Mitsubishi Electric Corporation

Patent Trials and Appeals Board

Dec 31, 2020

2019005430 (P.T.A.B. Dec. 31, 2020)

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.
15/304,201 10/14/2016 Tomohito NAKATA 1033318-000475 6976
21839 7590 12/31/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
YANG, QIAN
ART UNIT PAPER NUMBER
2668
NOTIFICATION DATE DELIVERY MODE
12/31/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOHITO NAKATA, TETSUYA TAMAKI, and
TSUBASA TOMODA
Appeal 2019-005430
Application 15/304,201
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3–7, and 9–22, which are all claims
pending in the application. Appellant has canceled claims 2 and 8. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Mitsubishi Electric
Corp. Appeal Br. 2.
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STATEMENT OF THE CASE2
The claims relate to “an image analysis method, an image analysis
device, an image analysis system, and a portable image analysis device that
enable accurate analysis of image data and reduction in analysis load on an
analyst.” See Spec. ¶ 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method for displaying analyzed image data with
higher accuracy and reduced load through feature quantities and
variation cycle, the method comprising:
a step of capturing image data acquired in time series;
a step of acquiring color information about each pixel of
each image data;
a step of calculating feature quantity time-series data
indicating time-series change in a feature quantity of each pixel,
from the color information;
a step of calculating a variation cycle of the image data
from the feature quantity time-series data; and
a step of displaying image analysis data including the
calculated variation cycle where the displayed image analysis
data includes a displayed graph displaying a comparison of
time shift and autocorrelation coefficients and the calculated
variation cycle is illustrated as a result of the comparison,

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Apr. 16, 2019); Appellant’s Reply Brief (“Reply Br.,” filed July 9, 2019);
Examiner’s Answer (“Ans.,” mailed May 17, 2019); Final Office Action
(“Final Act.,” mailed Dec. 31, 2018); and the original Specification
(“Spec.,” filed Oct. 14, 2016).
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wherein the feature quantity time-series data are time-
series color information entropies of the color information in a
predetermined pixel region including each pixel, the color
information entropies being a measure of a degree of disorder
based on a number of colors in the color information in the
predetermined pixel region.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Tominaga US 2006/0242214 A1 Oct. 26, 2006
Cualing et al. (“Cualing”) US 2010/0254588 A1 Oct. 7, 2010
Watkins, Jr. et al. (“Watkins”) US 2013/0064426 Al Mar. 14, 2013
Yagi et al. (“Yagi”) US 2014/0098992 A1 Apr. 10, 2014
Fujii et al. (“Fujii”) US 2015/0071548 A1 Mar. 12, 2015
REJECTIONS
R1. Claims 1, 3, 4, 7, 9–11, 15, 16, and 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of Yagi, Watkins,
and Tominaga. Final Act. 2.
R2. Claims 5, 12, 17, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Yagi, Watkins, Tominaga,
and Cualing. Final Act. 9.
R3. Claims 6, 13, 14, 18, 21, and 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Yagi, Watkins,
Tominaga, and Fujii. Final Act. 10.

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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 8–10) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1, 3, 4, 7, 9–11, 15, 16, and 19 on the basis of
representative claim 1.
Remaining claims 5, 6, 12–14, 17, 18, and 20–22 in Rejections R2
and R3, not substantively or separately argued, stand or fall with the
respective independent claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1,
3–7, and 9–22 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner’s Answer in response to Appellant’s

