Ex Parte Moroney et al

Patent Trial and Appeal Board

Mar 21, 2017

13754287 (P.T.A.B. Mar. 21, 2017)

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.
13/754,287 01/30/2013 Nathan Moroney 83138499 1052
22879
HP Tnr
7590 03/23/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
PHAM, MICHAEL
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN MORONEY and EHUD CHATOW1
Appeal 2016-008110
Application 13/754,287
Technology Center 2100
Before JEAN R. HOMERE, DAVID J. CUTITTAII, and
MICHAEL J. ENGLE, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—19, which constitute all of the pending claims in the
application on appeal. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
We also enter a new ground of rejection for claims 1—9 under
35 U.S.C. § 112, second paragraph, as being indefinite.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. Appeal Br. 1.
Appeal 2016-008110
Application 13/754,287
STATEMENT OF THE CASE
According to Appellants, the application relates to determining a
corrected optical property value of an optical property of interest (e.g., a
particular color) captured within a digital image. Spec. 1 8.2 Claims 1, 10,
and 17 are independent. Claims 1,10, and 17, which are illustrative of the
issues under appeal, are reproduced below with disputed limitations
italicized:
1. A system comprising:
networking hardware to receive from a device to which
the networking hardware is communicatively connected one or
more of:
a digital image of a physical scene including an
optical property of interest and a physical optical
property calibration chart;
a corrected optical property value of the optical
property of interest determined based on the physical
optical property calibration chart and the optical
property of interest within the digital image;
a processor; and
a non-transitory computer-readable data storage medium
storing computer-readable code executable by the processor to:
determine a search query based on the corrected
optical property value;
search a database using the search query to
determine search results for the search query that have
appearance attributes with optical properties at least
similar to the corrected optical value; and
2 Throughout this Opinion, we refer to: (1) Appellants’ Specification filed
January 30, 2013 (Spec.); (2) the Final Office Action (Final Act.) mailed
June 9, 2015; (3) the Appeal Brief (Appeal Br.) filed November 30, 2015;
(4) the Examiner’s Answer (Ans.) mailed June 16, 2016; and (5) the Reply
Brief (“Reply Br.”) filed August 16, 2016.
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Application 13/754,287
return the search results to the device via the
networking hardware.
10. A non-transitory computer-readable data storage
medium executable by a mobile device having image-capturing
capability to perform a method comprising:
capturing a digital image of a physical scene including
an optical property of interest and a physical optical property
calibration chart;
determining a corrected optical property value of the
optical property of interest based on the physical optical
property calibration chart and the optical property of interest as
captured within the digital image;
determining search results obtained by a database being
searched using a search query based on the corrected optical
property value, the search results having appearance attributes
with optical properties at least similar to the corrected optical
property value; and
outputting the search results.
17. A method comprising:
determining, by a computing system, a corrected optical
property value of an optical property of interest captured within
a digital image;
determining, by the computing system, a search query
based on the corrected optical property value;
searching, by the computing system, a database using the
search query to determine search results for the search query
that have appearance attributes with optical properties at least
similar to the corrected optical property value; and
outputting, by the computing system, the search results
for the search query.
Appeal Br. 7, 9—10 (Claims App’x).
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Application 13/754,287
REJECTION
Claims 1—19 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Wang et al. (“Wang”) (US 2012/0269432 Al; Oct. 25, 2012). Final Act. 2-
13.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 1 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. The essence of the requirement under 35 U.S.C. § 112,
second paragraph is that the language of the claims must make it clear what
subject matter the claims encompass — i.e., “whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)).
Claim 1 recites:
networking hardware to receive . . . one or more of:
a digital image . . .;
a corrected optical property value . . .;
However, it is not reasonably clear whether “a digital image” and “a
corrected optical property value” should be separated by a disjunctive “or”
or instead a conjunctive “and.” The Examiner and Appellants appear to read
in a disjunctive “or.” Ans. 5—6 (finding claim 1 “indicates ‘a digital image’
and ‘a physical optical property calibration chart’; or ‘a corrected optical
property value’) (emphasis added); Appeal Br. 4 (“Claim 1 recites that either
a digital image of a physical scene including a physical optical property
calibration chart or a corrected optical property value determined based on
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Application 13/754,287
the physical optical property calibration chart is received.”) (emphasis
added, original emphasis omitted). However, claim 1 does not expressly
recite an “or” between these limitations, and neither the Examiner nor
Appellants explain why they assume an “or” rather than “and.”
Being separated by “or” rather than “and” would make a substantive
difference in the claim. For example, where “[t]he phrase ‘at least one of
precedes a series of categories . . . and the patentee used the term ‘and’ to
separate the categories,” the Federal Circuit has held “the phrase ‘at least
one of modifies each member of the list.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 886 (Fed. Cir. 2004) (emphasis added). Thus,
the plain meaning of the limitation “at least one of A and B” is “at least one
of A and at least one of B,” whereas the plain meaning of “at least one of A
or B” is “at least one of A or at least one of B.”
