Ex Parte Fisk

Patent Trial and Appeal Board

Sep 21, 2016

13355862 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/355,862 01/23/2012
104840 7590
Imagination Technologies
3201 Scott Blvd.
Santa Clara, CA 95054
09/23/2016
FIRST NAMED INVENTOR
Donald FISK
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
070852.000118 6999
EXAMINER
NGUYEN, KIMBINH T
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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@vorys.com
vmdeluca@vorys.com
mmseasay@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD FISK
Appeal2015-005360
Application 13/355,862
Technology Center 2600
Before NORMAN H. BEAMER, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19 and 21, which constitute all of the claims pending in this
application. Claims 20 and 22 have been cancelled. App. Br. 21, 22. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Imagination Technologies, Limited as the real party in
interest. App. Br. 2.
Appeal2015-005360
Application 13/355,862
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for tile based depth buffer compression. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for compressing depth buffer data in a 3-
dimensional computer graphics system, comprising:
dividing the depth buffer data into a plurality of
rectangular tiles corresponding to rectangular areas of an
associated image;
for each tile to be compressed, identifying a plurality of
starting point locations in the tile;
for each starting point location of the plurality of starting
point locations,
determining a difference in depth between a depth
value at the starting point location and respective depth
values at each of at least two further locations, and
predicting a depth value at a plurality of other
locations in the tile from the thus determined difference
values, and \'l1here a predicted value substantially matches
an actual depth value for that location, assigning that
location to a plane associated with the respective starting
point location;
identifying locations within a tile that are not assigned to
any plane associated with the plurality of starting point locations;
for each tile, storing, for each plane, starting point location
and depth value data at the starting point location, difference
value data, and plane assignment data for each tile, the plane
assignment data indicating which locations in the tile are
assigned to that plane, and data indicating which locations in the
tile are not assigned to any of the planes and depth values for
those locations.
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Application 13/355,862
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Van Dyke et al.
Liao
US 6,961,057 B 1
US 2006/0103658 Al
REJECTIONS
Nov. 1, 2005
May 18, 2006
Claims 1-10 and 21 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 2-3.
Claims 1-19 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Van Dyke in view of Liao. Final Act. 4--11.
ANALYSIS2
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by 1A .. ppellant. \Ve
are not persuaded by Appellant's arguments regarding the rejections based
on 35 U.S.C. § 103(a). However, we are persuaded by Appellant's argument
that the Examiner erred in rejection the claims as being directed to non-
statutory subject matter.
2 Rather than reiterate the entirety of the arguments of Appellant and the
positions of the Examiner, we refer to the Appeal Brief (filed Dec. 12,
2014); the Reply Brief (filed April 22, 2015); the Final Office Action
(mailed Aug. 13, 2014); and the Examiner's Answer (mailed Feb. 23, 2015)
for the respective details.
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Application 13/355,862
Claims 1-10 and 21 (35U.S.C.§101)
The Examiner concludes the invention claimed in claims 1-10 and 21
is directed to non-patentable subject matter because it is not directed to a
machine/particular apparatus or does not "transform the underlying subject
matter." Final Act. 3; Adv. Act. 2; Ans. 15-16. The Examiner further
concludes that the claims are directed to an abstract idea because the claims
"rely on using mathematics [and] the claim[ s are] directed to a mathematical
relationship from implementation to a technical problem." Ans. 16-18. The
Examiner further concludes the claims do "not amount to significantly more
than the abstract idea itself [and] requires the additional limitations of a
computer with a processing (CPU), memory or other devices to perform
their functions of dividing, identifying, determining, predicting that enables
the compressing depth buffer data." Ans. 17.
Appellant argues the Examiner erred in applying the machine or
transformation test. App. Br. 6; Reply Br. 1-3. More specifically,
Appellant argues that although the machine or transformation test may be
one tool for assisting in determining if the claims are directed to patentable
subject matter, it is not the exclusive test. Id. Appellant argues that, instead,
the correct test is the two-part framework under Alice3 and Mayo4. Id.
Appellant further argues that the invention "is not directed to an abstract
idea merely because it includes or contains references to a mathematical or
geometrical relationships." Reply Br. 3--4.
3 Alice Corp. Pty. Ltd. v. CLS Bank Int'!., 134 S. Ct. 2347 (2014).
4 Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012).
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Application 13/355,862
The Supreme Court has set forth a two-part test to determine whether
or not a claim is directed to patentable subject matter:
First, given the nature of the invention in this case, we determine
whether the claims at issue are directed to a patent-ineligible
abstract idea. Alice Corp. v. CLS Bank Int 'l, - U.S. -, 134
S.Ct. 2347, 2355, 189 L.Ed.2d 296 (2014). If so, we then
