Ex Parte Oizumi et al

Board of Patent Appeals and Interferences

Jul 27, 2012

10633159 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MUNENORI OIZUMI, OSAMU KOSHIBA, and
SATORU YAMAUCHI
____________________

Appeal 2010-008604
Application 10/633,159
Technology Center 2600
____________________

Before: ST. JOHN COURTENAY III, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008604
Application 10/633,159

2
STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-5. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We Reverse.
Invention
This invention relates to "image processing methods and systems with
filtering using estimates of edge intensity and direction to smooth parallel to
an edge." (Spec. 2). The following claim illustrates the invention on appeal:
1. A method of image filtering, comprising:
(a) computing edge intensity and direction for each pixel
in an image;
(b) filtering said image with a filter which, for each pixel,
smoothes in a direction parallel to the edge found in step (a) for
said each pixel;
(c) interpolating said image and said filtered image from
step (b) wherein said interpolating at said each pixel depends
upon said intensity found in step (a).

Rejections
G1. Claims 1-5 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
G2. Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by U.S. Patent No. 5,054,100 (Tai).
G3. Claims 1 and 5 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by U.S. Patent No. 6,339,451 B1 (Tults).
G4. Claims 1 and 3 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by U.S. Patent No. 7,023,487 B1 (Adams).
App
App

origi
App
imag
(emp

(Ans

(Br.

eal 2010-0
lication 10
Issue: U
nally-filed
ellants had
e and said
hasis adde
The Exa
Th
to an eq
the spe
interpola
of filteri
processi
filtering
. 3).
Appellan
C
equation

which is
q(n,m) t
are the i
I(n,m).
sum. Co
3).
The Exa
Th
interpola
specifica
claim 1
08604
/633,159
Wri
nder § 112
Specifica
possessio
filtered im
d)?
miner mak
e appella
uation on
cification
tion and i
ng. Wou
ng conclu
or are equ
ts disagre
laims 1-5:

the claim
he corresp
nterpolati
Note that t
nsequentl
miner resp
e exami
tion which
tion and
was not
AN
tten descr
, did the E
tion did no
n of the cl
age from
es the foll
nt has ide
page 7, lin
does no
nstead de
ld one of
de that
ivalent?
e:
Applicatio
ed interpol
onding filt
on weight
his is linea
y, the appl
onds:
ner respe
is a weig
appears to
established
3
ALYSIS
iption reje
xaminer e
t reasonab
aimed lim
step (b)" w
owing find
ntified int
e 7 of the
t disclose
scribes the
ordinary
the equat
n page 7,
ating: p(n
ered pixel
s which d
r interpol
ication sup
ctfully d
hted sum"
be new
. The ex
ction (G1)
rr in findi
ly convey
itation: "in
ithin the
ings:
erpolation
specificat
that th
equation
skill in th
ion is in
line 7 reci
,m) is an u
, and I(n,m
epend upo
ation whic
ports clai
isagrees
was not d
matter; thu
aminer a

ng that the
to the arti
terpolatin
meaning o
to corres
ion. How
e equatio
in the co
e art of im
terpolatio
tes the
nfiltered p
) and 1 I(
n the inte
h is a weig
m 1.
since "l
isclosed i
s, suppor
grees with

