Ex parte NICPONSKI

Board of Patent Appeals and Interferences

Feb 26, 1998

08066273 (B.P.A.I. Feb. 26, 1998)

Application for patent filed May 24, 1993.1
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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HENRY NICPONSKI

_____________
Appeal No. 95-4390
Application 08/066,2731
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and TORCZON, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4390
Application08/066,273
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 7-12, which constitute
all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for modifying electronic image data. Specifically,
original image data is displayed to an operator. The operator
enters information defining an optical axis, a projection
point, a density contour shape and a density gradient profile.
A processing means responds to this data to replace the
original image by an enhanced image.
Representative claim 7 is reproduced as follows:
7. An apparatus for modifying electronic image data
comprising:
scanning means for generating original image data
representative of an original image;
display means for receiving the original image data
and displaying the original image;
data entry means for identifying a portion of the
original image displayed on the display means to be modified,
and for defining an optical axis, a projection point, a
density contour shape and a density gradient profile within
the identified portion of the original image;
processing means for calculating modified image data
for the identified portion based on the defined optical axis,
projection point, density contour shape and density gradient,
and for replacing a portion of the original image data
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representative of the identified portion of the original image
with the modified image data to generate enhanced image data
representative of an enhanced image; and
recording means for receiving the enhanced image data
from the processing means and producing a hard copy of the
enhanced image.
The examiner relies on the following reference:
Obata et al. (Obata) 5,083,287 Jan. 21, 1992
Claims 7-12 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Obata taken alone.
The final rejection of claims 7-12 under 35 U.S.C. § 101 was
withdrawn by the examiner [answer, page 2].
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner's
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rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record
before us, that the teachings of Obata and the level of skill
in the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 7-11. We reach the opposite conclusion with respect
to claim 12. Accordingly, we affirm-in-part.
Appellant has indicated that for purposes of this
appeal the claims will stand or fall together in the following
two groups: Group I has claims 7-11 and Group II has claim 12.
Consistent with this indication appellant has made no separate
arguments with respect to any of the other claims on appeal.
Accordingly, all the claims within each group will stand or
fall together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ
136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991,
217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we will only
consider the rejection against claims 7 and 12 as
representative of all the claims on appeal.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
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Application08/066,273
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to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
Appellant’s initial argument is that the examiner has
failed to make out a prima facie case of obviousness.
Appellant should not confuse the prima facie case with the
ultimate determination of the relative persuasiveness of the
substantive arguments in support of the rejection. In order
to satisfy the burden of presenting a prima facie case of
obviousness, the examiner need only identify the teachings of
the references, identify the differences between the prior art
and the claimed invention, and provide a reasonable analysis
of the obviousness of the differences which an artisan might
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find convincing in the absence of rebuttal evidence or
arguments.
With respect to the appealed claims, the examiner has
pointed out the teachings of Obata, has pointed out the
perceived differences between Obata and the claimed invention,
and has reasonably indicated how and why Obata would have been
modified to arrive at the claimed invention. In our view,
the examiner’s analysis is sufficiently reasonable that we
find that the examiner has satisfied the burden of presenting
a prima facie case of obviousness. That is, the examiner’s
analysis, if left unrebutted, would be sufficient to support a
rejection under 35 U.S.C. § 103. The burden is, therefore,
upon appellant to come forward with evidence or arguments
which persuasively rebut the examiner's prima facie case of
obviousness. Appellant has presented at least one substantive
argument in response to the examiner’s rejection. Therefore,
we consider obviousness based upon the totality of the
evidence and the relative persuasiveness of the arguments.
With respect to claim 7 specifically, the examiner
reads the claim on the disclosure of Obata [answer, pages 3-
4]. The examiner notes that Obata fails to disclose the
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scanning means or the recording means, but the examiner
provides an analysis as to why these elements would have been
an obvious modification to Obata. We note that appellant does
not question these particular findings of the examiner. Thus,
we accept the examiner’s conclusion that at least the claimed
scanning means and the recording means would have been obvious
to the artisan in view of the teachings of Obata.
The examiner also notes that Obata “fails to
explicitly disclose” the means for “defining a density contour
shape” and “defining a density gradient profile” [answer,
pages 5-6]. Although the examiner’s analysis nominally looks
at this question as an obviousness question, the examiner’s
analysis also makes it clear that the examiner’s position is
that these parameters, in fact, already exist in Obata. Thus,
the examiner finds that the edges of the shapes in Obata
define contour shapes within the meaning of the claim.
Likewise, the examiner finds that the calculation of shadows
of varying intensity in Obata is a determination of density
gradients because a varying density defines a density gradient
profile [answer, page 6]. Therefore, the obviousness issue
with respect to claim 7 actually reduces to a consideration of
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whether the Obata device meets the recitations of the density
contour shape and the density gradient profile.
Appellant points to these two parameters and argues
that the examiner admits that these two features are not
disclosed by Obata and that the examiner’s reasoning is not
persuasive. Specifically, appellant argues that the claims
call for a data entry means which is used by an operator, and
the resultant data of the claim cannot be met by the edges and
shadows of the original image in Obata [brief, pages 8-9].
The examiner responds that “claim 1 [sic, 7] does not recite
any operator,” and whatever manner the data got into the Obata
computer would meet the claimed data entry means [answer, page
9]. We agree with the examiner on this point.
Whatever data has been stored in the Obata computer
which permits objects to be drawn with variable shading meets
the claim recitation of defining a density contour shape and
defining a density gradient profile. Although the density
contour shapes and density gradient profiles of Obata may be
different from what appellant intended in his preferred
embodiment, we agree with the examiner that the broad
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recitation of these parameters is met by the variable shading
system of Obata.
In summary, appellant’s argument with respect to claim
7 is that the differences acknowledged by the examiner between
Obata and the claimed invention cannot be obvious over the
single Obata reference. As we noted above, however, the
examiner’s position on this point is that these “differences”
are actually present in Obata or are obviously present in
Obata. Thus, the question is one of claim interpretation and
the scope of the prior art. Giving claim 7 its broadest
reasonable interpretation, we agree with the examiner that the
processing means of Obata does define a density contour shape
and a density gradient profile. Therefore, we sustain the
examiner’s rejection of claims 7-11.
With respect to claim 12, the examiner finds that the
various light sources in Obata modify the shadows, and that
this type of modification is a form of noise [answer, page 7].
Appellant responds that there is no suggestion in Obata for
“intentionally generating noise data based on a noise factor
entered by the operator” [brief, page 10]. The examiner
responds that the utilization of ambient light approximates a
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random reflection of light which is a type of noise data which
has been entered by the operator. We do not agree.
The concept of noise data in claim 12 is that the
operator specifically chooses a noise factor which is used to
correct the modified image data. Noise by definition affects
processing in a random manner. The examiner’s assertion that
the
reflections of light in Obata are random is without
foundation. All light sources in Obata have known locations
and the objects have specific shapes. The reflected light in
Obata is based on theoretical considerations of light
reflection and is not a function of randomness. Therefore, we
do not agree with the examiner that the shadowing in Obata can
be considered to include noise data based on a noise factor
entered by an operator. Since the examiner’s conclusion is
not supported by the record in this case, we do not sustain
the rejection of claim 12.
In conclusion, we have sustained the examiner’s
rejection of claims 7-11, but we have not sustained the
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rejection of claim 12. Therefore, the decision of the
examiner rejecting claims 7-12 is affirmed-in-part.

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

Appeal No. 95-4390
Application08/066,273
12
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Thomas H. Close
EASTMAN KODAK COMPANY
Patent Legal Staff
Rochester, NY 14650-2201