Ex Parte Mojsilovic et al

Board of Patent Appeals and Interferences

Oct 28, 2009

10033597 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALEKSANDRA MOJSILOVIC and BERNICE
ROGOWITZ
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Appeal 2009-002695
Application 10/033,597
Technology Center 2600
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Decided: October 28, 2009
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and KARL D.
EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3 to 28. Claims 2 and 29 to 38 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse. We also enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
Appellants’ claimed invention is directed to computer implemented
method and system for determining the semantic meaning of images (Spec.
4:7-6:30; Fig. 1; claims 1, 14, and 25). The computer program of the
method and system derive perceptual semantic categories by modeling a
combination of perceptual features, which are in turn derived through
“subjective experiments performed with human observers” (claims 1, 14,
and 25; Abstract).
Claim 1 is representative of the claims on appeal, and read as follows:
1. A computer implemented method for determining the semantic
meaning of images, comprising:
deriving a set of perceptual semantic categories for representing
important semantic cues in the human perception of images, where each
semantic category is modeled through a combination of perceptual features
that define the semantics of that category and that discriminate that category
from other categories, wherein the perceptual features and their
combinations are derived at least in part through subjective experiments
performed with human observers; and
for each semantic category, forming a set of the perceptual features as
a complete feature set CFS.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Jain US 5,915,250 Jun. 22, 1999

The Examiner rejected claims 1 and 3 to 28 under 35 U.S.C. § 102(b)
as being anticipated based upon the teachings of Jain.
The Examiner contends (Ans. 3-4, 9-10) that Jain discloses deriving
perceptual features and their combinations through subjective experiments
performed with human observers.

ISSUE
Appellants contend that Jain fails to teach the limitations common to
all of the independent claims of perceptual features and their combinations
that are derived at least in part through subjective experiments performed
with human observers (App. Br. 6-13; Reply Br. 2-5). Appellants choose
claim 1 as representative of independent claims 1, 14, and 25 (App. Br. 6),
and contend that claims 14 and 25 are patentable for the same reasons as
claim 1 (App. Br. 13; Reply Br. 5).
The sole issue before us primarily concerns whether or not the applied
reference to Jain teaches perceptual features and their combinations that are
derived at least in part through subjective experiments performed with
human observers, as set forth in all of the claims on appeal.1 The issue

1 Independent claim 1 and each of dependent claims 3 to 12, by virtue of
their ultimate dependency from claim 1, recite “wherein the perceptual
features and their combinations are derived at least in part through subjective
experiments performed with human observers” (claim 1) (emphasis added).
Independent claim 14 and each of dependent claims 15 to 24, by virtue of
their ultimate dependency from claim 14, recite “a set of perceptual semantic
categories that were previously derived at least in part through subjective
experiments performed with human observers” (claim 14) (emphasis added).
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presented is whether Appellants have shown that the Examiner erred in
rejecting each of claims 1 and 3 to 28 under § 102(b).

FINDINGS OF FACT
1. As indicated supra, Appellants describe and claim a data processing
system 100, data processor 101, graphic user interface 105, memory 103,
and image database 104 (see generally Fig. 1), and method for determining
the semantic meaning of images (Spec. 4:7-6:30; claims 1, 14, and 25). The
method and system use a computer program and program instructions stored
in memory 103 to cause the data processor 101 to derive perceptual semantic
categories by modeling a combination of perceptual features which are
derived through “subjective experiments performed with human observers”
(Spec. 8:16-23; claims 1, 14, and 25; Abstract).
2. Appellants describe “subjective experiments performed with human
observers” in the Specification as “a series of psychophysical experiments
and analyses” where “the results are used to discover a set of the low-level
image features to describe each category” (Spec. 11:25-27). According to
Appellants, “[t]he methods are based on the results of subjective
experiments aimed at: a) developing and refining a set of perceptual
categories” (Spec. 12:3-4). “Seventeen subjects participated in these
experiments ranging in age from 24 to 65” (Spec. 14:22). Appellants
describe the experiments as follows:

Independent claim 25 and each of dependent claims 26 to 28, by virtue of
their ultimate dependency from claim 25, recite “where the perceptual
features and their combinations are derived through subjective experiments
performed with human observers” (claim 25) (emphasis added).

