Ex parte Chan

Board of Patent Appeals and Interferences

Feb 15, 2000

08653978 (B.P.A.I. Feb. 15, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALLEN M. CHAN
____________
Appeal No. 1997-4452
Application No. 08/653,978
____________
ON BRIEF
____________
Before JERRY SMITH, DIXON, and FRAHM, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-31,
which are all of the claims pending in this application.
We REVERSE.
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BACKGROUND
The appellant's invention relates to an anti-aliasing apparatus and method with
automatic snap fit of horizontal and vertical edges of the image to target grid. The method
of the invention downwardly scales outline data to the desired scale, then snap fits the
horizontal and vertical edges of the image to the target grid. The fitted outline of the image
is then upwardly scaled to an integer multiple of the desired grid. The upwardly scaled
outline is then processed into a bitmap and the bitmap is then scaled down to the desired
grid with anti-aliasing. An understanding of the invention can be derived from a reading of
exemplary claim 15, which is reproduced below.
15. An [sic] computer image rendition method for rendering a bit-
mapped image having anti-aliasing effects onto a target grid from a supplied
set of plot instructions stored in memory for an image wherein the plot
instructions define a plotting of an ideal outline of the image to be rendered,
said method including the steps of:
forming target outline data defining a first plot of the ideal outline, scaled
and grid fitted onto a target grid, and
forming mezzanine outline data defining a second plot of the desired
outline, upwardly scaled from the target outline data onto a mezzanine grid,
wherein plural grid boxes of the mezzanine grid tile perfectly into each grid
box of the target grid.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Kang 5,270,836 Dec. 14, 1993
Hassett et al. (Hassett) 5,301,267 Apr. 05, 1994
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Claim 15 stands rejected under 35 U.S.C. § 102 as being unpatentable over
Hassett. Claims 1-14 and 16-31 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hassett in view of Kang.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 19, mailed May 23, 1997) for the examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 18, filed Feb. 3, 1997) and reply brief
(Paper No. 20, filed Jul. 23, 1997) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 102
Appellant argues that the answer does not address the claim limitation with respect
to “forming mezzanine outline data defining a second plot of the desired outline, upwardly
scaled from the target outline data onto a mezzanine grid . . .” as it relates to a showing of
anticipation. (See reply brief at pages 2-4.) We agree with appellant. The examiner
maintains the rejection and uses the terms “obviousness and triviality” along with “level of
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skill.” (See answer at page 7.) These are not considerations in a rejection based upon
anticipation. Therefore, the examiner’s rejection under 35 U.S.C. § 102 is deficient and
the examiner has not provided a prima facie case of anticipation. Therefore, we will not
sustain the rejection of claim 15.
35 U.S.C. § 103
Appellant argues that the rejection is “based upon a conclusory allegation that is
without any factual support.” (See reply brief at page 5.) We agree with appellant. The
examiner maintains that “[i]t would have been obvious to one having ordinary skill in the art
at the time the invention was made to use the intermediate resolution method of Kang to fill
the outline data of Hassett et al. in order to produce a filled character
whose edge is aligned on a grid representing the display space.” (Answer, page 5). In our
view, this is merely a conclusion which the examiner has not supported with any underlying
line of reasoning for combining the outline-based processing of Hassett with the bit-
mapped based processing of Kang. The examiner has not provided any convincing
rationale of performing a portion of the bitmap processing involving upscaling the image
while the image is still in the format of the outline as taught by Hassett. The examiner
“relies on a reasonable standard of knowledge and ability of
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one of ordinary skill in the art to show the obviousness and triviality of the various
conversions between resolutions.” (See answer at pages 7-8.) Furthermore, the examiner
maintains that the claim limitations not specifically addressed by the examiner “either (1)
are inherent in the references or (2) were well-known to one of ordinary skill in the art
having the ability to interpret the references.” (See answer at page 8.) We disagree with
the examiner. For example, the examiner states that the Kang discloses “mezzanine
outline data (intermediate resolution input image -- column 3, line 3)” (answer, page 4).
We disagree with the examiner. The “intermediate resolution input image” described in
Kang is a bitmap image rather than an outline as the examiner maintains. (See Kang col.
1, line 2 and figures 1-5.) The examiner has indiscriminately combined various portions of
different teachings without providing a line of reasoning why the skilled artisan would have
performed the portion of bit-mapped processing while still in the outline format rather than
in the bitmap format as taught by Kang.
When it is necessary to select elements of various teachings in order to form the
claimed invention, we ascertain whether there is any suggestion or motivation in the prior
art to make the selection made by the appellants. Obviousness cannot be established by
combining the teachings of the prior art to produce the claimed invention, absent some
teaching, suggestion or incentive supporting the combination. The extent to which such
suggestion must be explicit in, or may be fairly inferred from, the references, is decided on
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the facts of each case, in light of the prior art and its relationship to the appellants'
invention. As in all determinations under 35 U.S.C.
§ 103, the decision maker must bring judgment to bear. It is impermissible, however,
simply to engage in a hindsight reconstruction of the claimed invention, using the
appellants' structure as a template and selecting elements from references to fill the gaps.
The references themselves must provide some teaching whereby the appellants'
combination would have been obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991) (citations omitted). That is, something in the prior art as a
whole must suggest the desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992); Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730
F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984). In determining
obviousness/nonobviousness, an invention must be considered "as a whole," 35 U.S.C. §
103, and claims must be considered in their entirety. Medtronic, Inc. v. Cardiac
Pacemakers, Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983). Since the
limitation that mezzanine outline data defining a second plot of the desired outline is
formed wherein the desired outline is upwardly scaled from the target outline data onto a
mezzanine grid is not taught or suggested by the applied prior art, we will not sustain the
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35 U.S.C. § 103 rejection of independent claims 1, 6, 11, 16 and 24, and of dependent
claims 2-5, 7-10, 12-14, 17- 23 and 25-31.
CONCLUSION
To summarize, the decision of the examiner to reject claim 15 under 35 U.S.C.
§ 102 is reversed, and the decision to reject claims 1-14 and 16-31 under 35 U.S.C.
§ 103 is reversed .
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERIC FRAHM )
Administrative Patent Judge )
vsh
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