Ex Parte Subotic et al

Board of Patent Appeals and Interferences

Jan 21, 2009

10366084 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIKOLA SUBOTIC,
CHRISTOPHER ROUSSI, ROBERT A. SHUCHMAN,
and GREGORY LEONARD
____________

Appeal 2008-4983
Application 10/366,084
Technology Center 2800
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Decided: January 21, 2009
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Before EDWARD C. KIMLIN, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 5-9, 12-18, 21-26, and 29-33. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2008-4983
Application 10/366,084

Appellants claim a method and apparatus of scanning articles (e.g.,
luggage) to identify the contents.
Representative claim 1 reads as follows:
1. A method of scanning a piece of luggage or other article to
identify contents therein, comprising the steps of:

storing edge boundary information regarding one or more objects of
interest;

generating a plurality of projections of the contents using penetrating
radiation along different orientations through the luggage or article;

identifying edge boundaries of objects contained in the luggage or
article;

comparing the identified edge boundaries to the stored information;
and

if an object of interest is present, displaying one or more slices
through the luggage or article using a more complete reconstruction of data
associated with the projections.

The prior art set forth below is applied by the Examiner in the § 103
rejections before us as evidence of unpatentability:
Eisen 5,060,249 Oct. 22, 1991
Peschmann 5,367,552 Nov. 22, 1994
Husseiny 5,600,303 Feb. 04, 1997
Crawford 5,901,198 May 04, 1999
Perry 6,236,709 May 22, 2001
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
1) claims 1, 5-9, 12, 17, 18, 21-25, and 29 as being unpatentable over
Peschmann in view of Husseiny;
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2) claims 13, 30, and 31 as being unpatentable over Peschmann,
Husseiny, and Perry;
3) claims 14-16, 32, and 33 as being unpatentable over Peschmann,
Husseiny, Perry, and Eisen;
4) claim 26 as being unpatentable over Peschmann, Husseiny, and
Crawford.
Within each ground of rejection, Appellants have not separately
argued any of the claims therein with any reasonable degree of specificity.
(App. Br. 3-7; Reply Br. 1-2). Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we select claim 1 as representative for the first ground of
rejection, claim 13 as representative for the second ground of rejection, and
claim 14 as representative for the third ground of rejection. Claim 26 will be
separately addressed in accordance with Appellants’ arguments.
ISSUES
The Examiner relies on Peschmann to teach or suggest all the steps in
claim 1 except for an explicit reference to “edge boundary information”.
(Ans. 4). To overcome this deficiency, the Examiner relies upon Husseiny
which describes that articles may be identified during scanning by
techniques “such as edge detection”. (id.) Appellants contend that although
Husseiny mentions “edge detection”, there is no motivation to combine these
references. (App. Br. 5). Appellants further contend that even if the
Peschmann/Husseiny combination were proper, the rejection would still be
improper since neither reference discloses the step of “‘storing edge
boundary information regarding one or more objects of interest’”. (App. Br.
6; Reply Br. 2).
Thus, the first issue on appeal is:
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Have Appellants shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 1 because there is no
motivation to combine the references and/or because neither reference
discloses the step of storing edge boundary information?
The second issue on appeal is:
Have Appellants shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 13 because of a
failure to provide factual evidence that using “absorption spectra” to identify
contents as taught in Perry will improve a luggage scanning method in
accordance with the Peschmann/Husseiny combination? (App. Br. 6).
The third issue on appeal is:
Have Appellants shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 14 because Eisen
does not explicitly teach detecting “potassium” as recited in claim 14?
(App. Br. 7).
The fourth issue on appeal is:
Have Appellants shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 26 because of a
failure to provide factual support for his position? (App. Br. 7).
We answer all the questions above in the negative.
FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
As found by the Examiner, Peschmann discloses a method of
scanning a piece of luggage or other article for contraband such as
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explosives, drugs, etc. as claimed in Appellants’ claim 1, except that
Peschmann does not explicitly disclose storing, identifying, and comparing
“edge boundary information” about the contraband objects (Ans. 4;
Peschmann, e.g., abstract; col. 6, ll. 14-30; col. 7, ll. 63-65; col. 8, ll. 33-50;
col. 9, ll.5-21).
However, Peschmann does teach that the identification of the objects
may be through “automatic analysis of such attributes as shape” (e.g.,
Abstract, emphasis provided; see also col. 10, ll. 38-47). One of ordinary
