Ex Parte Zahorsky

Board of Patent Appeals and Interferences

May 31, 2012

10873613 (B.P.A.I. May. 31, 2012)

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.
10/873,613 06/23/2004 Karl-Heinz Zahorsky 31512-204911 5600
26694 7590 05/31/2012
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
MENBERU, BENIYAM
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KARL-HEINZ ZAHORSKY
____________________

Appeal 2010-002140
Application 10/873,613
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

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Application 10/873,613

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-4 and 6-13. Claim 5 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We Affirm.
Invention
The invention on appeal is directed to “calibration of imaging devices,
such as scanners or digital cameras, for minimizing individual color
reproducing errors of such devices.” (Spec. 2). Appellant’s invention
prevents the selection of an incorrect reference file during the color
calibration process by integrating a pointer to the correct reference file in the
target, where the target contains accurate “true color” information. (Spec.
6-7). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of calibrating an imaging device for
minimizing an individual color reproducing error of such a
device, comprising the steps of:

using the device to capture calibration data of a
calibration target, the calibration data containing at least one
color,

associating reference data with the calibration target by
scanning the calibration target, the reference data containing
information about the at least one color, and

comparing the captured calibration data with the
reference data to calibrate the device, wherein the calibration
target comprises a pointer containing information pointing to
the reference data, wherein said reference data is retrieved by
searching a data storage based on the pointer. (Emphasis
added).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sherman
Keech
US 5,537,516
US 6,985,270 B1
Jul. 16, 1996
Jan. 10, 2006

REJECTIONS
Claims 1-4 and 6-13 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Sherman and Keech.
GROUPING OF CLAIMS
Based on Appellant’s arguments in the Brief, we decide the appeal on
the basis of representative claims 1, 6, and 12. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Brief, page 13, et seq.
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). We
consider Appellant’s arguments only to the extent that such arguments are
directed to claimed subject matter. We decline to read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).

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Independent Claim 1
Combinability of the references under §103
ISSUE 1
Under § 103, did the Examiner err in combining
the cited references?
Appellant contends, inter alia:
Sherman teaches calibrating a color printer using a scanner and
Keech teaches calibrating images . . . . According to one aspect
of Keech, the "device dependent adjustments" and "device
independent calibration corrections" can be applied separately
in the applying step 20. (See, column 8, lines 22-24). Thus,
Keech itself treats imaging device calibration as distinct from
image calibration. There is no evidence on the record as to why
one of ordinary skill in the art faced with the general problems
associated with calibrating imaging devices using calibrations
target images would look for solutions in the image calibration
art.
(App. Br. 10-11).
The Examiner disagrees:
In response: Keech et al '270 discloses that the "device
dependent adjustments" are for calibrating the image (column
6, lines 8-15; column 8, lines 17-23; the "scene digital image" is
the image to be calibrated) not for calibration of the scanner.
Since the "device dependent adjustments" are for calibrating the
image, the argument that Keech et al '270 "treats the imaging
device calibration as distinct from image calibration" is not
applicable because both the "device dependent adjustments"
and the "device independent calibration corrections" are for
image calibration. Finally since Keech et al '270 reference was
used to only disclose of a calibration target comprising a
pointer that points to reference calibration data, it would be
obvious for one of ordinary skill in the art to look for any
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calibration target irrespective of what the intended use of the
calibration target is as long as the calibration target has the
structure of a pointer that points to a reference data.
(Ans. 14-15).
Combinability of the References under § 103
Regarding the combinability of Sherman and Keech, we find the
weight of the evidence supports the Examiner’s position. As pointed out by
the Examiner, the secondary Keech reference was used only to teach or
suggest a calibration target comprising a pointer that points to reference
calibration data. (Id.). Thus, we find Appellant’s arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art and are therefore ineffective to rebut the
Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413,
425 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”(Emphasis added) (citations omitted)).
This reasoning is applicable here. On this record, we are of the view
that Appellant’s claimed invention merely arranges prior art elements with
each element performing the same function it had been known to perform
and yields no more than one would expect from such an arrangement. The
Supreme Court guides that such a combination of familiar elements is
obvious. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
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For essentially the same reasons articulated by the Examiner (Ans. 14-
15), as discussed above, we are not persuaded by Appellant’s arguments
(App. Br. 10-11) that the Examiner has erred by improperly combining the
cited references under § 103.

Limitations under §103
ISSUE 2
Under § 103, did the Examiner err in finding that
the cited references, either alone or in
combination, would have taught or suggested
“calibrat[ing] the device, wherein the calibration
target comprises a pointer containing information
pointing to the reference data,” within the meaning
of claim 1?
Appellant contends:

Even assuming one of ordinary in the art is motivated to
modify Sherman and Keech based on their respective teachings,
such modifications would result in calibrating the scanner
device using the standard target 310 of Sherman, which as
conceded by the Action does not have a calibration reference
data pointer, and calibrating the image produced images by the
so calibrated imaging device based on the pointer disclosed in
the calibration target frame 100 of Keech. Regardless, the
combined teachings of Sherman and Keech does not result in
calibrating an imaging device with a reference data pointer on
a calibration target, as required by claim 1. (Emphasis added).