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 103 Rejection R1 of Claims 1, 3, 4, 7, 9–11, 15, 16, and 19
Issue 1
Appellant argues (Appeal Br. 8–10; Reply Br. 2–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
combination of Yagi, Watkins, and Tominaga is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[a] method for displaying analyzed image data” that
includes, inter alia, the limitation of:
a step of displaying image analysis data including the
calculated variation cycle where the displayed image analysis
data includes a displayed graph displaying a comparison of time
shift and autocorrelation coefficients and the calculated
variation cycle is illustrated as a result of the comparison,
as recited in claim 1?
(b) Did the Examiner err in combining Yagi, Watkins, and
Tominaga because Tominaga allegedly teaches away from the claimed
invention?
Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
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). Under this standard,
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we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (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 . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
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Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
(a) Disputed Limitations are Taught or Suggested
The Examiner relies upon the combination of Yagi, Watkins, and
Tominaga as teaching or suggesting the contested limitation. Final Act. 4–5
(citations omitted). The Examiner specifically finds Tominaga teaches “a
periodicity judgment apparatus to judge periodicity of time series data
(abstract). In addition, Tominaga discloses the apparatus includes a
displayed graph displaying ([0114, 0183], display apparatus) a comparison
of time shift and autocorrelation coefficients and the calculated variation
cycle is illustrated as a result of the comparison ([0203]).” Final Act. 4–5
(emphasis omitted).
Appellant concedes Tominaga’s Figure 13 and paragraph 203, which
refer to the performing of autocorrelation coefficient, teach how to calculate
the recited correlation coefficient. Appeal Br. 9. However, Appellant
argues Tominaga does not teach displaying the coefficient in a display graph
compared to time shift as recited in the appealed claims. Id.
We are not persuaded by Appellant’s argument because Appellant is
arguing the references separately. Although the Examiner cites Tominaga
for the remainder of the disputed limitation, the Examiner cites Yagi, not
Tominaga, for teaching “a step of displaying image analysis data including
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the calculated variation cycle.” Final Act. 3, citing Yagi, Fig. 19, #431, (“it
is apparent that output image analysis data can be outputted to display”)
(emphasis omitted).
We are also not convinced the Examiner erred because Tominaga’s
image display apparatus 114 displaying a search result or a judgement result
outputted from the judgment system 1000 at least suggests displaying a
graph. See Tominaga ¶ 114, Final Act. 4–5. We do not find the Examiner’s
interpretation overly broad or unreasonable because Appellant does not point
to any limiting definition, in the claim, or in the Specification, that would
preclude the Examiner’s broad but reasonable construction of the disputed
limitation.
(b) Tominaga does not Teach Away from the Claimed Invention
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
In alleging that Tominaga teaches away from the claimed invention,
Appellant argues “[i]t would not be obvious to a person having ordinary skill
in the art to modify Tominaga by performing the calculation multiple times
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using different time shifts and then illustrating a comparison of the values of
the coefficient. In fact, Tominaga explicitly discourages such a practice, as
Tominaga discloses finding a maximum value of the coefficient to determine
the period, as disclosed in paragraph [0203].” Appeal Br. 9 (emphasis
omitted).
In response, the Examiner finds:
The Fig. 13 of Tominaga displays graphic relations
among time shift, correlation coefficient, and calculated
variation cycle (oblique line portion - overlap portion).
Tominaga discloses “the correlation coefficient is calculated in
an oblique line portion (overlap portion).” This illustrates a
results of the relation (comparison) between correlation
coefficient and calculated variation cycle (and further relation
with time shift). Tominaga discloses “While the shift width is
gradually changed, the shift width by which the correlation
coefficient becomes largest is searched.” This illustrates a
results of the comparison between time shift and correlation
coefficient. Thus, Tominaga broadly reads on the claimed
limitation of “a displayed graph displaying a comparison of
time shift and autocorrelation coefficients and the calculated
variation cycle is illustrated as a result of the comparison.” The
claimed limitation does not state “performing the calculation
multiple times using different time shifts and then illustrating a
comparison of the values of the coefficient” as argued above,
thus, the argument is not related to the claimed limitations.
Ans. 13–14 (emphasis omitted).
We agree with the Examiner’s findings and legal conclusions of
obviousness because we find a person of ordinary skill in the art, upon
reading Tominaga, would not have been discouraged from illustrating a
comparison of the values of the coefficient. We note claim 1 is silent
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regarding Appellant’s particular contention that “performing the calculation
multiple times using different time shifts” is not taught. Appeal Br. 9.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 3, 4, 7, 9–11, 15, 16, and 19, which
fall therewith. See Claim Grouping, supra.
2. § 103 Rejections R2 and R3 of Claims 5, 6, 12–14, 17, 18, and 20–22
In view of the lack of any substantive arguments directed to
obviousness Rejections R2 and R3 of claims 5, 6, 12–14, 17, 18, and 20–22
under § 103 (see Appeal Br. 10–11), we sustain the Examiner’s rejection of
these claims. Arguments not made are waived.4
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–4) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.

4 Appellant merely argues with respect to Rejection R2, “Cualing fails to
remedy the deficiencies of Yagi, Watkins, and Tominaga as Cualing fails to
disclose or suggest the claimed displayed graph,” (Appeal Br. 10), and with
respect to Rejection R3, “Appellant respectfully submits that Fujii fails to
remedy the deficiencies of Yagi, Watkins, and Tominaga as Fujii fails to
disclose or suggest the claimed displayed graph.” Appeal Br. 11.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R3 of claims 1, 3–7, and 9–22 under 35 U.S.C. § 103 over the cited
prior art combinations of record, and we sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis /
References Affirmed Reversed
1, 3, 4, 7, 9–
11, 15, 16, 19 103
Obviousness
Yagi, Watkins,
Tominaga
1, 3, 4, 7, 9–11,
15, 16, 19
5, 12, 17, 20 103
Obviousness
Yagi, Watkins,
Tominaga,
Cualing
5, 12, 17, 20
6, 13, 14, 18,
21, 22 103
Obviousness
Yagi, Watkins,
Tominaga, Fujii
6, 13, 14, 18,
21, 22
Overall
Outcome 1, 3–7, 9–22
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED