PTAB reverses § 103 when secondary reference teaches image processing during capture where claim requires post-capture processing

Takeaway: The Examiner rejected claims to user-initiated post-capture zoom processing of facial images as obvious over zoom processing taught by a primary reference in view of user-initiated zoom during image capture. The Applicant appealed, arguing that the secondary reference relied on by the Examiner taught zoom before capture while the claims required zooming in a digital image that was already in existence. The Board agreed with the Applicant and reversed: "[the secondary reference] zooming by half-pressing a shutter button occurs before capture of an image with its 'image taking device,' whereas the claims are directed to post-capture processing of images with a computer system. (Ex parte Bhatt, PTAB 2016.)

Details:
Ex parte Bhatt
Appeal 2014-009532, Appl. No. 13/182,409, Tech. Center 2600
Decided:  June 13, 2016

The application on appeal was directed to image processing, and more specifically, to presenting zoomed views of multiple faces. Each particular zoom level maximizes the fraction of the image occupied by the face. As explained in the application:

... it would be desirable to present zoomed views of multiple human faces depicted in the images 350-A, 350-B, 350-C and 350-D to allow a user associated with the system 300 to determine one or more faces from among the multiple faces are in focus or otherwise desirable and the image(s) from among the images 350-A, 350-B, 350-C and 350-D corresponding to the determined faces. To this effect, the GUI 302 can also include a control 320 through which the user can request that the system 300 concurrently zooms to portions of the multiple images 350-A, 350-B, 350-C and 350-D depicting faces of several persons.

 ... Upon receiving user input via the arrows of the control 320, the system 300 can switch, based on a display index/order associated with an anchor image, from concurrently presenting zoomed views associated with the detected instances of a person's face to concurrently presenting zoomed views associated with the detected instances of another person's face.

A representative claim on appeal read:

     1. A method performed by one or more processes executing on a computer system, the method comprising:
     presenting, on a user interface viewable on a display coupled to the computer system, one or more digital images;
      receiving user input requesting to zoom to faces depicted in the one or more digital images, where the faces include either human faces or animal faces; and
     in response to receiving the user input and for each of the one or more digital images, automatically presenting on the user interface a zoomed view of the digital image
     that displays an enlarged representation of a portion of the digital image showing an instance of a face depicted in the displayed portion of the digital image,
     the zoomed view of the digital image covering an [entire] area of the user interface configured to present the one or more digital images,
      the zoomed view being presented at a zoom-level that is selected to maximize a fraction of the displayed portion of the digital image occupied by the face.

The Examiner rejected the independent claims as obvious. According to the Examiner, the primary reference Shiritani taught most of the zoom limitations. In discussing the feature "zoom level selected to maximize a fraction ... occupied by the face," the Examiner relied on Shiritani's teaching "... in the case of an upright full-length figure image or the like, because the face area is small, the user has to observe the face area by enlarging the full-length figure image to be full-screen."

The Examiner acknowledged that the primary reference did not teach zooming on multiple faces in response to user input, or doing so automatically. The Examiner turned to Nose for the zoom-in-response-to-user-input feature, the rationale for combining being "in order to allow users more flexibility in image zooming." Finally, for the feature of "automatically presenting ... a zoomed view," the Examiner relied on In re Venner, explaining that "it has been held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art." (MPEP 2144.04.III.)

The Applicant appealed and made multiple arguments against obviousness. With respect to the "maximize a fraction ... occupied by the face" limitation allegedly taught by the "full-screen" discussion in Shiratani, the Applicant argued that the reference did not teach making the face full-screen, but rather making the entire image full-screen. The Applicant then focused on the claim limitation "zoomed view covering an area of the UI configured to present the ... digital images," which the Examiner read on FIG. 9B of Shiratani.

The Applicant suggested that since Shiratani's UI included multiple images in the same window, the zoomed view did not cover the area presenting the digital image.

Finally, the Applicant traversed the Examiner's reliance on Nose for image zooming in response to user input. The Applicant pointed out that Nose described a two-step shutter button in a digital camera, where a half-press of the shutter button zoomed in on a face, and a full-press recorded the current image. Thus, zoom feature in Nose was a zoom before an image is captured, where the claim referred to zooming in a digital image already in existence.

