Ex Parte Ahmed

Board of Patent Appeals and Interferences

Feb 11, 2008

09526442 (B.P.A.I. Feb. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAMRAN AHMED
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Appeal 2007-2765
Application 09/526,442
Technology Center 2600
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Decided: February 11, 2008
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Before MAHSHID D. SAADAT, SCOTT R. BOALICK,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-7, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-2765
Application 09/526,442

Appellant invented a method and apparatus for controlling a single
graphic controller system with a single memory subsystem. The method
provides for displaying outputs for at least two display devices and
controlling surface selection, conversion, combination, and scaling of the
output image (Specification 2).
Independent Claim 1 is exemplary and reads as follows:
1. A method of providing a display output for at least two display
devices using a single graphic controller system, the method comprising:

providing a first display controller able to read from a graphics
memory at least two first surfaces into at least two pixel paths, convert at
least one of the at least two first surfaces, scale at least one of the at least
two first surfaces, and at least one of blend and overlay the at least two first
surfaces, said first surfaces containing any one of RGB and YUV format
video;

providing a second display controller able to read from a graphics
memory at least two second surfaces into at least two pixel paths, convert at
least one of the at least two second surfaces, scale at least one of the at least
two second surfaces, and at least one of blend and overlay the at least two
second surfaces, said second surfaces containing any one of RGB and YUV
format video;

causing said first display controller to select and read said first
surfaces, convert said first surfaces into a like first format at least when said
first surfaces are not all in said like first format, scaling at least one of said
first surfaces, at least one of blending and overlaying said first surfaces to
obtain a combined first surface, and outputting said combined first surface to
provide a first output stream of pixel data;

causing said second display controller to select and read said second
surfaces, convert said second surfaces into a like second format at least when
said second surfaces are not in said like second format, scaling at least one
of said second surfaces, at least one of blending and overlaying said second
surfaces to obtain a combined second surface, and outputting said combined
second surface to provide a second output stream of pixel data,
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Application 09/526,442

whereby flexibility is provided by selection of said first and second
surfaces as well as scaling and blending of said first and second surfaces,
whether said surfaces are in RGB format, YUV format or mixed RGB/YUV
format.

The Examiner relies on the following prior art in rejecting the claims:
Ranganathan US 5,764,201 Jun. 9, 1998
Claims 1-7 stand rejected under the first paragraph of 35 U.S.C. § 112
as containing subject matter which was not described in the Specification in
such a way as to reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession of the claimed
invention.
Claim 1 stands rejected as being unpatentable under 35 U.S.C.
§ 103(a) over Ranganathan.
Rather than repeat the arguments here, we make reference to the
Briefs (Appeal Brief, filed Aug. 13, 2003; Reply Brief, filed Mar. 29, 2004;
Suppl. Reply Brief, filed Oct. 11, 2005) and the Answer (mailed May 22,
2006) for the respective positions of the Appellant and the Examiner.
We reverse.

ISSUES
The first issue on appeal turns on whether under the first paragraph of
35 U.S.C. § 112 the Specification, as originally filed, supports blending and
overlaying the first and second surfaces and whether the May 13, 2003
amendment made to the Specification constitutes new matter. The second
issue is whether a preponderance of the evidence before us shows that under
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35 U.S.C. § 103, the teachings of Ranganathan and its modifications, as
proposed by the Examiner, teach or suggest the claimed subject matter.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issues involved
in the appeal and are believed to be supported by a preponderance of the
evidence.
1. Appellant’s Specification states:
At the same time a computer environment desktop is stored in
RGB format in another surface within graphics memory. These two
surfaces can be combined to provide the YUV source within a
window on the desktop. (Specification 1:19-22).

2. Ranganathan relates to graphics controllers for video display
systems which drive both a CRT and a flat-panel display (col. 1, ll. 14-16
and col. 3, ll. 20-21).
3. Ranganathan further discloses that two pixel muxes are used for
selecting graphics pixels from a first output or movie-overlay pixels from a
second output, which are coupled to each of the CRT and the flat-panel
display. Simultaneous control means causes the same image or different
images to be displayed on the displays. (Col. 3, ll. 20-58).
4. Ranganathan discloses that the pixels from the YUV path cause
a full-screen image to be displayed on the CRT while the RGB pixels are
displayed as a standard graphic image. The image cannot be a combination
of a smaller movie window on a graphics background unless additional logic
is added. (Col. 7, ll. 56-65).
5. Ranganathan also discloses that a television monitor rather than
a CRT monitor may be driven. Two different CRT monitors or two different
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flat-panel displays may be driven rather than one CRT and one flat-panel
display. With two identical monitors, twice the graphics area may be
displayed. (Col. 12, ll. 8-12).

PRINCIPLES OF LAW
Written Description
“The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required ‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). While there is no requirement that the claimed
invention be described in the identical wording that was used in the
Specification, there must be sufficient disclosure to show one of skill in this
art that the inventor “invented what is claimed.” See Union Oil Co. of
California v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000).
The written description must be of sufficient detail to show possession
of the full scope of the invention. Pandrol USA LP v. Airboss Railway
Products Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005).
Obviousness
The examiner bears the burden of establishing a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if this burden is met
does the burden of coming forward with rebuttal argument or evidence shift
to the applicant. Rijckaert, 9 F.3d at 1532.
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When the references cited by the examiner fail to establish a prima
facie case of obviousness, the rejection is improper and will be overturned.
In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). See also In re Zurko, 258
F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (reversing as unsupported by
substantial evidence a finding of motivation to combine cited references,
where the Board adopted Examiner's unsupported assertion that claim
limitation missing from cited references was “basic knowledge” and it
“would have been nothing more than good common sense” to combine the
references, and explaining that “[t]his assessment of basic knowledge and
common sense was not based on any evidence in the record”). Additionally,
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41 (quoting In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006)).
Further, a rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). See also In re Kahn, 441 F.3d at 988.