(App. Br. 11, para. 2).
The Examiner disagrees:
In response: In the calibration system of Sherman et al '516, the
"subject scanner 412" uses the reference calibration data 314
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when scanning the standard target 310 during the calibration
process (column 9, lines 46-67; column 10, lines 1-9). The
reference calibration data 314 is provided as a "digital file"
during the calibration process. The system of Keech et al '270
discloses [] providing reference calibration data by using a
pointer that is stored on the calibration target wherein the
reference data can be accessed by using this pointer structure
(column 5, lines 32-43). Thus the system of Sherman et al '516
does not expressly disclose of an automated method of
acquiring the reference calibration data. However the system of
Keech et al '270 discloses of using a pointer on a calibration
target to acquire the reference data. By using the pointer of
Keech et al '270 the acquisition of the reference calibration data
is automated since the extracted pointer data will automatically
point to location in the storage device where the reference data
is stored (Keech et al '270: column 6, lines 21- 25). Thus by
modifying the system of Sherman et al '516 so that instead of
providing the reference calibration data 314 as a "digital file"
but instead providing access to the reference calibration data
314 through a pointer structure stored on the standard target
310, an automated method of providing reference calibration
data is achieved.
(Ans. 15-16).
For essentially the same reasons set forth by the Examiner (Id.), we
agree that Keech would have taught or suggested the disputed limitation of
“wherein the calibration target comprises a pointer containing information
pointing to the reference data.” (Claim 1). We note that Keech expressly
teaches storing reference calibration data including “storage in memory that
is accessed depending upon pointers . . . .” (Col. 5, ll. 31-41, emphasis
added).
Moreover, to the extent that claim 1 merely automates a prior art
manual process of choosing the correct reference file (as described in
Appellant’s Spec. p. 6), it is well settled that merely providing a mechanical
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or automatic means to replace manual activity to accomplish the same result
is an obvious improvement. See In re Venner, 262 F.2d 91, 95 (CCPA
1958). Nor has Appellant shown that automatically linking the target with
the correct reference data by using a pointer integrated in the target would
have been uniquely challenging or otherwise beyond the level of ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007). We also observe that Appellant has not filed a
Reply Brief rebutting the Examiner's response to Appellant’s contentions in
the Appeal Brief.
For these reasons, on this record, we are not persuaded that the
Examiner has erred. Therefore, we sustain the Examiner’s obviousness
rejection of representative claim 1, and associated dependent claims 2-4,
(not argued separately) which fall therewith. See 37 C.F.R. §
41.37(c)(1)(vii).
Independent Claim 6
Appellant essentially urges the patentability of claim 6 based upon the
combinability issue that we have addressed supra:

For the reasons set forth above, claim 6 is not obvious because
the proposed modification in the Office Action would result
in a calibration system that does not work and if it does work it
would not meet the claimed requirement for "an allocator for
allocating reference data associated to the calibration target
by scanning the calibration target" because without a reference
measuring system as proposed by the action no reference data
may be associated to the calibration target by scanning the
calibration target."

(App. Br. 13).
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We do not find persuasive Appellant’s argument that the Examiner’s
proffered combination “does not work” (Id.), because such argument is
grounded on the erroneous premise that the features of the secondary
reference (Keech) are bodily incorporated into the structure of the primary
reference (Sherman). See Keller, 642 F.2d at 425. To the contrary, the
Examiner emphasizes repeatedly that “Keech et al '270 was only used to
show that a calibration target, irrespective of its intended application,
can comprise of a pointer that points to a reference data.” (Ans. 12; see
also pp. 13, 16)(emphasis in original). Thus, we agree with the Examiner’s
responsive argument regarding claim 6:
Since the reference measurement device is not eliminated by
the modified system, the "digital file" is used to allocate the
reference signal 314 for comparison data wherein the reference
signal 314 is associated with the standard target 310 in the
system of Sherman et al '516 (column 9, lines 46-67; column
10, lines 1-5). Thus the digital file provides "an allocator for
allocating reference data associated to the calibration target by
scanning the calibration target".

(Ans. 19).
For the aforementioned reasons, we sustain the Examiner’s
obviousness rejection for representative claim 6, and associated dependent
claims 7-11, (not argued separately) which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Independent Claim 12
Similar to the arguments considered above regarding claim 6,
Appellant essentially urges the patentability of claim 12 based upon the
combinability issue that we have addressed supra:

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For the reasons set forth above, claim 12 is not obvious because
the proposed modification in the Office Action would result
in a calibration system that does not work and if it does work it
would not meet the claimed requirement for "a pointer ...
containing information pointing to reference data associated
with the calibration target, said reference data being obtained by
scanning the calibration target ... " because without a reference
measuring system as proposed by the action no reference data
may be by scanning the calibration target."

(App. Br. 14).
As discussed above regarding claim 6, we do not find persuasive
Appellant’s argument that the Examiner’s proffered combination “does not
work” (Id.) because such argument is grounded on the erroneous premise
that the features of the secondary reference (Keech) are bodily incorporated
into the structure of the primary reference (Sherman). See Keller, 642 F.2d
at 425. Therefore, on this record, we are not persuaded of Examiner error.
Moreover, we agree with the Examiner’s responsive arguments as set forth
on pages 19-20 of the Answer. Therefore, we sustain the Examiner’s §103
rejection of representative claim 12, and associated dependent claim 13, (not
argued separately) which falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s decision rejecting claims 1-4 and 6-13
under §103.

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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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

pgc