In the Answer, the Examiner responded to the Applicant arguments with additional explanation. First, the Examiner reiterated that "Paragraphs 0017-0020 & Figures 9A/9B [of primary reference Shiratani] disclose maximizing or zooming an image which is already occupying an entire area of the user interface." The Examiner then explicitly explained how the combination was used to reject the claim: "Shiratani ... discloses enlarging the image after capture [while] Nose's contribution surrounds the ability to use the half-press [by the user] to zoom" (emphasis added.)

In a Reply Brief, the Applicant noted an inconsistency in the Examiner's position.

... [t]he Examiner has also made competing assertions with respect to Shiratani ... the Examiner has explicitly acknowledged that "[p]aragraphs 0017-0020  & Figures 9A/9B disclose an album with different faces being disclosed in two or more different images." ... In doing so, the Examiner has contradicted his previous assertion [in the Answer] that Shiratani's "[p]aragraphs 0017-000 & Figures 9A/9B discloses maximizes or zooming an image which is already occupying an entire area of the user interface.
(Emphasis in original.)

The Board agreed with the Applicant that the Examiner's reliance on Nose was in error.

Nose's zooming by half-pressing a shutter button occurs before capture of an image with its "image taking device," whereas the claims are directed to post-capture processing of images with a computer system.

Because the Examiner also admitted that Shiratani failed to teach this feature, the Board reversed the obviousness rejection.

My two cents: The Board got this one wrong: the Examiner's Answer clearly stated that it was the combination of Shiratani and Nose that taught the claimed feature. Nose provided a generic zoom-in-response-to-user-action, while Shiratani taught the claimed zoom details.

The Examiner made it easy for the Board to reach this conclusion, by presenting disjointed findings instead of a single coherent rejection. That is, the body of the rejection in the Answer explicitly stated that Nose taught the entire zoom limitation – and apparently that's the part the Board read. Then, the Response to Arguments section of the Answer contradicted the earlier statement, and explained instead that Nose taught zoom-in-response-to-user and Shiritani taught all other zoom details.

This habit – never revising a position, instead always piling on new stuff – is common practice by both Examiners and Applicants. I certainly appreciate it when the Examiner specifically responds to my arguments, but prefer that the Examiner do so by updating the rejection to take my arguments into account. If the Examiner instead reiterates the errored rejection then provides new information in a "Response to Arguments" section  – as he did here  – then the Applicant has two choices. One, file a response that goes point-by-point to address each contested Examiner statement as a separate argument. Alternatively, the Applicant could synthesize the total of all the Examiner's findings, resolving any internal contradictions, and make a coherent argument against this synthesized rejection.

Most Applicants take the first approach, even though it results in a disjointed argument – and IMHO a disjointed argument is by definition weaker than one that is coherently presented. I imagine there are a variety of reasons why Applicants don't incorporate multiple (and sometimes contradictory) Examiner findings into a single "synthesized" rejection. One, the Examiner contradicting himself is a good thing, right – highlight the contradiction and characterize it as error. Two, the Applicant's job is only to traverse the specific rejection on the record. I have a different viewpoint. As far as I know, an internal inconsistency or contradiction in a rejection isn't fatal error, so I don't see this as a strong argument. Moreover, assuming I'm confident about the "synthesized" rejection,* I am addressing the rejection on the record –I'm just doing a better job of explaining it than the Examiner did.

*I limit this "synthesized rejection" approach to instances where I am confident that I can resolve the internal contradictions/inconsistencies in the rejection. Ex parte Bhatt seems like a good candidate.

PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject Matter

Takeaway: The PTAB reversed an Examiner's rejection under 35 U.S.C. § 101 of claims to a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services. In part, the PTAB focused on the specific limitations of the claims to find that the claims do not preempt the abstract idea as defined by the Examiner. (Ex parte Barous, Appeal No. 2016-003320, PTAB, August 1, 2016).