consider the elements of each claim-both individually and as an
ordered combination-to determine whether the additional
elements transform the nature of the claim into a patent-eligible
application of that abstract idea. Id. This second step is the
search for an "inventive concept," or some element or
combination of elements sufficient to ensure that the claim in
practice amounts to "significantly more" than a patent on an
ineligible concept. Id.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir.
2014).
We are persuaded by Appellant's arguments that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101. Here, the Examiner makes
conclusory statements regarding the claim covering an abstract idea and not
containing an inventive concept. Ans. 1 7. Such a conclusory determination
is not sufficient to make a prima facie case.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claims 1-10 and 21 as directed to non-statutory
subject matter.
Claims 1-19 (35 U.S.C. § 103)
Appellant argues the Examiner erred in finding the cited references
teach various limitations in claim 1, including the "for each starting point ...
determining ... and predicting," "identifying locations within a tile," and
"for each tile" limitations recited in claim 1. App. Br. 10-14. In particular,
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Appellant provides a detailed analysis as to why Liao does not teach or
suggest the disputed limitations. Id.; Reply Br. 4--5.
We are not persuaded of error based on Appellant's argument because
it does not address the reasoning relied on by the Examiner (Ans. 18-23)
and, thus, does not adequately address the rejection on appeal. Specifically,
although the Examiner relies on Liao for the disputed limitations in the Final
Action, the Examiner makes alternate findings regarding Van Dyke in the
Answer.
To the extent Appellant addresses Van Dyke, Appellant does so in a
summary fashion:
Van Dyke also does not disclose or suggest this subject matter.
While Van Dyke discloses determining a gradient in the X
direction based on differences between the Z values of the first
major pixel and the anchor pixel (and corresponding in the Y
direction), Van Dyke does not disclose for each of a plurality of
locations, determining differences in depth at at [sic] least two
further locations.
App. Br. 12; see also Reply Br. 4 ("Appellant has shown that the ground of
rejection is improper because it is based on ... the failure of any possible
combination of Liao with Van Dyke to result in the claimed subject matter."
(citing App. Br. 12-13)). Merely summarizing the claim language and
making a naked assertion that the prior art does not teach the limitation is
insufficient to raise an argument that that Examiner erred. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires "more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art."); see also 37 C.F.R. § 41.37(c)(l)(iv) ("A statement
which merely points out what a claim recites will not be considered an
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argument for separate patentability of the claim."). Because Appellant has
not identified any specific errors in the Examiner's findings based on Van
Dyke, "the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection." Frye, 94 USPQ2d at 1075.
Accordingly, we sustain the Examiner's rejection of claim 1 as
unpatentable over Van Dyke in view of Liao, along with the rejections of
claims 2-19, which are not argued separately.
Claim 21
First, Appellant argues that "[ n ]either Van Dyke nor Liao discloses
storing plane assignment data that indicates what locations in a tile are
assigned to any of the planes." App. Br. 14. Particularly, Appellant argues:
Van Dyke discloses either to compress all of the pixels in a tile
using the one plane, or to store depths for all pixels in
uncompressed form [and] Liao's disclosure of"planes" relates to
deciding what locations in a frame buffer to use to store color
sample data, as explained above.
Id. Second, Appellant argues the Examiner erred in finding Van Dyke
(col. 2, 11. 44--4 7) teaches the "extrapolating" step recited in claim 21.
We are not persuaded by Appellant's arguments that the Examiner
erred. As for the first argument, nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant's first
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argument focuses on the references individually and does not address the
Examiner's finding that Van Dyke teaches "planes," as recited in claim 21.
See Final Act. 10; Ans. 23-24. To the extent Appellant discusses the
teachings of Van Dyke regarding tiles, Appellant does not cite to any
evidence in support of its argument. "Attorney's argument in a brief cannot
take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
As for the second argument, although Appellant argues Van Dyke
column 2 does not teach the extrapolating limitation (App. Br. 15),
Appellant does not address the Examiner's additional findings in the Answer
(see Ans. 24 (citing Van Dyke 14:52-15:28, 15:55-16:5)). Because
Appellant has not identified any errors in the Examiner's findings in the
Answer, we "will not, as a general matter, unilaterally review those
uncontested aspects of the rejection." Frye, 94 USPQ2d 1072 at 1075.
Accordingly, we sustain the Examiner's rejection of claim 21 as
unpatentable over Van Dyke in view of Liao.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-19 and 21 as being unpatentable over Van Dyke in view of Liao.
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1-10 and 21under35 U.S.C. § 101 as being directed to non-
patentable subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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AFFIRMED
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