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: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."
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 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.
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.The Board agreed with the Applicant that the Examiner's reliance on Nose was in error.
(Emphasis in original.)
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.
"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."
ReplyDeleteThe Board got it right. I get a ton of these "Neither reference shows the feature, but when you combine them the combination magically results in the feature being there" rejections. Those rejections are complete bullshirt.
Interesting. Hadn't considered this.
DeleteI haven't looked at the case law regarding new grounds recently. But a switch from relying solely/individually on primary ref for element A to relying on combination for element A certainly *should* be a new ground.
But new grounds isn't implicated when the Examiner adds new information to further explain the rejection, even when this new information contradicts the old information?
Here's a typical scenario I see in lots of OA's. Got one just recently. Claim recites apparatus comprising: A; B; C; D; and E. Rejection is 103 Ref 1 in view of Ref 2. OA alleges Ref 1 discloses A, B, C, and D, acknowledges it doesn't disclose E, alleges that Ref 2 discloses E, concludes obviousness.
DeleteI respond without amending the claim. Point out why Ref 1 doesn't show B. In other words, I call bullshirt on the examiner. The examiner comes back and goes, "Okay, you got me. Ref 1 doesn't show B. But now I'm interpreting col. X, lines Y-Z of Ref 2 to show B, and I'm still concluding it's obvious, so final rejection.
That's bullshirt. It's a new ground of rejection, and one that I have a right to respond to. But examiners know that the chances of being petitioned are very low, and even if the applicant does petition the useless, know nothing, do nothing, overpaid, underworked, brain dead, QAS or SPRE or SPE who is designated to decide the petition, and has ZERO understanding of the case law, is gonna say, "Heh, heh, still 103 Ref 1 in view of Ref 2. Looks like same ground of rejection to me. Ain't we so clever here at the PTO. Heh, heh."
That's why examiners do it. Because they can, and because they know they can get away with it. And because they have their bags all packed and are just waiting for the first class tickets to the RCE gravy train.
" 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."
ReplyDeleteExaminers don't do that because they worry, rightly, that they are opening themselves up to an argument that the rejection is a new grounds. Which it would be.
I didn’t get a chance to look through all the application and the cited art, but I believe the Applicant is correct.
ReplyDeleteThe Applicant argued “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”.
If I were the Applicant I would have argued MPEP 2143.02 Reasonable Expectation of Success is Required “A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
And/or, “if proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)
And/Or, “if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959)
etc.
The change suggested by the Examiner would have could have fundamentally changed the cited art IMO.
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.
ReplyDeleteExaminer inconsistency should always be argued. If the Examiner cannot get the facts straight (while using Applicant's claimed invention as a blueprint), how can one having ordinary skill in the art arrive at the claimed invention with inconsistent teachings?
Agreed. I always note when the examiner gets a/the fact/s wrong. If any fact is wrong, the legal conclusion which is based on it has to be wrong also.
DeleteI agree with making "The examiner got the facts wrong" as part of a traversal.
DeleteBut I'm not sure that's what was going on here. Here, the Examiner was inconsistent in explaining what reference was relied on for which claim element. I don't see that as an instance of "getting the facts wrong."
If the Examiner said "Col. 1 lines 1-10 of Ref A" teach a concentration of 50 ppm, and the cited portion taught 500 ppm, well, that's getting the facts wrong.
If the Examiner used "Col. 1 teaches 50 ppm" for teaching part of the claim and later said "[a different] Col. teaches 500 ppm" for teaching another part of the claim connected to the first ... that's an inconsistency worth arguing about.
What happened here, in my view, is different.
"I don't see that as an instance of 'getting the facts wrong.'"
DeleteWhen the examiner, in response to arguments from applicant, constantly changes the "evidence" that supposedly establishes the existence of a particular claim feature, that is an "error," or at least an "inconsistency" that is worth noting. As the standard is a preponderance, the examiner's inability to "settle" or "decide" on what evidence is supposed to "establish" the fact as more likely than not goes along way to persuasively arguing that the standard of proof hasn't been met.
>Examiner's inability to "settle" or "decide"
Delete>on what evidence is supposed to "establish"
>the fact as more likely than not goes along
>way to persuasively arguing that the standard
>of proof hasn't been met.
Ah, gotcha.
Think I'd make that connection -- Examiner switching positions is an indicator that he hasn't met standard of proof -- explicit in my argument. As opposed to simply arguing "inconsistency is Examiner error."
Got it, aaa. We'll add "harmless error" to the list of things you don't know about patent law. Plus, you only said "preponderance" once. You feel ok?
DeleteSo, TP, you're saying that the Examiner's inconsistency (switching positions) is *harmless* error, even if it's error?
DeleteI dunno that I agree that it's "harmless." The Examiner's actions (e.g., inconsistency in explaining what reference was relied on for which claim element) certainly complicate and prolong prosecution. But I don't recall the meaning of "harmless error" as discussed in case law.
OTOH, it wasn't *fatal* error, since it was clear from the Reply Brief that Applicant understood the Examiner's new position. Where the Applicant went wrong was in making the Reply Brief argument about the inconsistency, rather than rebutting the newly explained combination with something like unsatisfactory-for-intended-purpose in change-in-principle-of-operation.
"So, TP, you're saying that the Examiner's inconsistency (switching positions) is *harmless* error, even if it's error?"
DeleteHuh? An erroneous finding of fact might or might not affect the legal conclusion of obviousness. If it does not, it's harmless error.
I only read as far as aaa's bold new postulate that "If any fact is wrong, the legal conclusion which is based on it has to be wrong also." Where he went from there, who knows. Who cares?
By the way, preponderance.
Who cares?
DeleteIDK. You cared enough to crawl out from under your rock and comment.
So a correct factual finding that all of the claimed features are in the prior art is nonessential to a correct conclusion of obviousness? That's an interesting theory. It's wrong, but at least it explains why you're gittin' counters instead of practicing law.
Clearly I wasn't talking about the "harmless errors" the BPAI typically waves its hands at, e.g. forgetting to include a claim or reference in the statement of rejection. So let's add context to the list of things that Topce, or whatever sock puppet he's using this week, doesn't know. About anything.
a partial list . . .
Deletepreponderance
allegation of fact
substantial evidence
traverse
Rule 105
preponderance
Star Fruits
Fed. Cir. panel decisions v. precedents
preponderance
principal
Official Notice (not 100% sure should be on list)
preponderance
harmless error