique, that the first image adjustment technique is unable
to correct perspective distortion of the image” and “responsive
to determining the first image adjustment technique is unable
to correct perspective distortion of the image, determining, by
the computing device and prior to performance of a second
image adjustment technique, that the second image adjustment
technique is able to correct perspective distortion of the image”
as recited in this claim.
[Sjteps 1002, 1004, 1006, 1008, and 1010 of Peterson Fig. 11 do
not disclose “a first image adjustment technique" or "a second
image adjustment technique.” . . . Peterson Fig. 11 merely
estimates a focal length and rotation angle describing how a
camera may have captured the images, and does not in any way
adjust the image, and cannot be reasonably interpreted to be
multiple “image adjustment techniques. ”
[Ejven if the iterative cycle to estimate focal length and rotation
angles is considered to be not only an image adjustment
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technique . . . but also a different image adjustment technique
with each iteration . . such an interpretation does not disclose
“determining, by the computing device and prior to performing
a first image adjustment technique, that the first image
adjustment technique is unable to correct perspective distortion
of the image ” and “determining, by the computing device and
prior to performance of a second image adjustment technique,
that the second image adjustment technique is able to correct
perspective distortion of the image” as recited by claim 1. Step
1012 of Peterson Fig. 11 must occur after steps 1002-1010, and
not prior to steps 1002-1010.
App. Br. 14, 16—17, Appellants’ emphasis omitted, panel’s emphasis added.
2. In the Reply Brief, further as to above contention 1, Appellants also
contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) because:
[The Examiner’s] interpretation of Peterson [that the first
version of the parameters and the correction using these
parameters can be called a “first adjustment technique” and
the second iteration a “second adjustment technique”] is
deficient, as the iteration occurs prior to the alleged image
adjustment and does not teach “a first image adjustment
technique” and “a second image adjustment technique” as
claimed.
Reply Br. 6, emphasis added.
3. Appellants also contend that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 102(b) because:
[T]he rotations described by Peterson do not include any
identification of any features, and is not used to correct skewing
of the image data. Peterson includes no discussion whatsoever
that pertains to “upright adjustment,” and simply does not
disclose, teach, or suggest “the first image adjustment
technique includes upright adjustment” as recited by this
claim.
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App. Br. 21, emphasis added.
4. In the Reply Brief, further as to above contention 3, Appellants also
contend that the Examiner erred in rejecting claim 3 under
35 U.S.C. § 102(b) because, “[t]he interpretation that ‘upright adjustment’
refers to anything two-dimensional is inconsistent with the use of the claim
term in the specification and is also inconsistent with the ordinary and
customary meaning of the term.” Reply Br. 7, emphasis added.
5. Appellants also contend that the Examiner erred in rejecting claims
4, 6, and 8 under 35 U.S.C. § 102(b) because Peterson includes no
discussion whatsoever that pertains to “analyzing edge pixels and line pixels
of the image,” “analyzing line pixels and vanishing line pixels of the image,”
and “analyzing vertical and horizontal vanishing lines in the image,” and
does not disclose, teach, or suggest, “the determining the first image
adjustment technique is unable to correct perspective distortion of the image
further comprises analyzing edge pixels and line pixels of the image,”
“determining the first image adjustment technique is unable to correct
perspective distortion of the image further comprises analyzing line pixels
and vanishing line pixels of the image,” and “determining the first image
adjustment technique is unable to correct perspective distortion of the image
further comprises analyzing vertical and horizontal vanishing lines in the
image,” as respectively recited by claims 4, 6, and 8. App. Br. 22—24.
6. In the Reply Brief, further as to above contention 5, Appellants also
contend that the Examiner erred in rejecting claims 4, 6, and 8 under
35 U.S.C. § 102(b) because, “[the interpretation that ‘edge pixels,’ ‘line
pixels,’ and ‘vanishing line pixels’ have the same meaning as ‘image pixels’
is [similarly] inconsistent with the use of the claim terms in the
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specification and is also inconsistent with the ordinary and customary
meanings of the terms”. Reply Br. 7—8, emphasis added.
