Ex Parte Fenney

Patent Trial and Appeal Board

Jun 16, 2017

13673872 (P.T.A.B. Jun. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/673,872 11/09/2012 Simon Fenney 070852.000150 1069
104840 7590 06/20/2017
Tmaainatinn Teohnnlnaies;
EXAMINER
3201 Scott Blvd.
Santa Clara, CA 95054
NGO, CHUONG D
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
06/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patlaw @ vory s. com
vmdeluc a @ vory s. com
rntisdale@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON FENNEY
Appeal 2017-002638
Application 13/673,872
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1—12, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest identified by Appellant is the Applicant,
Imagination Technologies Limited. App. Br. 1.
Appeal 2017-002638
Application 13/673,872
STATEMENT OF THE CASE
Appellant’s disclosed “[preferred embodiments . . . reduce the
number of data points stored to describe a polynomial curve by storing
control points to define the curve and then manipulating the control points
using arithmetic blocks to generate the polynomial coefficients.” Spec. 7.
Claim 1, which is illustrative, reads as follows:
1. A method for producing a representation of a
mathematical function in a non-transitory computer readable
storage medium, the representation being used to evaluate an
output of the mathematical function for an input value,
comprising:
receiving, in a processor, a mathematical function, for
which a representation is to be created;
producing, in the processor, for each interval of a plurality
of intervals over which the mathematical function may be
evaluated, a single spline control point, spline control points for
each of said plurality of intervals defining a polynomial of a pre­
determined order; and
storing said spline control points in said non-transitory
computer readable storage medium, whereby said stored spline
control points are used to evaluate the mathematical function for
a specific input value within an interval of said plurality of
intervals.
The Examiner relies on the following prior art in rejecting the claims
Duvanenko et al. US 5,951,625 Sept. 14, 1999
(“Duvanenko”)
Fenney US 8,285,768 B2 Oct. 9,2012
(“the ’768 Patent”)
2
Appeal 2017-002638
Application 13/673,872
Kenneth H. Carpenter, An introduction to interpolation and splines,
1—8 (Kansas State Univ., Dep’t of Elec. & Comput. Eng’g, Nov. 1999—Apr.
2004) https://www.ece.k-state.edu/people/faculty/carpenter/
documents/intsplpdf.pdf (“Carpenter”).
Claims 1—6 stand rejected under 35 U.S.C. § 112, second paragraph,2
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the applicant regards as the invention. See Final
Act. 3.
Claims 1—6 stand rejected for nonstatutory double patenting over
claims 1—8 of the ’768 Patent. See Final Act. 3^4.
Claims 1,2, and 10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Duvanenko. See Final Act. 4—5.
Claims 1 and 3—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carpenter. See Final Act. 5—6.
Claims 2 and 7—12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carpenter and Duvanenko. See Final Act. 6—7.
Rather than repeat the arguments here, we refer to the Briefs
(“App. Br.” filed Apr. 14, 2016; “Reply Br.” filed Dec. 5, 2016) and the
Specification (“Spec.” filed Nov. 9, 2012) for the positions of Appellant and
the Final Office Action (“Final Act.” mailed Nov. 2, 2015), and Examiner’s
Answer (“Ans.” mailed Oct. 3, 2016) for the reasoning, findings, and
conclusions of the Examiner. Only those arguments actually made by
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Feahy-Smith America Invents Act of 2011. See, e.g.,
Final Act. 2.
3
Appeal 2017-002638
Application 13/673,872
Appellant have been considered in this decision. Arguments that Appellant
did not make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
The issues presented by Appellant’s arguments are as follows:
Does the Examiner err in finding claim 1 is indefinite as to whether
each interval of the plurality of intervals produces a single spline control
point or a plurality of spline control points?
Does the Examiner err in finding claims 1—6 are not consonant with
claims that were restricted, but not elected, in the prosecution of the ’768
Patent?
Does the Examiner err in finding Duvanenko discloses “producing, . .
. for each interval of a plurality of intervals over which the mathematical
function may be evaluated, a single spline control point, spline control points
for each of said plurality of intervals defining a polynomial of a pre­
determined order,” as recited in claim 1 ?
Does the Examiner err in finding Carpenter teaches “producing, . . .
for each interval of a plurality of intervals over which the mathematical
function may be evaluated, a single spline control point, spline control points
for each of said plurality of intervals defining a polynomial of a pre­
determined order,” as recited in claim 1 ?
