Details:
Ex parte Rykowski
Appeal 2009003868, Appl. No. 10/455,146, Tech. Center 2600
Decided September 17, 2010
The application was directed to calibrating a display by measuring color values and then sending correction factors to the display. The portion of the claim at issue was:
(c) determining a chromaticity value and a luminance value for each registered subpixel;
(d) converting the chromaticity value and luminance value for each registered subpixel to measured tristimulus values;
(e) converting a target chromaticity value and a target luminance value for a given color to target tristimulus values;
The claim was rejected as obvious. The Examiner acknowledged that the primary reference, Greene, did not teach conversion of chromaticity and luminance values into tristimulus values as required by steps (d) and (e). The Examiner relied on a secondary reference, Cottone, for the conversion. On appeal, the Applicant's main argument was to attack the Examiner's rationale for combining.
The rationale for combining was explained in the Examiner's Answer as follows:
The reason provided for combining Greene with Cottone (i.e. to increase the precision of color/brightness values) is a valid motivation. Furthermore, the conversion of chromaticity and luminance values to tristimulus values is simply a conversion, like converting radians to degrees. Lastly, tristimulus values are more precise because the values are in one format as opposed to two (i.e. one luminance value and two chromaticity values).The Board viewed this as two alternative rationale, and found both of them lacking.
The Board appeared to treat the first rationale as substitution – substituting the secondary reference's tristimulus values for the first reference's chromaticity and luminance values. However, the Board found that the Examiner did not explain why the combination would be expected to work better:
... the Examiner has [not] addressed or provided an explanation for how or why conversion to tristimulus values performs equally well as chromaticity and luminance values or another value conversion.
As for the second rationale – using tristimulus values from the secondary reference led to improved precision – the Board found that the Examiner had not provided an explanation for the conclusion that the combination would provide the alleged benefit.
Concerning the other rationale, i.e., precision of tristimulus values, the Examiner asserts that “tristimulus values are more precise because the values are in one format as opposed to two (i.e. one luminance value and two chromaticity values)” (Ans. 21). Again, we do not find that the Examiner has provided reasoning with rational underpinning to support the conclusion that conversion to tristimulus values increases precision for color/brightness values.
The Board reversed the rejection because the Examiner had not complied with the KSR standard by providing "articulated reasoning possessing an rational underpinning to support the combination."
My two cents: The Examiner's second rationale – increased precision – is a classic example of what I call "generic benefit." I see two ways to attack the generic benefit rationale: argue that the Examiner hasn't shown that the combination actually provides the benefit; and argue that the alleged benefit isn't really beneficial at all or is outweighed by drawbacks.
The Applicant here won on the first line of attack, and I use this type of attack frequently. Don't assume that just because the Examiner says the reference does something that it really does. I use the second line of attack less frequently – how do you say stronger/faster/cheaper isn't a benefit with a straight face? But be sure to look for drawbacks that outweigh the benefit.
I'd characterize this case as an example of the Examiner having a poor prima facie showing rather than the Applicant having a well reasoned argument. That is, I find the Applicant's argument "the Examiner didn't provide articulated reasoning" to be just as conclusory as the Examiner's reasoning, if not more.
"As a final note, I'd characterize this case as an example of the Examiner having a poor prima facie showing rather than the Applicant having a well reasoned argument. That is, I find the Applicant's argument "Examiner didn't provide articulated reasoning" were just as conclusory as the Examiner's reasoning. If not more."
ReplyDeleteIf the appellant succeeds in In re Jung, hopefully this is all that we will have to do in the future!
"I'd characterize this case as an example of the Examiner having a poor prima facie showing rather than the Applicant having a well reasoned argument. That is, I find the Applicant's argument "the Examiner didn't provide articulated reasoning" to be just as conclusory as the Examiner's reasoning, if not more."
ReplyDeleteApplicant had no obligation to submit evidence of nonobviousness.
MPEP (2142) If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
>>I'd characterize this case as an example of
ReplyDelete>>the Examiner having a poor prima facie
>>showing rather than the Applicant having a
>>well reasoned argument.
>If the examiner does not produce a prima facie
>case, the applicant is under no obligation to
>submit evidence of nonobviousness.
My reference to the Applicant's argument wasn't to arguments of non-obviousness. You're quite right that until an Examiner makes a Prima Facie case, you're not required to presents args/ev of non-obviousness.
My point was that I didn't think the Applicant fully developed an argument that the PF case was lacking. I found the *Applicant's* argument on this point to be somewhat conclusory.
How do you effectively argue that the Examiner didn't make a Prima Facie case? By conclusory statements like "Examiner didn't provide articulated reasoning and thus didn't make a PF case?
The Examiner had the last word -- “tristimulus values are more precise because the values are in one format as opposed to two". And it was the *Board*, not the Applicant, who fleshed out the argument against the PF case to say that "Examiner hasn't shown that tristimulus is more precise".
" And it was the *Board*, not the Applicant, who fleshed out the argument against the PF case to say that "Examiner hasn't shown that tristimulus is more precise". "
ReplyDeleteExactly what is missing from many applicant's arguments that we see in popularized cases.
But the board keeps on being the applicant's advocate.
Conclusory statements by the examiner do not require any rebuttal other than conclusory statements from the applicant.
ReplyDeleteIf the examiner "concludes" that "it would have been obvious to combine Greene and Cottone to make the conversion more precise" than why can Applicant not respond simply, "No it wouldn't."?