Details:
Ex parte Barous
Appeal 2016-003320; Application No. 10/397,778; Technology Center 3600
Decided: August 1, 2016

In Ex parte Barous, the PTAB reversed an Examiner’s rejection of claims that recited utilizing a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services  under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

The PTAB identified claims 14 and 43 as being representative of the claimed subject matter:

14. A system for distributing third-party coupons by a retailer on the Internet, the Internet including a computer with a monitor and a printer, the third-party coupons being associated with goods or services of a third-party retailer, which goods or services are unrelated to the goods or services of the retailer and wherein the third-party retailer purchases advertising from the retailer, the system comprising:

a server configured to:

cause a graphical user interface (GUI) to be displayed on the monitor;

display an advertisement associated with a third-party coupon of the third-party retailer;

display a threshold value in the GUI;

calculate a value of a transaction based on a purchase of goods or services made from the retailer by a consumer;

display the value of the transaction in the GUI; and

enable the computer to print the third-party coupon when the value of the transaction exceeds the threshold value;

wherein the third-party coupon is redeemable for the goods or services of the third-party
retailer; and

wherein goods or services of the third-party retailer are unrelated to the goods or services sold by the retailer and therefore are unpurchaseable from the retailer.

43. A checkout system for a retail outlet for distributing third- party discount coupons associated with one or more third-party retailers comprising:

a printer; and

a point-of-sale register having a processor configured to:

add prices of items purchased by a shopper to reach a total sale ST;

compare the total sale ST of the shopper to a threshold sale value T; and

print one or more third-party coupons for use with a respective third-party retailer to purchase goods or services unrelated to the goods or services offered by the retail outlet if the total sale ST of the shopper exceeds the threshold sale value T.

 

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue, and the Appellant did not dispute the Examiner's characterization.  However, during its analysis, the PTAB disagreed with the Examiner and found that the Examiner's characterization of the abstract idea as being too broad.  Instead, the PTAB found that the claims were directed to "much more limited systems and methods distributing only coupons redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions."

Regarding step two, the Examiner stated "[t]he steps or acts performed (utilizing a processor) in independent method claims 27 and 50 are not enough to qualify as 'significantly more' than the abstract idea itself, since the claims are a mere instruction to apply the abstract idea. Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional."  The Appellant argued that, in the prior art, retailers commonly distributed coupons to enhance sales of goods or services provided by the retailer.  The Appellant contrasted the prior art with the claimed invention by stating the claimed subject matter:

entails systems and methods that enable a retailer to distribute coupons in a different way. For example, the retailer's point- of-sale (POS) register distributes a so-called third-party coupon that is redeemable for a discount on the goods or services sold by some other retailer. These goods or services of the third- party retailer are unrelated to the goods or services offered by the retailer distributing the coupon. The retailer's POS register is configured to print this coupon for a shopper when the register determines that the value of the goods or services purchased by the shopper from the retailer exceeds a threshold value. This enhances the retailer's revenue because the shopper increases his or her purchase from the retailer in order to receive discount coupons for a third-party retailer.

 

The Appellant further argued that the claims meet the specific threshold set forth in step two because the claims "add specific limitations to what is known in the art" because:

[i]t is unconventional for a retailer's POS register to print a coupon for the purchase of a third-party retailer's unrelated goods or services. It is especially unconventional for the retailer's POS register to condition doing this on a shopper's total purchase from the retailer exceeding a certain threshold sale value. None of this is routine or well understood. In fact, twelve years of prosecution reveals that nothing in the prior art teaches these additional features or even renders them obvious. Nothing of record demonstrates that this sort of activity has ever been previously engaged in by those in the field.

 

In its analysis, the PTAB relied upon the specific limitations of the claims to find that the claims do not preempt the "abstract idea" as defined by the Examiner.  To support this conclusion, the PTAB related upon the 2014 Interim Guidance on Patent Subject Matter Eligibility to identify that “specific limitations other than what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application” qualify under the "significantly more" exception of step two.  The PTAB went on to state that these guidelines require that if an Examiner decides the limitations do not add "significantly more" to the claim, the Examiner must identify the limitations and explanations provided as to why this is the case.  The PTAB found that the Examiner failed to provide persuasive arguments or evidence as to why the limitations were not "significantly more" (i.e., the argument “are generic computer functions (e.g. adding, comparing and printing) that are well-understood, routine and conventional activities previously known to the industry” did not suffice.)