4
Appeal 2017-002638
Application 13/673,872
Does the Examiner articulate a prima facie case of obviousness of
claims 7—12?3
ANALYSIS
Rejection under 35 U.S.C. § 112, 2nd paragraph
During prosecution, “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Manual of Patent Examining
Procedure (MPEP) § 2173.05(e) (9thed. 2014, rev. 2015). Language in a
claim is unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention . . . ,” In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is “is amenable to
two or more plausible claim constructions . . . ,” Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential).
The USPTO is justified in using a lower threshold showing of
ambiguity to support a finding of indefmiteness under 35 U.S.C.
§ 112, second paragraph, [than that used in litigation] because the
applicant has an opportunity and a duty to amend the claims
during prosecution to more clearly and precisely define the metes
and bounds of the claimed invention and to more clearly and
precisely put the public on notice of the scope of the patent.
Id. at 1211-12.
Claim 1 recites “producing ... for each interval of a plurality of
intervals . . . , a single spline control point, spline control points for each of
said plurality of intervals defining a polynomial of a pre-determined order.”
The Examiner finds that “[i]t is although understood from the [Specification
that a single spline control point is produced for each interval,” the claim
3 Appellant’s arguments raise additional issues with respect to claims 7—12.
Because the identified issue is dispositive of the Appeal, we do not reach the
additional issues.
5
Appeal 2017-002638
Application 13/673,872
limitation is “indefinite as to whether a single spline control point is or a
plurality of spline control points are produced for each interval.” Ans. 7;
see also Final Act. 3.
Appellant contends the claim language is not indefinite because “the
Answer itself demonstrates that a person having skill in the art understand
what is meant by the claim language when the claim is read not in isolation,
but in light of the specification.” Reply Br. 2; see also App. Br. 5.
Appellant further argues
[t]he Answer simply alleges that the recitation is indefinite,
without providing any explanation of the reasons why it is
indefinite, and without explaining why reading the recitation in
light of the specification as it would be read by a person skilled
in the art (as it must be to determine the meaning of the claim)
would not inform the meaning of the claim.
Id. (emphases in original).
We are not persuaded by Appellant’s arguments. We find both of the
Examiner’s claim constructions to be plausible because it is unclear whether
the “spline control points for each of said plurality of intervals” includes (1)
a single produced spline control point, or (2) a plurality of produced spline
control points. For emphasis only, we note that claim 1 further recites
“spline control points for each of said plurality of intervals defining a
polynomial of a pre-determined order.” We further find it unclear whether
(1) each spline control point for each of the intervals defines a polynomial
(and therefore a separate polynomial for each spline control point), or (2) the
spline control points for each of the intervals collectively define a
polynomial (and therefore one polynomial for all spline control points).
Therefore, we agree with the Examiner claim 1 is “is amenable to two
or more plausible claim constructions,” Miyazaki, 89 USPQ2d at 1211, and
6
Appeal 2017-002638
Application 13/673,872
find the Examiner is “justified in requiring the [Appellant] to more precisely
define the metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. §112, second paragraph, as indefinite,” id.
Accordingly, the Examiner is justified in rejecting the claim as indefinite
under § 112, second paragraph, see id., and we sustain the rejection.
Rejection under Nonstatutory Double Patenting
In the grandparent application 11/140,258 (now the ’768 Patent) of
the instant application, the Examiner issued a restriction requirement
dividing the initial claims into two groups. Requirement for
Restriction/Election at 2, April 23, 2009. The Examiner found the first
group comprised “[c]laims 1—4 and 6—9, drawn to a method and apparatus
for storing data representing a mathematical function” and that the second
group comprised “[c]laims 11—34 and 46—59, drawn to a method and
apparatus for evaluating a mathematic function.” Id. It is uncontested
claims 1—4 and 6—9 were elected with traverse. App. Br. 6.
In the instant application, the Examiner rejects claims 1—6 on the
ground of nonstatutory double patenting over claims 1—8 of the ’768 Patent
(Final Act. 3) because “claims 1—6 are not the withdrawn claims or
substantially the same as the withdrawn claims in [the ’768 Patent, but are]
drawn to the invention elected in [the ’768 Patent]” {id. at 7).