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A series of experiments were conducted: 1) an image
similarity experiment aimed at developing and refining a set of
perceptual categories for photographic image databases, 2) a
category naming and description experiment aimed at deriving
a semantic name for each category, and a set of low-level
features which describes it, and 3) an image categorization
experiment to test the results of the metric, derived from the
previous experiments, against the judgments of human
observers on a new set of photographic images.

(Spec. 14:4-9).

PRINCIPLES OF LAW
Anticipation
Analysis of whether a claim is patentable over the prior art under
35 U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as they would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir.
1997).
“[T]he specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303,
1315 (Fed. Cir. 2005) (citations omitted).
The meaning of a claim term and the scope of the claim can not
depend solely on the unrestrained, subjective opinion of the person
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practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1350 (Fed. Cir. 2005).
A prior art rejection can not be sustained when speculative
assumptions concerning the meaning of claim language and the scope of the
claim would have to be made. In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). “If no reasonably definite meaning can be ascribed to certain terms
in the claim, the subject matter does not become [patentable][], the claim
becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

ANALYSIS
Claim terms should be given their broadest reasonable meaning in
their ordinary usage as such claim terms would be understood by one skilled
in the art by way of definitions and the written description. Morris, 127 F.3d
at 1054. At issue in the instant case is the meaning of the term “subjective
experiments performed with human observers,” as used in the claims on
appeal (claims 1, 14, and 25).
Turning to Appellants’ disclosure regarding the subjective
experiments, we find that the disclosure describes “a series of
psychophysical experiments and analyses” using seventeen subjects ranging
in age from 24 to 65, and that the methods of the invention are based on the
results of such subjective experiments (FF 2). Thus, the term “subjective
experiments performed with human observers,” which is recited in each of
independent claims 1, 14, and 25 (and their corresponding dependent
claims), and lies at the heart of and forms the central basis for the method
(claim 1), program (claim 14), and program instructions (claim 25), is
completely based on human judgment of similarities and is completely
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subjective. Accordingly, we are not able to determine the metes and bounds
of the claimed invention set forth in claims 1 and 3 to 28 with any certainty.
Accordingly, the prior art rejection of claims 1 and 3 to 28 is reversed
because a prior art rejection can not be sustained if speculative assumptions
would have to be made concerning the meaning of the claim language.
Steele, 305 F.2d at 862-63.

CONCLUSION OF LAW
As indicated supra, the prior art rejection is reversed because
speculative assumptions would have to be made concerning the metes and
bounds of the “subjective experiments performed with human observers” set
forth in all of the claims on appeal, and not because of any asserted
deficiencies in the teachings of Jain. Thus, we have not reached the merits
of the issue of whether the Examiner erred by finding the teachings of Jain
would anticipate claims 1 and 3 to 28.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 112(2) for claims 1 and 3 to 28. Claims 1 and 3 to 28 are
rejected under 35 U.S.C. § 112 for indefiniteness because the metes and
bounds of the disclosed and claimed invention can not be determined based
on the claiming of “subjective experiments performed with human
observers” (claims 1, 14, and 25).
According to In re Moore, 439 F.2d 1232, 1235 (CCPA 1971), any
analysis under the second paragraph of 35 U.S.C. § 112 begins with a
determination of whether the claims do, in fact, set out and circumscribe a
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particular area with a reasonable degree of precision and particularity when
read in light of the application disclosure as they would be by one possessing
ordinary skill in the art. As indicated supra, the claims on appeal fail to pass
such a test as set forth in Moore.
“While beauty is in the eye of the beholder, a claim term, to be
definite, requires an objective anchor.” Datamize v. Plumtree Software, 417
F.3d at 1350. “Some objective standard must be provided in order to allow
the public to determine the scope of the claimed invention.” Id. The claims
on appeal lack such an objective element, and instead are centered around
the subjective judgments of human observers. Claims containing a term that
is completely dependent on a person’s subjective opinion are indefinite. Id.

ORDER
The anticipation rejection of claims 1 and 3 to 28 is reversed.2
We have entered new grounds of rejection under 37 C.F.R. § 41.50(b)
for claims 1 and 3 to 28.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection … shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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:

2 Our reversal of the prior art rejection does not mean that the Examiner’s
findings and conclusions with respect to Jain used in rejecting the claims
lacks merit.
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(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 proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

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