Ex Parte Dowdy

Board of Patent Appeals and Interferences

Jan 30, 2004

08906648 (B.P.A.I. Jan. 30, 2004)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS E. DOWDY
__________
Appeal No. 2002-1606
Application No. 08906,648
__________
ON BRIEF
__________
Before RUGGIERO, DIXON, and GROSS, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-17, which are all of the claims pending in the present
application. An amendment filed May 3, 1999 after final
rejection was denied entry by the Examiner.
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Application No. 08/906,648
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The claimed invention relates to providing transparent
compatibility and adaptation to differing format implementations
in a computer system. According to Appellant (Specification,
page 4), new formats are included in a computer system while
maintaining compatibility with applications implementing old
formats.
Representative claims 1 and 12 are reproduced as follows:
1. A method for providing transparent compatibility and
adaptation to differing format implementations in a computer
system, the method comprising the steps of:
providing a first format in a device list, the first
format compatible with a format for an application program;
accessing the first format from the device list by the
application program to allow data input in the first format
from the application program;
providing a second format, the second format compatible
with a format for an output device; and
transforming inputs from the application program from
the first format to the second format for output on the
output device to provide compatibility between the
application program and the output device without
substantially altering the application program.
12. A system for improving compatibility between an
application program and a display device of a computer
system, the system comprising:
a CPU;
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at least one real frame buffer coupled to the CPU and
to the display device, the at least one real frame buffer
having a first format compatible with the display device;
and
at least one alternate frame buffer coupled to the at
least one real frame buffer and the CPU, the at least one
alternate frame buffer having a second format compatible
with the application program and being provided in a device
list for access by the application program, wherein the CPU
controls transformations from the second format to the first
format transparently to the application program to allow
output to the display device from the at least one real
frame buffer.