san that
g said
f claim 1
pond
ever,
n is
ntext
age
n or

ixel,
n,m)
nsity
hted
inear
n the
t for
the
App
App

(Ans

(Spe
with
claim
by A
inter
the f

the B
findi
the a
"inte
mean
Exam
claim
eal 2010-0
lication 10
appellan
cannot a
the equa
that oth
exists.
was not
. 9).
Appellan
Then ou
filtered i
compute
where α
filtering
c. 7, ll. 5-9
We are p
Appellant
ed "interp
ppellants'
polation u
iltered ima
Therefor
rief, as di
ng that the
rtisan that
rpolating
ing of cla
iner's reje
1, and of
08604
/633,159
t that the e
ssume tha
tion is ex
er weight
Thus, as c
established
ts' Specifi
tput the we
mage Pnew
d in step (
is a user-d
strength a
).
ersuaded
s' that one
olating sa
equation o
sing a wei
ge (filtere
e, for esse
scussed ab
originally
Appellant
said image
im 1 (emp
ction und
claims 2-
quation is
t since th
clusively
ed sums
learly des
.
cation dis
ighted sum
(n,m), usin
1):
efined par
nd the size
by Appella
skilled in
id image a
n Specific
ght sum of
d pixel - q
ntially the
ove, we ar
-filed Spe
s had poss
and said
hasis adde
er § 112, f
5 that depe
4
a weighte
e equation
interpolat
can be us
cribed ab
closes:
of p(n,m
g the edge
ameter ref
of I(n,m)
nts' argum
the art wo
nd said fil
ation page
the image
(n,m)).
same reas
e persuad
cification
ession of t
filtered im
d). Accor
irst paragr
nd therefr
d sum, bu
is a weig
ion since
ed for ot
ove, suppo
) and q(n,
intensity
lecting the
.
ents. In p
uld have u
tered imag
7, line 7,
(unfiltere
ons argue
ed that the
did not rea
he claime
age from s
dingly, we
aph, writte
om.
t the exam
hted sum
the possib
her opera
rt for cla
m) as the n
I(n,m)

desired
articular,
nderstood
e . . ." is s
which is a
d pixel - p
d by Appe
Examiner
sonably c
d limitatio
tep (b)" w
reverse th
n descript
iner
then
ility
tions
im 1
ew,
we agree
that the
upported
linear
(n,m)) and
llants in
erred in
onvey to
n:
ithin the
e
ion, of

Appeal 2010-008604
Application 10/633,159

5
Anticipation rejection (G2) by Tai
Issue: Under §102, did the Examiner err in finding that claim 1 is
anticipated by Tai? More particularly, did the Examiner establish a prima
facie case that Tai anticipates "(c) interpolating said image and said filtered
image from step (b). . . ," as recited in claim 1?
Appellants present the following contentions:
2. Claims 1-2 and 4 were rejected as anticipated by Tai; the
Examiner cited Tai figs. 5, 7 and ignored step (c) of claim 1 due
to the §112 rejection.
Claims 1-2 and 4: Tai does not suggest the interpolating
of step (c) of base claim 1; rather, Tai relates to filtering for
digital image resizing. Consequently, the claims are patentable
over Tai.
(Br. 4).
In the response to argument section of the Examiner's Answer, the
Examiner makes the following findings: "[n]ote that Tai does disclose
interpolation as shown in fig. 6, num. 24; thus, Tai does suggest the
interpolating of step c) of base claim 1." (Ans. 10).
On this record, we are persuaded by Appellants' arguments. The
Examiner failed to make a prima facie case of anticipation by Taj in the
Final Rejection. This is because the Examiner did not make any finding that
the cited reference anticipated the claim 1, step (c), limitation at issue.
(Final Rej. 3, 5; Ans. 5, 10). Because no prima facie case was established
for claim 1, step (c), Appellants have no burden of going forward. 1

1 The allocation of burdens requires that the USPTO produce the
factual basis for its rejection of an application under 35 U.S.C. §§ 102 and
103. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re
Appeal 2010-008604
Application 10/633,159

6
In the response to arguments section of the Answer, the Examiner
merely finds that Tai discloses "interpolating," not the entire limitation at
issue. (Ans. 10). The Examiner only makes the finding that
"Tai . . . suggest[s] the interpolating of step c) of base claim 1," (emphasis
added) not that Tai teaches or discloses the complete step c) limitation at
issue. (Id.). We note that what a reference “suggests” is irrelevant to
anticipation. Furthermore, the Examiner did not designate any new grounds
of rejection in the Answer. See MPEP § 1207.03.
For these reasons, we are persuaded that the Examiner erred in
rejecting claim 1 as being anticipated by Tai. Therefore, we reverse the
Examiner's rejection (G2) of claim 1, and of claims 2 and 4 which depend
therefrom.

Warner, 379 F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial
burden of presenting a prima facie case of unpatentability is the Examiner.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner’s burden of production:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must "notify the applicant," "stating the reasons
for such rejection," "together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).

