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.