ANALYSIS
35 U.S.C. § 112 Rejection of Claims 1-7
With respect to the written description and new matter issues, the
Examiner takes the position that changing “combine (blend and/or overlay)
the at least two first surfaces” to “at least one of blend and overlay the at
least two first surfaces” has no support in the originally filed Specification
including the Specification incorporated by reference (Ans. 4). The
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Examiner asserts that neither the original nor the amended Specification
describes how the display controller is capable of blending and overlaying
two surfaces, as the originally filed Specification does not support doing
both at the same time (Ans. 5 and 10-17).
Appellant contends that the terms “blend” and “overlay” are common
terms in the art and are understood to mean merging two images and laying
one surface on top of another, respectively (Br. 6-7). Appellant further
argues that the Specification, including the material incorporated by
reference, describes how the drawing engine 60 in Figure 1 performs both
blending and overlaying (Br. 7-10).
The Examiner further argues that the disclosure also fails to show the
“other window or desktop, etc.” is an RGB display, as the originally filed
application only included widows desktop, which is more specific than the
proposed adding RGB desktop (Ans. 18-19). Appellant directs our attention
to the first page of the Specification and argues that the disclosure as a
whole implies that the RGB desktop is inherent to the Applicant’s
Specification (Reply Br. 6-8 and Supp. Reply Br. 5).
Upon a review of the arguments and the evidence of record, we find
Appellant’s arguments to be persuasive. The original disclosure remains
uncontested as having recited the feature of “blend and/or overlay” which
clearly includes both blend and overlay. As argued by Appellant, the change
to the current language of “at least one of blend and overlay” removes the
alternative language “or” while being within the bounds of the disclosed
invention. Additionally, the prior application that is incorporated by
reference shows the claimed features in Figure 4.
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Regarding the issue of whether the added Figure 4 shows an RGB
desktop, the background section of Appellant’s Specification addresses the
RGB format for storing images in a computer desktop environment which
can be combined with a YUV video source on the desktop (FF 1).
Reviewing the Specification in the context of the full scope of the claimed
invention, we find that while the Specification mentions “Windows desktop”
(see, e.g., Specification 6:11-16), the Specification generally refers to
desktops and CRTs for displaying images. Thus, contrary to the Examiner’s
assertion, upon reading Appellant’s disclosure a person of ordinary skill in
the art would be led to the conclusion that the controller would be able to
perform both blending and overlaying, and that the desktop is RGB while
not necessarily being a Windows desktop according to the claimed
invention.
As there is sufficient disclosure in Appellant’s Specification with
respect to the blending and overlaying the surfaces and with respect to an
RGB desktop, we find that the newly added limitation requiring “at least one
of blend and overlay the at least two first surfaces” represents a disclosed
feature within the scope of the claimed and disclosed invention that
represents no new matter. While the Examiner asserts that such limitation
was not supported by the originally filed Specification including “combine
(blend and/or overlay)” feature, the totality of the evidence of record
supports the opposite position. In our opinion, a person of ordinary skill in
the art would recognize that the meaning of “at least one of blend and
overlay the at least two first surfaces” coincides with that of “combine
(blend and/or overlay)”. Accordingly, we do not sustain the rejection of
claims 1-7 under 35 U.S.C. § 112, first paragraph, as containing subject
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matter which was not described in the Specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, had possession of the claimed invention.
35 U.S.C. § 103(a) Rejection of Claim 1
Appellant contends that in the dual-path graphics controller of
Ranganathan, both paths are coupled to a graphics memory and cannot
display a YUV format video overlayed on a desktop on one output while
displaying YUV format video in a window overlaid on a desktop on another
output device (Br. 11-13). Appellant further argues that Ranganathan does
not disclose or suggest adding a second display controller within a display
controller system wherein both controllers have blending and overlaying
capability of both YUV and RGB surfaces, even if additional logic is added
(Br. 13-14).
The Examiner relies on the disclosure of Ranganathan in columns 7
and 12 and asserts that teaching additional logic and driving two different
displays suggests the claimed first and second display controllers (Ans. 19-
20). The Examiner argues that the additional logic for the second controller
is nominal since the claim only requires blending or overlaying, not both,
which is shown in Ranganathan’s dual monitor display (Ans. 20-21).
Initially we note that, contrary to the Examiner’s position, the claim
can only require blending or overlaying, not both, and as discussed above
with respect to the § 112 rejection, each display controller combines the
surfaces by both blending and overlaying. Additionally, upon a review of
the applied prior art, we agree with Appellant and find that, by stating that
without additional logic the displayed image cannot be a combination of a
smaller movie window on a graphics background, Ranganathan fails to teach
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or suggest the claimed invention. As pointed out by Appellant (Reply Br. 8-
9; Suppl. Reply Br. 5), Ranganathan uses the existing paths to display two
different full screen images on two separate displays (FF 2-3). Ranganathan
clearly indicates that the displayed image cannot be a combination of a
smaller movie window on a graphic background using the existing
arrangement (FF 4). What the examiner characterizes as overlaying a movie
window onto graphics in Column 12 (Ans. 19), is correctly pointed out by
Appellant (Br. 13) to be limited to a suggestion for using the existing logic
or addition of extra logic (Ranganathan, col. 12, ll. 13-22). We do not find
convincing the Examiner’s line of reasoning that such additional logic
necessarily means a second display controller. As argued by Appellant (Br.
13-14), the Examiner’s suggestion for additional logic to be a second display
controller goes beyond the disclosure of the reference and, rather than any
evidence of record, finds its basis only in speculation (FF 4-5).
Therefore, we find that the Examiner’s rejection rests on speculation
and is supported by less than a preponderance of the evidence and thus, fails
to provide sufficient support for finding claim 1 unpatentable for
obviousness under 35 U.S.C. § 103(a) over Ranganathan.
DECISION
The decision of the Examiner rejecting claims 1-7 under 35 U.S.C.
§ 112 and claim 1 under 35 U.S.C. § 103 is reversed.
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REVERSED

eld

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