Appeal 2010-008604
Application 10/633,159

7
Anticipation Rejection (G3) by Tults
Issue: Under §102, did the Examiner err in finding that claim 1 is
anticipated by Tults? More particularly, did the Examiner establish a prima
facie case that Tults anticipates "(c) interpolating said image and said
filtered image from step (b). . . ," as recited in claim 1?
The Appellants make the following contentions:
3. Claims 1 and 5 were rejected as anticipated by Tults; the
Examiner cited Tults figs. 3, 6, 7 and ignored step (c) of claim 1
due to the §112 rejection.
Claims 1 and 5: Tults does not suggest the interpolating
of step (c) of base claim 1; rather, Tults relates to on-screen
display of lower resolution graphics in digital TV and rounds
diagonal edges. Consequently, the claims are patentable over
Tults.
(Br. 4).
We again observe the Examiner failed to make any finding in the
Final Rejection or Answer that Tults would have taught or disclosed the
limitation of Claim 1, step (c). (Final Rej. 3, 7; Ans. 7, 10). Therefore, the
Examiner has not established a prima facie case of anticipation.
The Examiner also makes the following admission: "the examiner
agrees with the appellant that Tults does not suggest the interpolating of step
c) of base claim 1." (Ans. 10).
For these reasons, we are persuaded that the Examiner erred in
rejecting claim 1 as being anticipated by Tults. Therefore, we reverse the
Examiner's rejection (G3) of claim 1 and of claim 5 which depends
therefrom.

Appeal 2010-008604
Application 10/633,159

8
Anticipation Rejection (G4) by Adams
Issue: Under §102, did the Examiner err in finding that claim 1 is
anticipated by Adams? More particularly, did the Examiner establish a
prima facie case that Adams anticipates "(c) interpolating said image and
said filtered image from step (b). . . ," as recited in claim 1?
Appellants present the following contentions:
Claims 1 and 3 were rejected as anticipated by Adams; the
Examiner cited Adams figs.2, 3 and ignored step (c) of claim 1
due to the §112 rejection.
Claims 1 and 3: Adams does not suggest the interpolating
of step (c) of base claim 1; rather, Adams relates to video
interlaced-to-progressive conversion with edge detection to
determine field interpolation direction. Consequently, the
claims are patentable over Adams.
(Br. 4).
In the response to arguments section of the Answer, the Examiner
makes the following findings:
Note that Adams does disclose interpolation
corresponding to "interpolating" in col. 3, line 6 and "cubic
curve fit" in col. 16, lines 11, 41 and "averaged" in col. 16, lines
28, 34, 38 and "averages" in col. 16, line 41; thus, Adams does
suggest the interpolating of step c) of base claim 1
(Ans. 11).
We are persuaded by Appellants' arguments. Similar to our
discussion above, the Examiner did not establish a prima facie case of
anticipation by Adams in the Final Rejection. This is because the Examiner
did not find that the cited reference anticipated Appellants' Claim 1, step (c)
limitation. (Final Rej. 4, 8; Ans. 8, 11).
Appeal 2010-008604
Application 10/633,159

9
In the response to arguments section of the Examiner's answer, the
Examiner finds that Adams only discloses "interpolating." (Ans. 11).
Moreover, the Examiner merely made the finding that
"Adams . . . suggest[s] the interpolating of step c) of base claim 1" (Ans. 11)
(emphasis added), not that Adams teaches or discloses the complete step c)
limitation at issue. As discussed above, what a reference “suggests” is
irrelevant to anticipation. Furthermore, the Examiner did not designate any
new grounds of rejection. See MPEP § 1207.03.
For these reasons, on this record, we are persuaded that the Examiner
erred in rejecting claim 1 as being anticipated by Adams. Therefore, we
reverse the Examiner's rejection (G4) of claims 1 and 3.

DECISION
We reverse the rejection (G1) under § 112, first paragraph, of claims 1
and that of claims 2-5 which depend therefrom.
We reverse the anticipation rejection (G2) by Tai of claim 1 and that
of claims 2 and 4, which depend therefrom.
We reverse the anticipation rejection (G3) by Tults of claim 1 and that
of claim 5, which depends therefrom.
We reverse the anticipation rejection (G4) by Adams of claim 1 and
that of claim 3, which depends therefrom.

REVERSED

Appeal 2010-008604
Application 10/633,159

10
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