Appellant contends the restriction requirement of the ’768 Patent was
traversed on the ground that the claims were not patentably distinct because
the search for the elected claims would entail a search for the non-elected
claims. App. Br. 8. Appellant further argues claim 1 maintains consonance
with the restriction requirement made in the ’768 Patent because claim 1 is
not directed to a method for storing data as recited by claim 1 of the ’768
7
Appeal 2017-002638
Application 13/673,872
Patent, but rather to a method for producing a representation of a
mathematical function, which comprises the step of “evaluating the function
for the input value.” Id.', see also Reply Br. 4.
We find Appellant’s arguments unpersuasive. Section 121 of title
35 U.S.C. recites:
A patent issuing on an application with respect to which a
requirement for restriction under this section has been made, or
on an application filed as a result of such a requirement, shall not
be used as a reference either in the Patent and Trademark Office
or in the courts against a divisional application or against the
original application or any patent issued on either of them, if the
divisional application is filed before the issuance of the patent on
the other application.
With regard to double patenting, § 121 will not apply to remove the parent
as a reference where the principle of consonance is violated:
Consonance requires that the line of demarcation between the
“independent and distinct inventions” that prompted the
restriction requirement be maintained. Though the claims may
be amended, they must not be so amended as to bring them back
over the line imposed in the restriction requirement. Where that
line is crossed the prohibition of the third sentence of Section 121
does not apply.
Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1579 (Fed. Cir.
1991) (citing Gerber Garment Technology, Inc. v. Lectra Systems, Inc.,
916 F.2d 683, 688 (Fed. Cir. 1990)). In order for consonance to exist, the
line of demarcation between the independent and distinct inventions
identified by the examiner in the requirement for restriction must be
maintained. Gerber, 916 F.2d at 688.
At the outset, we note although Appellant argues that the original
restriction requirement’s first group of claims was traversed in the ’768
8
Appeal 2017-002638
Application 13/673,872
Patent, no petition was ever filed to the Director to review the original
restriction requirement before the allowance of the elected first group of
claims. See 37 C.F.R. § 1.144. MPEP 818.01(c) recites:
The petition may be deferred until after final action on or
allowance of the claims to the elected invention. In any event,
the petition must not be filed later than the filing date of the
notice of appeal. If applicant does not distinctly and specifically
point out supposed errors in the restriction requirement, the
election should be treated as an election without traverse.
Further, we disagree that Appellant maintained a line of demarcation
consonant with the original restriction requirement and therefore are entitled
to the safe harbor under § 121. Evaluating a mathematical function is not
recited as an element of claim 1 and, instead, claim 1 recites storing spline
control points used to evaluate the mathematical function. Thus, the
evaluation could be viewed as merely a recitation of an intended use or
purpose in storing spline control points. Our reviewing court guides, “[a]n
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
The elected claims in the ’768 Patent and claim 1 are directed to
receiving a mathematical function, evaluating the mathematical function
with respect to spline control points, and storing the spline control points.
We find that in the present application, Appellant has not honored the line of
demarcation between the two original restriction groups in the application
that matured into the ’768 Patent, but instead has filed claims to the same
restriction group as that prosecuted in the ’768 Patent.
9
Appeal 2017-002638
Application 13/673,872
Accordingly, Appellant has not persuaded us the Examiner erred in
rejecting claims 1—6 on the ground of nonstatutory double patenting over
claims 1—8 of the ’768 Patent.
Rejection under 35 U.S.C. § 102(b)
Appellant contends the Examiner erred in finding Duvanenko
discloses a single spline control point for each interval, as recited in claim 1.
App. Br. 9—10. Appellant asserts Duvanenko discloses linear interpolation
between two values that are simultaneously accessed using two lookup
tables (LUTs), but argues “each time an interpolation is to be carried out, a
start and end value of the range must be known.” Id.
We are unpersuaded of error because Appellant’s contention is not
commensurate with the scope of the claim. Contrary to Appellant’s
argument, claim 1 does not does not preclude an interval having two known
spline control points. Rather, claim 1 recites “producing ... for each
interval of a plurality of intervals . . . , a single spline control point.”
Duvanenko is generally directed to an interpolated LUT table circuit.
Duvanenko, Abstract. Duvanenko discloses the interpolated LUT table
circuit includes an interpolator circuit that performs linear interpolation to
provide a more precise LUT output value based upon a corresponding input
signal. Duvanenko col. 9,11. 45—50. To produce values between
neighboring entries of a LUT, Duvanenko further discloses the parametric
equation “T/ = Av*0 -T)+7^Av+i,” wherein 0