7. Appellants also contend that the Examiner erred in rejecting claims
10 and 11 under 35 U.S.C. § 103(a) because:
Although Baron describes “rotating the digital representation of
the image to reduce the orientation error,” Baron does not
describe whether or not its technique “is able to correct
perspective distortion
[T]he Office’s stated motivation and reasoning is misplaced and
legally insufficient when combining the references[.] . . . The
motivation “to include Baron's feature, as taught by Baron” is
too general because it could cover any alteration contemplated
of Peterson and does not address why the specific proposed
modification would have been obvious.
App. Br. 33—34, emphasis added.
8. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The combination of Lee, Korting, and Peterson fails to teach or
suggest “determining, by the computing device and prior to
performing a first image adjustment technique, that the first
image adjustment technique is unable to correct... distortion of
the image” as recited in this claim.
The Office asserts that a selection of an efficient or optimized
(i.e. “maximized”) filter from among a plurality of filters is a
determination that all [non-maximized] or less efficient filters are
outright unable to perform as filters. This interpretation simply
is not consistent with the general concepts of efficiency or
optimization; just because a choice is not the most efficient or
is not the most optimal choice for a function does not mean a
less efficient or non-optimal choice is unable to perform the
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function. There is simply no basis or support in Lee for such
an assertion that unselected filters are unable to perform as
filters. Rather, by describing that filter strength should be
adaptively adjusted “in order to reduce noise efficiently, and that
the selected filter results in “the performance of reducing noise
is maximized,” Lee implies that using other filters would still
reduce noise, just less efficiently or to a lesser degree than the
maximized amount achieved by the maximized filter. Thus, Lee
does not disclose, teach, or suggest that a first image
adjustment technique is unable to correct distortion of the
image. Korting and Peterson fail to cure this defect.
[T]he Office’s stated motivation and reasoning is misplaced and
legally insufficient when combining the references[.] . . . The
motivation “because some images may be distorted more ...
while other images may be distorted less ” is too general because
it could cover almost any alteration contemplated of Lee and
does not address why the specific proposed modification would
have been obvious.
App. Br. 39-42, Appellants’ citations omitted, panel’s emphasis added.
9. In the Reply Brief, further as to above contention 8, Appellants also
contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[Appellants’ specification does support that a technique may be
unable to perform a correction.] For example, [Appellants’]
Specification describes . . . that a technique “may fail at
correcting the distortions, and may introduce additional
distortions,” [and] describes . . . particular examples of “failures
encountered using conventional techniques ... such as to align to
an image edge that is not the horizon.”
Reply Br. 8, Appellants’ citations omitted, panel’s emphasis added.
10. Appellants contend that the Examiner erred in rejecting claims 4—
7 under 35 U.S.C. § 103(a) because the Examiner’s interpretation of Lee’s
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“hv(C2nd)” and “hv(Cmax)” values as either “edge pixels” and “line pixels,” (or
vice versa) as recited in claims 4 and 5, or “line pixels” and “vanishing line
pixels” (or vice versa) as recited in claims 6 and 7, is contrary to Lee’s
disclosure, as Lee defines both values to be a number of edge pixels. Appeal
Br. 45^49. Thus, as argued by Appellants, Lee fails to disclose, teach, or
suggest “determining the first image adjustment technique is unable to
correct perspective distortion of the image further comprises analyzing edge
pixels and line pixels of the image,” as recited in claim 4, “the analyzing is
based on a ratio between a number of the edge pixels and a number of the
line pixels,” as recited in claim 5, “the determining the first image
adjustment technique is unable to correct perspective distortion of the image
further comprises analyzing line pixels and vanishing line pixels of the
image,” as recited in claim 6, and “the analyzing is based on a ratio between
a number of the line pixels and a number of the vanishing line pixels,” as
recited in claim 7. Appeal Br. 45^49.