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter finding that the claims did add "significantly more" to the abstract idea.

My two cents:  Appellants may look to contrast specific limitations within the claim with the prior art to illustrate that those claims limitations add "significantly more" to the alleged abstract idea.  Additionally, these types of limitations may be utilized to argue that the claimed subject matter is an "unconventional" arrangement of elements.

PTAB Reverses Examiner’s Patent-Ineligible Subject Matter Rejection of Method Claims for Using Multi-Pixels Spectral Images to Identify Microorganisms

Takeaway: The PTAB reversed an Examiner's rejection of claims for utilizing multi-pixel spectral images to identify microorganisms under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.  In part, the PTAB focused on the practical application of the claimed subject matter to find that the claims do not preempt the abstract idea or any natural law.  (Ex parte Ismail, Appeal No. 2014-005477, PTAB, July 1, 2016).

Ex parte Ismail
Appeal 2014-005477; Application No. 11/630,856; Technology Center 1600

Decided: July 1, 2016

Details:  In Ex parte Ismail, the PTAB reversed an Examiner’s rejection of claims for using multi-pixels spectral images to identify microorganisms under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

Claim 1, which is representative of the claimed subject matter, recites:

1. A method for characterizing a microorganism said method comprising:

a) obtaining at least one multi-pixels spectral image of a sample of said microorganism, wherein each pixel of said multi-pixels spectral image has a corresponding spectrum;

b) selecting one or more spectra from said multi-pixels spectral image, wherein said selecting is based on one or more spectral characteristics of said corresponding spectrum; and

c) identifying said microorganism by comparing said one or more selected spectra with spectra of reference microorganisms from a database to determine an identity of said microorganism.

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of data manipulation.  More specifically, the Examiner found that the claims recite “methods for characterizing a microorganism by determining an identity of an organism” through “empirical and data analysis and acquisition steps [that] are well-understood, conventional, and routine in diagnosing imaging microorganisms.”   Additionally, the Examiner found “there is no clear-cut practical application of the objective of the claim” and thus concludes the claims are drawn to a patent-ineligible “law of nature/natural principle.”  The Examiner then went on to find that the claims “recite neither a physical transformation nor a critical tie of a significant step to a particular machine.”

The PTAB agreed with the Appellant in finding that the Examiner did not persuasively show that the claims, considered in their entirety, are limited to an abstract idea or natural principle. For example the Appellants argued that the claim limitations of claim 1 require obtaining a multi-pixels spectral image of a sample and then selecting a spectra from that image based on its spectral characteristics.  Additionally, the claim limitations required that selected spectral data of the sample be compared with spectral data of reference microorganisms in a database to identify the sample microorganism.  The Appellants argued that these limitations tied the claim to a particular machine and that comparing spectra from pixels of the image with spectra from a database is not merely a mental process as argued by the Examiner.  For instance, the Examiner argued that the “body of independent claim 1 relies on image data analysis of image data … [that] may be interpreted to be obtained empirically.”  However, the PTAB found that the Examiner did not adequately explain this contention to find that the claimed subject matter was not an abstract idea under step one of the Alice/Mayo framework.

The PTAB then addressed the claimed subject matter under step two of the Alice/Mayo framework (whether the claimed subject matter includes an “inventive concept”).  Similar to the findings with respect to step one, the PTAB was unconvinced that the Examiner set forth reasoning that the “steps recited in the claims are so conventional and routine that the claims, in their entirety, lack any inventive concept.” For this portion, the PTAB seemed to focus on whether the claims would wholly preempt “access to the building block itself.” More specifically, the PTAB stated that “the Examiner has not persuasively demonstrated that the claim elements here add nothing of substance such that the claims stand to preempt any law of nature or abstract idea alone.”  In contrast, the PTAB found that “the rejected claims include multiple steps directed to a practical application of a particular type of spectral-image analysis.”

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter.

My two cents:  In line with the decision in BASCOM, the PTAB and courts are starting to focus on whether the claims are directed to a practical application of the alleged abstract idea or whether the claims encompass the abstract idea (and thus preempt that abstract idea).  Applicants may wish to utilize these type of arguments, as it appears that some decisions are relying on the practical application aspect of the claimed subject matter.