Because the claim as presently written does not specify whether the
list is separated by “and” or “or,” the language “is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014),
and “fail[s] to inform, with reasonable certainty, those skilled in the art
about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2124 (2014). Therefore, claim 1 is indefinite.
Claims 2—9 depend from claim 1 and are indefinite for the same
reason. We note that dependent claim 2 recites “the networking hardware is
to receive from the device just the digital image and not the corrected optical
property value” and dependent claim 3 recites “the networking hardware is
to receive from the device just the corrected optical value . . . and not the
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Application 13/754,287
digital image.” These limitations would be impossible to meet if claim 1
recited a conjunctive “and.”
Accordingly, we enter a NEW GROUND OF REJECTION against
claims 1—9 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.
DISCUSSION
We review the appealed rejection for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
Claims 19
With regard to the anticipation rejection of claim 1, for the reasons
expressed above, claim 1 is indefinite. A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962). Hence, claim 1 on appeal
must be reasonably understood without resorting to speculation. Here, we
would require such speculation to construe the claims. Therefore, the prior
art rejection must fall pro forma because it is necessarily based on
speculative assumption as to the meaning of the claim. It should be
understood, however, that our decision in this regard is based solely on the
indefmiteness of the claimed subject matter and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection. We do
not reach the merits of the Examiner’s anticipation rejection of claim 1.
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Accordingly, we reverse the Examiner’s rejection of claim 1 pro
forma. Dependent claims 2-9 depend from claim 1 and are reversed for the
same reason.
Claims 10—16
Wang relates to “large-scale image retrieval.” Wang 11. “Based on
web searching techniques, example large-scale image retrieval can
implement the use of images based on ‘bag-of-features’ or BOF models.
Furthermore, such models can include index histograms that represent
features of the images.” Id.
The Examiner finds “the histogram of Wang are a physical optical
property chart. They are physical optical property as they represent spatial
features of portions of the image.” Ans. 5; see also Final Act. 10; Ans. 2—3
(citing Wang H 35, 36, Fig. 3).
Appellants argue the Examiner has “confuse[d] a histogram that is
constructed from an image with a physical chart that is tangible, concrete,
having material existence, and present in the scene of which an image has
been captured.” Appeal Br. 6 (emphasis added).
We agree with Appellants the Examiner has not demonstrated Wang
discloses “capturing a digital image of a physical scene including an optical
property of interest and a physical optical property calibration chart,” as
recited in independent claim 10.
In the rejection, the Examiner’s rationale appears to alternate
between a finding that the term “physical” modifies “optical property” and
“physical” modifies “chart.”3 For example, referring to optical properties,
3 In the event of further prosecution, Appellants are encouraged to amend the
independent claims to clarify the term that the adjective “physical” is
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the Examiner states “[t]hey are physical optical property as they represent
spatial features of portions of the image.” Ans. 5. Yet in the same
paragraph, the Examiner also states “it is noted the histograms are physical
as they have architecture.” Id. In either case, however, the Examiner fails to
establish that Wang’s histogram is included in a captured digital image.
During prosecution before the PTO, words of the claim are to be
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
In describing image capture, Appellants’ Specification states that
[i]n some implementations, a user thus just has to bring along a
small chart when out and about to accurately identify colors or
other optical properties of interest that the user sees. The user
can use his or her smartphone to capture an image of a
discovered color or other optical property of interest with the
chart placed alongside. . . . Besides the color of interest, the
digital image includes the physical color calibration chart.
Spec. 1111, 16.
We find there are no implementations described in the Specification in
which the user does not capture an image of the calibration chart. We,
therefore, agree with Appellants’ argument that Wang fails to disclose a
chart “present in the scene of which an image has been captured” (Appeal
Br. 6) and are constrained to reverse the 35 U.S.C. § 102(e) rejection of
independent claim 10 and of claims 11—16, which depend from claim 10.
intended to modify. Otherwise, the Examiner should consider whether claim
10 should be rejected as being indefinite.
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Claims 17—19
For independent claim 17, Appellants rely on the same arguments as
independent claims 1 and 10. Appeal Br. 4. However, independent claim
17 fails to recite any limitation commensurate with the limitation disputed in
claim 10. See Appeal Br. 10 (Claims App’x).
Accordingly, we sustain the Examiner’s rejection of independent
claim 17, as well as dependent claims 18 and 19, which are not argued
separately. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We sustain the Examiner’s decision rejecting claims 17-19 under
35U.S.C. § 102(e).
We reverse the Examiner’s decision rejecting claims 10-16 under
35 U.S.C. § 102(e).
We reverse pro forma the Examiner’s decision rejecting claims 1-9
under 35 U.S.C. § 102(e).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1-9 under 35 U.S.C. § 112, second paragraph.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
Appellants, within two months from the date of the Decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
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Application 13/754,287
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART: 37 C.F.R, § 41.500?)
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