11. In the Reply Brief, further as to above contention 10, Appellants
also contend that the Examiner erred in rejecting claims 4—7 under
35 U.S.C. § 103(a) because:
The interpretation that “edge pixels,” “line pixels,” and
“vanishing line pixels” have the same meaning as “image pixels”
is inconsistent with the use of the claim terms in the
specification and is also inconsistent with the ordinary and
customary meanings of the terms. Further, not only are the
interpretations that “edge pixels” can be understood as some
subtype of “line pixels,” and that “vanishing line pixels” can also
be understood as some type of “edge pixels,” inconsistent with
the ordinary and customary meanings of the terms and the use of
the claim terms in the specification, but the interpretations are
also inconsistent with the use of the term “edge pixel” as
described in the reference Lee[.\
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Reply Br. 8—9, emphasis added.
12. Appellants contend that the Examiner erred in rejecting claims 8
and 9 under 35 U.S.C. § 103(a) because neither “hvmag(Cmax)” nor “hv(Cmax)
are explicitly or inherently described by Lee as vertical or horizontal
vanishing lines, Lee fails to support the assertion that a pixel is a line
segment and the average size of pixels in an average of line segment lengths,
and Lee fails to disclose, teach, or suggest “the determining the first image
adjustment technique is unable to correct perspective distortion of the image
further comprises analyzing vertical and horizontal vanishing lines in the
image,” as recited in claim 8, and “the analyzing is based on an average of
line segment lengths of the vertical and the horizontal vanishing lines in the
image,” as recited in claim 9. App. Br. 50—52.
Issues on Appeal
Did the Examiner err in rejecting claims 1, 3, 4, 6, and 8 as being
anticipated?
Did the Examiner err in rejecting claims 1 and 4—11 as being obvious?
PRINCIPLES OP LAW
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying Specification. See In re
American Acad, of Science Tech. Ctr., 367 P.3d 1359, 1364 (Led. Cir. 2004).
In the absence of an express definition of a claim term in the Specification or
a clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
See In re ICON Health & Fitness, Inc., 496 P.3d 1374, 1379 (Led. Cir.
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2007); see also In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into a claim limitations
that are not a part of the claim. See SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation to combine references in
order to show obviousness. See KSR Int’l Co., v. Teleflex Co., 550 U.S. 398,
419 (2007). Instead, a rejection based on obviousness only needs to be
supported by “some articulated reasoning with some rational underpinning”
to combine known elements in the manner required by the claim. Id. at 418.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which the appeal is
taken (Final Act. 2—13); and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 2—9) in response to the Appellants’ Appeal Brief.
We concur with the conclusions reached by the Examiner. We highlight the
following.
As to Appellants’ above contentions 1 and 2 (regarding independent
claim 1), we are not persuaded the Examiner erred. We agree with the
Examiner that Peterson teaches an “image adjustment technique,” as recited
in claim 1, as Peterson discloses mapping images using adjustment
parameters (i.e., a focal length and rotational angles), where the mapping
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produces cylindrical mapped images and reduces perspective distortion
within the mapped images. See Ans. 3^4 (citing Peterson 140; Fig. 4, step
408). We further agree with the Examiner that Peterson also teaches
iteratively calculating multiple versions of the adjustment parameters in
response to determinations using a previous version of the adjustment
parameters to map images will result in significant errors in the mapped
images. See Ans. 4 (citing Peterson H 81, 83; Fig. 11, steps 1002—1012).
The Examiner’s interpretation of the claimed “first image adjustment
technique” as reading on Peterson’s image adjustment technique coupled
with an initial set of adjustment parameters and the claimed “second image
adjustment technique” as reading on Peterson’s image adjustment technique
coupled with a corrected set of adjustment parameters is broad, but
reasonable, in light of Appellants’ Specification. Neither Appellants’
claims, nor Appellants’ Specification, provides definitions for a “first image
adjustment technique” or a “second image adjustment technique” that
distinguish the claim from the cited portions of Peterson. Thus, we affirm
the rejection of claim 1 under 35 U.S.C. § 102(b).