If the examiner is not going to provide any substantial evidence for the purported "benefit", or any reasoning as to how and/or why the purported "benefit" would be provided by the modification/combination, why should Applicant be under any obligation than to point out the lack of a prima facie case?
"But the board keeps on being the applicant's advocate."
LOL
Here's a tip, if the best rejection you can conjure up is "hur, it makes it more precise" than expect to get reversed when the Applicant calls you on the lameness of your rejection.
>If the examiner is not going to provide any
ReplyDelete>substantial evidence for the purported
>"benefit", or any reasoning as to how and/or
>why the purported "benefit" would be provided
>by the modification/combination, why should
>Applicant be under any obligation than to
>point out the lack of a prima facie case?
I never said the Applicant was, or should be, under such an obligation.
The Applicant was absolutely entitled to try to win on "Examiner didn't make a PF case" by simply characterizing the Examiner's offered motivation-to-combine as "conclusory" rather than a "rationale".
But doing so relies on the Board doing some of the heavy lifting. Applicants like Rykowski cab increase the chances of winning by *explaining* the weakness in the Examiner's argument rather than just making conclusory arguments yourself. Here, that would have taken one or two more sentences -- that's all the Board did.
>if the best rejection you can conjure up is
ReplyDelete>"hur, it makes it more precise" than expect to
>get reversed when the Applicant calls you on
>the lameness of your rejection.
In this particular case (Rykowski), yeah, "more precise" wasn't good enough. Because it wasn't clear - on the face of it - that tristimulus was more precise than chrominance+luminance.
But I think that in many fact situations, "more precise" would need a real rebuttal from the Applicant rather than hand-waving.
Suppose instead the Examiner's combination replaced one reference's integer values with another reference's fixed-point values.
Then I'd say that the Applicant needs more than the manta "no articulated rationale." Because on the face of it, fixed-point values are more precise than integers, so that "more precise" meets the PF standard for a reason-to-combine.
I'm not sure the Board did any "heavy lifting" in this decision. It may be that they "expounded" on the Appellant's arguments in a vain attempt to educate the examiner, and the useless quality assurance types who green lighted this appeal. That's a wasted effort as I'm sure the examiner and the quality assurance types got the decision and had the typical examiner reaction: "Hur, those guys on the Board don't know anything."
ReplyDeleteI have a case on appeal now where the examiner is combining A and B on the theory that the combination would "balance out" A. The examiner doesn't provide any substantial evidence, or even any explanation or reasoning why A needs "balancing out." The rejection is simply made up to "read on" the claim. And in my reply brief, that's exactly what I'm going to tell the Board. The combination is made up to reject the claim. That's not a prima facie case. I'm not going to explain why the combination of A and B won't "balance out" A, I'm not going to bother explaining why combining A and B won't provide any "benefit" of "balancing out" A. I'm just gonna say, "This rejection is made up BS. Reversal is respectfully requested."
If the Board wants to do some heavy lifting when they reverse this ridiculous rejection, they're more than welcome to. But they should spare themselves the effort.
"But I think that in many fact situations, 'more precise' would need a real rebuttal from the Applicant rather than hand-waving."
ReplyDeleteI agree. Lots of examiner hand-waving goes unchallenged and is affirmed by the Board. But most times, it is sufficient to simply point out that the rejection is nothing but examiner hand-waving to get a reversal. Nothing more should be required. The requirements for a prima facie case are clear. Pointing out the missing element(s) is all that is, and should be, required.
>I'm not going to explain why the combination
ReplyDelete>of A and B won't "balance out" A, I'm not
>going to bother explaining why combining A and
>B won't provide any "benefit" of "balancing
>out" A.
But are you going to point to a specific deficiency in the Examiner's case, by saying that the Examiner *hasn't* provided explanation or reasoning why A needs "balancing out"? That is, for why the "balancing out" would be a reason to combine? If you do, then you deserve to win. Even without args/ev of NON-obviousness.
Or are you just going to recite KSR's "articulated reasoning" standard and say the Examiner didn't meet it? Without explaining, in just a sentence of two, how the Examiner failed to make a PF case.
I see a big difference between those two scenarios.
I will explain why the examiner didn't meet the standard. But I'm not going to explain why the combination of A and B will not "balance out" A, because I don't have to.
ReplyDeleteActually, I will probably tear this ridiculous rejection to shreds ten million different ways from Sunday in an attempt to get the examiner to simply allow the application rather than be embarrassed by a reversal to the tune of, "We agree 100% with Appellant" though I doubt that the examiner cares about being embarrassed by the Board. I might as well have my fun though.
>I agree. Lots of examiner hand-waving goes
ReplyDelete>unchallenged and is affirmed by the Board.
Don't think you read my comment carefully. The hand waving I referred to was by Applicants.
>Pointing out the missing element(s) is all
>that is, and should be, required.
Agreed. But I think there's a lot of disagreement about what "pointing out the missing elements" really means.
I say that the following Applicant argument is mere hand-waving: "Examiner didn't provide an articulated rationale as required by KSR, because all the Examiner did was say 'the motivation to combine [copy in asserted motivation]." I say this argument isn't compelling because it doesn't really "point out the missing element."
If you want to increase your chances of winning, say what's wrong with the Examiner's case. Nothing to do with NON-obviousness. Don't need to go there. But you should attack the PF case by saying that "Examiner hasn't explained how [asserted motivation] provides a benefit or reason to combine".
Again, I'm only talking about a few sentences here. But I think these few sentences are very important.