level of skill in the art would immediately appreciate that automatic analysis
of the shape of an object as described in Peschmann would require the use of
edge boundary information pertaining to that object (see e.g., Ans. 11).
Husseiny describes a method for scanning luggage for contraband that
includes storing, identifying and comparing edge boundary information (col.
33, ll. 48-65; col. 33, l. 66 to col. 34, 1. 13).
As Husseiny states: “Once the digitized image is analyzed the
constituents are identified by techniques; such as edge detection and model-
based vision.” (col. 34, ll. 11-13; emphasis provided).
As found by the Examiner, one of ordinary skill in the art would have
immediately appreciated that, in context, Husseiny’s “edge detection”
technique includes automated analysis/identification such that “edge
boundary information” about an object of interest would necessarily be
stored, identified, and compared (see, e.g., Ans. 10).
PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
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2006). Therefore, we look to Appellants’ brief to show error in the proffered
prima facie case.
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1734 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3
(1966).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966).
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. “The obviousness analysis cannot
be confined by the formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of . . . the explicit
content of issued patents.” KSR, 127 S. Ct. at 1741. The Supreme Court
also noted in KSR that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
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Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162.
ANALYSIS
Issue 1
Claims 1, 5-9, 12, 17, 18, 21-25, and 29
We agree with the Examiner’s findings of facts and legal conclusions
of obviousness as set out in the Answer. We add the following primarily for
emphasis.
We agree with the Examiner that a person having ordinary skill in the
art would have found it obvious to modify the method of Peschmann (which
includes automatic analysis of the “attribute of shape”) by storing edge
boundary information as suggested by Husseiny in order to determine shapes
for the advantage of a thorough screening function to ensure all explosives
or contraband are detected, and thus arrive at Appellants' claimed invention
as set forth in claim 1 (Ans. 3-4).
We do not find any of Appellants’ arguments persuasive of error in
the Examiner’s rejection for the following reasons.
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The Supreme Court noted in KSR that although the teaching,
suggestion, and motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 127 S. Ct. at 1741.
The knowledge that identification of objects may be verified through
automatic analysis of the shape of an object of interest would have been
within the ordinary skill in the art, as evidenced by both Peschmann and
Husseiny. Furthermore, one of ordinary skill in the art “is also a person of
ordinary creativity, not an automaton”. KSR, 127 S. Ct. at 1742. The entire
context of both references is computerized screening techniques to identify
contraband and/or explosives contained in luggage or other articles to be
scanned. Appellants’ contention that Husseiny’s edge detection could be
done by a human operator, (Br. 5) even if conceded to be true, is thus not
persuasive of error in the Examiner’s position.
Therefore, it would have been prima facie obvious at the time the
invention was made to have used edge boundary information of the prior art
exemplified in Husseiny in the luggage screening method of Peschmann.
This would have predictably improved the thoroughness and reliability of
the screening, a result that one of ordinary skill in the art would have
readily appreciated was desirable. See KSR, 127 S. Ct. at 1740 (The
question to be asked is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”). See also, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
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(Fed. Cir. 2007) (the expectation of success need only be reasonable, not
absolute).
Furthermore, Appellants have presented no evidence that the
inclusion of boundary edge information to aid in the detection of the
contraband objects in the prior art method was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” See, e.g., Leapfrog Enter., Inc., 485 F.3d at 1162.
We have considered Appellants’ other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
We therefore determine that Appellants have not shown that the
Examiner erred in establishing a prima facie case of obviousness for claim 1.
Since all other claims in this rejection were not separately argued, they fall
with claim 1.
Issue 2
Claims 13, 30 and 31
Appellants contend that the Examiner’s rejection is devoid of any
“factual evidence” for the position that using “absorption spectra”
information as recited in claim 13 would improve real time inspection
analysis of objects of interest in the Peschmann/Husseiny combination (App.
Br. 6).
We do not agree. The Examiner has made numerous findings in
support of the obviousness conclusion (Ans. 7, 11). As even Appellants