As to Appellants’ above contentions 3 and 4 (regarding claim 3), we
are also not persuaded the Examiner erred. We agree with the Examiner that
Peterson teaches adjusting two-dimensional images to correct distortion,
including adjusting vertical (i.e., “upright”) dimensions. See Ans. 6 (citing
Peterson 140; Figs. 3, 5 A). The Examiner’s interpretation of the claimed
“upright adjustment” as reading on Peterson’s two-dimensional image
adjustment technique is broad, but reasonable, in light of Appellants’
Specification. Neither Appellants’ claims, nor Appellants’ Specification,
provides a definition for an “upright adjustment” that distinguishes claim 3
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from the cited portion of Peterson. Further, while Appellants’ Specification
provides examples of upright adjustments (see, e.g., Spec. Tflf 26, 29), we
decline to import example limitations from the Specification into the claims.
Thus, we also affirm the rejection of claim 3 under 35 U.S.C. § 102(b).
As to Appellants’ above contentions 5 and 6 (regarding claims 4, 6,
and 8), we are also not persuaded of Examiner error. We agree with the
Examiner that Peterson teaches analyzing pixels of received images. See
Ans. 6 (citing Peterson H 39, 44). We further agree with the Examiner that
the claimed “edge pixels,” “line pixels,” and “vanishing line pixels,” are
merely specific instances of image pixels that represent edges, lines, and
vanishing lines, respectively, within the image. See id. We do not agree
with Appellants’ contention that the Examiner interpreted “edge pixels,”
“line pixels,” and “vanishing line pixels” as having the same meaning as
image pixels. See Reply Br. 7—8. Instead, as correctly found by the
Examiner, Peterson generally teaches an analysis of pixels contained within
the image, and thus, pixels that represent an edge, line, or vanishing line,
would also be analyzed as well. See Ans. 6. Thus, we also affirm the
rejection of claims 4, 6, and 8 under 35 U.S.C. § 102(b).
As to Appellants’ above contention 7 (regarding claims 10 and 11),
we are also not persuaded the Examiner erred. We agree with the Examiner
that Baron teaches detecting a nearly horizontal or vertical line (i.e., the
claimed “visible horizon”), and performing image rotation to align the
detected line so that it is horizontal or vertical (i.e., “performing one or more
horizon adjustment operations”). See Final Act. 6 (citing Baron, Fig. 2, step
205, “YES” branch, step 210); see also Ans. 7 (citing Baron, Fig. 2). We
further agree with the Examiner that Baron also teaches skipping
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performance of the image rotation when an appropriate line is not detected.
See Final Act. 6 (citing Baron, Fig. 2, step 205 “NO” branch); see also
Ans. 7 (citing Baron, Fig. 2, step 205). We further disagree with Appellants’
contention that the Office Action’s stated motivation to combine the cited
references of Peterson and Baron is legally insufficient. See Appeal Br. 34.
Instead, we agree with the Examiner that one of ordinary skill in the art
would have been motivated to modify the image mapping taught by Peterson
to also further rotate the image to align a detected nearly-horizontal or
vertical line so that it is horizontal or vertical, as taught by Baron, to achieve
the desired benefit of correcting a tilted horizon line, as also taught by
Baron. See Final Act. 6; see also Baron | 10. Thus, we also affirm the
rejection of claims 10 and 11 under 35 U.S.C. § 103(a).
As to Appellants’ above contentions 8 and 9 (regarding claim 1), we
are also not persuaded of Examiner error. We agree with the Examiner that
Lee teaches determining that one of three filtering strengths (i.e., “weak,”
“light,” or “strong”) is most efficient in reducing noise in an image,
determining that the other two filtering strengths are inefficient in reducing
noise, selecting the identified filtering strength, excluding the non-identified
filtering strengths from selection, and applying a filtering technique to the
image using the selected filtering strength. See Final Act. 7 (citing Lee,
Table 1). The Examiner’s interpretations of the claimed “first image
adjustment technique” as reading on Lee’s filtering technique coupled with
the non-selected filtering strength, and the claimed “second image
adjustment technique” as reading on Lee’s filtering technique coupled with
the selected filtering strength, are broad, but reasonable, in light of
Appellants’ Specification. Neither Appellants’ claims, nor Appellants’
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Specification, provides definitions for a “first image adjustment technique”
or a “second image adjustment technique” that distinguish the claim from
the cited portions of Lee.