The Examiner relies on the following prior art:
Van Vliet et al. (Van Vliet) 4,439,762 Mar. 27, 1984
Howard et al. (Howard) 5,625,386 Apr. 29, 1997
(filed Sep. 30, 1994)
Claims 1-17, all of the appealed claims stand finally
rejected under 35 U.S.C. § 103(a) as being unpatentable over Van
Vliet in view of Howard.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 19) and the
Answer (Paper No. 20) for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
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Application No. 08/906,648
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consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims
1-11 and 17. We reach the opposite conclusion with respect to
claims 12-16. Accordingly, we affirm-in-part.
Appellant’s arguments in response to the Examiner’s
rejection of the appealed claims are organized according to a
suggested grouping of claims indicated at page 5 of the Brief.
We will consider the appealed claims separately only to the
extent separate arguments for patentability are presented. Any
dependent claim not separately argued will stand or fall with its
base claim. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983).
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out
a prima facie case of obviousness. If that burden is met, the
Appeal No. 2002-1606
Application No. 08/906,648
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burden of going forward then shifts to Appellant to overcome the
prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986);
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
With respect to independent claim 1, the representative
claim for Appellant’s first suggested grouping (including claims
1-11), after reviewing the Examiner’s analysis (Answer, pages 3
and 4), it is our view that such analysis points out the
teachings of the Van Vliet and Howard references, reasonably
indicates the perceived differences between this prior art and
the claimed invention, and provides reasons as to how and why the
prior art teachings would have been modified and/or combined to
arrive at the claimed invention. In our opinion, the Examiner's
analysis is sufficiently reasonable that we find that the
Examiner has at least satisfied the burden of presenting a prima
facie case of obviousness. The burden is, therefore, upon
Appellant to come forward with evidence and/or arguments which
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persuasively rebut the Examiner’s prima facie case of
obviousness. Only those arguments actually made by Appellant
have been considered in this decision. Arguments which Appellant
could have made but chose not to make in the Brief have not been
considered [see 37 CFR § 1.192(a)].
Appellant’s arguments (Brief, pages 11 and 12) in response
to the Examiner’s obviousness rejection of representative claim
1, rather than attacking the combinability of the Van Vliet and
Howard references, instead focus on the alleged deficiencies of
the references in disclosing a key feature of the appealed
claims, i.e., the transformation of application program inputs
from a first format to a second format for output on a display
device. In particular, Appellant asserts (id.) that Howard
merely discloses two buffers which store and present data to a
display in one format.
After careful review of the applied prior art references in
light of the arguments of record, we are in general agreement
with the Examiner’s position as stated in the Answer. In
particular, our interpretation of the disclosure of Howard
generally coincides with that of the Examiner, i.e., in contrast
to Appellant’s assertions, the interleaved format data presented
to the video controller 330 of the output display 335 is clearly
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in a different format from the application program data stored in
either of the individual buffers 342 and 344. Further, contrary
to Appellant’s contention (Brief, page 11) that the differing
buffer transfer rates in Howard are “ . . . irrelevant to any
transformation,” it is our view that, as alluded to by the
Examiner (Answer, pages 6 and 7), it is precisely these different
transfer rates (Howard, Figures 5A through 6B) that give rise to
a transformation of the buffer data to an interleaved format for
presentation to the output display. Further, we find no error,
and Appellant has pointed to none, in the Examiner’s stated
rationale for combining Van Vliet with Howard since, in our view,
the data transformation technique described by Howard provides a
clear suggestion to the skilled artisan of an obvious enhancement
to the high and low resolution display system of Van Vliet.
We also note that our review of the disclosure in Van Vliet
also reveals that the Examiner’s 35 U.S.C. § 103(a) rejection of
representative claim 1 is sustainable based on Van Vliet alone.
In our opinion, the description in Van Vliet reveals a disclosure
which can reasonably be interpreted as providing application data
in a first format (low resolution buffer 18) which is transformed
into data in a second format when combined with data in high
resolution buffer 32 for presentation to output display 24. As
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discussed, for example, at column 3, line 47 et seq. in Van
Vliet, the use of the high resolution buffer 32 provides
additional address code information, i.e. sequential numbers
corresponding to first and second blocks of address codes, a
format which, in our view, can reasonably be interpreted as being
in a different format than numbers output from low resolution
memory 18 which use a single address code block.
In view of the above discussion and analysis, it is our
opinion that the Van Vliet reference alone discloses all of the
limitations of appealed representative claim 1. A disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the
epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529,
220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson,
494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974). Therefore,
since the Examiner’s prima facie case of obviousness has not been
overcome by any convincing arguments from Appellant, we sustain
the Examiner’s 35 U.S.C. § 103(a) rejection of representative
claim 1, as well as claims 2-11 which fall with claim 1.
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Application No. 08/906,648
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Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 17, we also sustain the Examiner’s
obviousness rejection of this claim based on Van Vliet alone.
Although Appellant has grouped claim 17 separately, Appellant’s
arguments rely on assertions previously made with regard to the
alleged lack of transformation of data in the applied prior art
references, an argument we found to be unpersuasive as discussed
supra.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 12-16, we note that while we found
Appellant’s arguments to be unpersuasive with respect to the
obviousness rejection of claims 1-11 and 17, we reach the
opposite conclusion with respect to claims 12-16. In contrast to
independent claims 1 and 17 previously discussed which broadly
recite data transformation from an application input first format
to an output display second format, claims 12-16 require the
transformation of data from a first format in one frame buffer to
a second format in a second frame buffer. Our review of the
descriptions in Van Vliet and Howard reveals no teaching or
suggestion, either individually or collectively, which would
satisfy this claimed requirement.
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With regard to Van Vliet, while, in our view, the combined
data from the low and high resolution memories 18 and 32 when
presented to display 24 is in a different format than the data in
either of the individual memories 18 and 32, there is no
transformation of data in one format in a first memory, i.e., low
resolution memory 18, to a second format in a second memory,
i.e., high resolution memory 32. In other words, the format of
the data in the individual memories 18 and 32 in Van Vliet is the
same and no buffer to buffer transformation takes place as
claimed. Similarly, in Howard, while the interleaving of data
read out from the two buffers 342 and 344 results in an
interleaved format of data presented to video controller 330, the
data in first format in buffer 342 is not transformed into a
second format in buffer 344. Accordingly, since all of the
claimed limitations are not taught or suggested by the applied
prior art references, the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 12-16 is not sustained.
In summary, we have sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 1-11 and 17, but have not sustained
the 35 U.S.C. § 103(a) rejection of claims 12-16. Therefore, the
Examiner’s decision rejecting claims 1-17 is affirmed-in-part.
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Application No. 08/906,648
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART

Joseph F. Ruggiero )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joseph L. Dixon )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Anita Pellman Gross )
Administrative Patent Judge )
JFR/jlb

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Application No. 08/906,648
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