concede, the object of Perry’s invention is “‘to provide real time inspection
of objects to identify a concealed object’” (App. Br. 6, citing Perry, col. 1, ll.
48-49).
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Furthermore, contrary to Appellants’ contention, Perry does indeed
explicitly mention Peschmann (Reply Br. 2; Perry, col. 1, ll. 30-32).
These disclosures would have led one of ordinary skill in the art,
through no more than ordinary creativity, to use, additional screening
information to the Peschmann/Husseiny method, such as absorption spectra
as discussed in Perry. See KSR, 127 S. Ct. at 1741.
Further, one of ordinary skill in the art is presumed to have skills apart
from what the prior art references expressly disclose. See In re Sovish, 769
F.2d 738, 742 (Fed. Cir. 1985).
One of ordinary skill in the art would have readily appreciated that
providing additional screening information to the Peschmann/Husseiny
method, such as using absorption spectra as recited in claim 13, would have
provided an additional mechanism for identifying objects of interest as
established by the Examiner. The improvement of sensing additional
absorption spectra information as claimed appears to be no more than the
predictable use of a known way to accomplish the known established
function of identifying concealed objects in a computerized scanning
method. KSR, 127 S. Ct. at 1740. Appellants have not contended that it
would take more than ordinary creativity to sense absorption spectra as
claimed. See, e.g., Leapfrog, 485 F.3d at 1162.
We, therefore, determine that the evidence presented by the Examiner
supports a prima facie case of obviousness of claim 13.
Issue 3
Claims 14-16, 32, and 33
Appellants contend that Eisen is not concerned with detecting
potassium as required by claim 14 (App. Br. 7). Even assuming that this is
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true, this is not persuasive of error in the Examiner’s obviousness
determination.
Eisen is concerned with detecting explosive devices in luggage, as are
all the other applied prior art references (Eisen, e.g., col. 1, ll. 10-20). One
of ordinary skill in the art would have known that potassium (e.g., potassium
chlorate) is a substance for use in explosives and fireworks.
Perry was also cited by the Examiner to illustrate the obviousness of
using absorption spectra information. We agree with the Examiner that the
use of absorption spectra information associated with any particular
compound of interest, such as potassium, would have been obvious to one of
skill in the art (e.g., Ans. 12). Appellants have not contended that it would
take more than ordinary creativity to use absorption spectra data to screen
for potassium as claimed. See, e.g., Leapfrog, 485 F.3d at 1162.
We, therefore, determine that the evidence presented by the Examiner
supports a prima facie case of obviousness.
Issue 4
Claim 26
Appellants’ arguments that there is no factual support for the
Examiner’s position that adding a two dimensional image detector, as shown
in Crawford, would allow for “faster scanning” are not persuasive. To the
contrary, Crawford describes that the use of a two-dimensional detector
array provides for “rapid scanning” (Crawford, col. 10, ll. 47-51), as aptly
pointed out by the Examiner (Ans. 9).
We, therefore, determine that the evidence presented by the Examiner
supports a prima facie case of obviousness of claim 26 based on the
combined teachings of the applied prior art.
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CONCLUSION
First, Appellants have not shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 1 because there is no
motivation to combine the references and/or because neither reference
discloses the step of storing edge boundary information.
Appellants have also not shown that the Examiner reversibly erred in
establishing a prima facie case of obviousness of claim 13 because of a
failure to provide factual evidence that using “absorption spectra” to identify
the contents of luggage as taught in Perry will improve a luggage scanning
method in accordance with the Peschmann/Husseiny combination.
Appellants have further not shown that the Examiner reversibly erred
in establishing a prima facie case of obviousness of claim 14 because Eisen
does not explicitly teach detecting “potassium” as recited in claim 14.
Finally, Appellants have not shown that the Examiner reversibly erred
in establishing a prima facie case of obviousness of claim 26.

ORDER
The rejection of claims 1, 5-9, 12, 17, 18, 21-25, and 29 under 35
U.S.C. § 103(a) as being unpatentable over Peschmann in view of Husseiny
is affirmed.
The rejection of claims 13, 30, and 31 under 35 U.S.C. § 103(a) as
being unpatentable over Peschmann, Husseiny, and Perry is affirmed.
The rejection of claims 14-16, 32, and 33 under 35 U.S.C. § 103(a) as
being unpatentable over Peschmann, Husseiny, Perry, and Eisen is affirmed;
The rejection of claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Peschmann, Husseiny, and Crawford is affirmed.
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The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021

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