We further disagree with Appellants’ contention that the Office
Action’s stated motivation to combine the cited references of Lee and
Peterson is legally insufficient. See Appeal Br. 41. Instead, we agree with
the Examiner that one of ordinary skill in the art would have been motivated
to modify the image filtering technique taught by Lee to also include the
perspective distortion correction taught by Peterson, to achieve the desired
benefit of correcting perspective distortion caused by altering an image, as
also taught by Peterson. See Final Act. 8; see also Peterson 132. Thus, we
also affirm the rejection of claim 11 under 35 U.S.C. § 103(a).
As to Appellants’ above contentions 10 and 11 (regarding claims 4—
7), we are also not persuaded the Examiner erred. We agree with the
Examiner that Lee teaches analyzing edge pixels. See Final Act. 9—10
(citing Lee | 64). We further agree with the Examiner that Lee’s edge pixels
teach or suggest the claimed “line pixels,” and “vanishing line pixels,”
because specific instances of an edge can include a line or a vanishing line.
See Ans. 8. We do not agree with Appellants’ contention that the
Examiner’s finding is inconsistent with Lee’s use of the term “edge pixel,”
because paragraph 32 of Lee merely describes that edge pixels belong to an
edge (i.e., block boundary), and, as previously described, a specific instance
of an edge can be a line or a vanishing line. See Lee 132. Thus, we also
affirm the rejection of claims 4—7 under 35 U.S.C. § 103(a).
As to Appellants’ above contention 12 (regarding claims 8—9), we are
also not persuaded of Examiner error for the reasons previously discussed
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above with respect to Appellants’ above contentions 10 and 11. With
respect to Appellants’ argument that Lee fails to teach or suggest that a pixel
is a line segment and the average size of pixels is an average of line segment
lengths (see Appeal Br. 52), we agree with the Examiner that “wherein the
analyzing is based on an average of line segment lengths,” as recited in
claim 9, would have been obvious to one of ordinary skill in the art in light
of Lee’s teaching of analyzing edge pixels based on an average size of edge
pixels. See Final Act. 11 (citing Lee 1 67). Thus, we also affirm the
rejection of claims 8 and 9 under 35 U.S.C. § 103(a).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—4, 6, 8, and 21—
24 as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 1, 4—11, 21, and
24—29 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—11 and 21—29 are not patentable.
DECISION
We affirm the Examiner’s rejections of claims 1—4, 6, 8, and 21—24 as
being anticipated under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejections of claims 1, 4—11, 21, and 24—29
as being unpatentable under 35 U.S.C. § 103(a).
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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).
AFFIRMED3
3 As the Examiner has shown that all the claims are unpatentable, we do not
also reject Appellants’ claims 21—29 under 35 U.S.C. § 112, second
paragraph as being indefinite; and claims 21—29 under 35 U.S.C. § 112, first
paragraph as lacking an enabling disclosure commensurate with the scope of
the claims. However, should there be further prosecution of these claims;
the Examiner’s attention is directed to our following concerns.
(a) With respect to claims 21—29 and § 112, second paragraph, it is
unclear whether Appellants intend claim 21 to encompass “one computing
device” (i.e., a single means) for the two determining functions and the
performing function (and thus, outside the coverage of § 112, sixth
paragraph); or is the claim to be read as separate “computing devices” for
each of the two determining functions and the performing function (and
thus, within the coverage of § 112, sixth paragraph).
(b) Further, if Appellants intend claim 21 to encompass “one
computing device” (i.e., a single means) for the two determining functions
and the performing function, then as a single means claim, claim 21 fails
under 35 U.S.C. § 112, first paragraph, as lacking an enabling disclosure.
See MPEP§ 2164.08(a).
(c) Alternatively, if Appellants intend claim 21 to be read as separate
“computing devices” for each of the two determining functions and the
performing function, then claim 21 may fail under 35 U.S.C. § 112, second
paragraph, as being indefinite. The Examiner’s attention is directed to
Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328
(Fed. Cir. 2008); and MPEP 2181 (e.g., 2181 I.A.). Merely labeling the
device as a “computing” device is unlikely to result in the claimed device
being recognized by one of ordinary skill in the art as being sufficiently
definite structure for performing the claimed function.
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