Ex Parte Fox

Board of Patent Appeals and Interferences

Apr 26, 2005

09758787 (B.P.A.I. Apr. 26, 2005)

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is not binding precedent of the Board.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. 10

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte THOMAS WINTERS FOX
_____________

Appeal No. 2005-0342
Application No. 09/758,787
______________

ON BRIEF
_______________

Before: HAIRSTON, LEVY and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of
claims 1, 4, 5, 7 through 24 and 27.1 For the reasons stated infra we affirm the
examiner’s rejection of these claims.

1 The Examiner states, on pages 2 and 9 of the answer, that the rejection of claims 25 and 26 is
withdrawn.

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Invention

The invention relates to a lighting processor circuit that efficiently
determines primary and secondary colors in a computer graphics system. See
page 1 of appellant’s specification. Lighting equations using floating point
calculations are used to determine the color values. See page 2 of appellant’s
specification
Claim 1 is representative of the invention and reproduced below:
1. A lighting circuit for use in a graphics adapter of a data
processing system supporting a set of light sources, comprising:

a geometry stage configured to receive the coordinates of a graphic
primitive vertex and the vertex's normal vector and further
configured to:

calculate a first set of floating point values, wherein each of
the first set of values is indicative of the dot product of the
normal vector and a unit vector from the vertex to a
corresponding light source;

calculate a second set of floating point values wherein each
of the second set of values is indicative of the dot product of
the normal vector and a unit half vector, wherein the unit half
vector represents the vector sum of the unit vector from the
vertex to the corresponding light source and the unit vector
from the vertex to an eye point; and

calculate a third set of floating point values wherein each of
the third set of values is indicative of the product of an
attenuation factor associated with each light source and a
spotlight factor associated with each light source, wherein
the attenuation factor decreases as the magnitude of the unit
vector from the vertex to the corresponding light source
increases; and

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a color stage configured to receive at least the first, second, and
third sets of floating point values from the geometry stage and
further configured to calculate at least a primary vertex color based
thereon.

References

The references relied upon by the examiner are:
Nelson et al. (Nelson) 6,037,947 Mar. 14. 2000
(filed Oct. 16, 1997)

Suzuki et al. (Suzuki) 6,118,453 Sep. 12, 2000
(filed Dec. 19, 1996)

Goel 6,211,883 Apr. 03, 2001
(filed Aug. 27, 1997)

Hong et al. (Hong) 6,611,265 Aug. 26, 2003
(effectively filed Oct. 18, 1999)

Rejection at Issue

Claims 1, 4, 5, 7, 9 through 15 and 17 through 23 stand rejected under
35 U.S.C. § 103 as unpatentable over Suzuki in view of Nelson.2 Claims 8, 16
and 24 stand rejected under 35 U.S.C. § 103 as unpatentable over Suzuki in
view of Nelson and Goel. Claim 27 stands rejected under 35 U.S.C. § 103 as
unpatentable over Suzuki in view of Nelson and Hong. Throughout the opinion
we make reference to the brief and the answer for the respective details thereof.

2 This rejection is set forth on pages 2 through 6 of the Final office action dated September 29,
2003. We note that page 3 of the appeal brief erroneously identifies claims 8, 16 and 24 through
27 in this rejection.

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Opinion
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the 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.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellant and the examiner, and for
the reasons stated infra we sustain the examiner’s rejections of claims 1, 4, 5, 7
through 24 and 27 under 35 U.S.C. § 103.
Grouping of the claims.
At the outset, we note that appellant states, on page 4 of the brief, that:
Applicant respectfully requests grouping of the claims as follows:

Group I- Claims 1, 4, 5, and 7-24
Group II- Claims 25-27

37 C.F.R. § 1.192(c) (7) (July 1, 2003) as amended at 62 Fed. Reg. 53196
(October 10, 1997), which was controlling at the time of appellant filing the brief,
states:
For each ground of rejection which appellant contests and which
applies to a group of two or more claims, the Board shall select a
single claim from the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone unless a
statement is included that the claims of the group do not stand or

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fall together and, in the argument under paragraph (c) (8) of this
section, appellant explains why the claims of the group are believed
to be separately patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the claims are
separately patentable.

Accordingly, we will consider the claims in two groups. Group 1 consists
of claims 1, 4, 5 and 7 through 24, and we will treat claim 1 as representative of
that group. Group 2 consists of claim 27.
Rejection of Claims in Group 1 (Claims 1, 4, 5, 7 through 24)
Appellant argues, on page 6 of the brief, that “there is no suggestion or
motivation to modify Suzuki to incorporate the floating point calculations of
Neslon because doing so would render Suzuki unsatisfactory for its intended
purpose.” Appellant cites Suzuki column 18 lines 57-67 and reasons that “Suzuki
is explicitly directed to a processor for performing lighting source calculations
using a format other than floating point.” Appellant also cites column 2 of
Suzuki, which discusses the prior art, to show that “Suzuki is explicitly motivated
by a desire to eliminate floating point calculations in a lighting calculation unit of a
graphics processor.” Thus, on page 7 of the brief, appellant concludes that the
rejection is improper as there is no proper motivation to combine the references.
We disagree. Appellant, on pages 6 of the brief, cites In re Gordon
733F.2d 900, 221 USPQ 1125 (Fed Circuit 1984), for the proposition that “when
a proposed modification would render the prior art invention being modified
unsatisfactorily for it’s intended purpose, then there is no suggestion or
motivation . . . .” We find that the intended purpose of the device taught by

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Suzuki is to perform lighting source calculations. Additionally, we find no
evidence that modifying Suzuki to perform the calculation with floating point math
would produce an inoperative device. To the contrary, we find that Suzuki
teaches that it is possible to perform lighting source calculations using floating
point math.
We find, as appellant points out on page 6 of the brief, that Suzuki
recognizes that the prior art makes use of floating point math. Suzuki teaches
that computer graphics systems make use of geometric processing which
includes coordinate conversion of vertices of a figure and makes use of normal
vectors. (See column 1, lines 33-37). These calculations are performed using
float type real numbers in a complex equation, equation 4. See column 1, lines
62-64. The complex equation (equation 4, in column 2) includes the terms
(N.L.i), (N.H.i), At.i and Sp.i; where N is the normal vector (see column 2, line 37),
L.i is the light source vector (see column 2, line 38), H.i is the halfway vector (see
column 2, lines 39-43), At.i is the attenuation (See column 2,lines 50-54, note:
the distance from the light source is in the denominator of the equation defining
attenuation, thus attenuation decreases as the distance increases) and Sp.i is
the spot light factor (see column 2, lines 55-60). Suzuki teaches these floating
point calculations are often performed on a separate geometry processor. (See
column 3, lines 1-5). After the geometric processing is performed the results are
provided to a rendering processor which develops and draws the pixels. (See
column 1, lines 38-41). Thus, we find that Suzuki explicitly teaches calculating

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three floating point values as claimed and does not teach that using floating point
variables would render the device inoperative. While we concur with appellant
that Suzuki’s invention seeks to improve upon the system which uses floating
point calculations by using integer values, this does not render the appellant’s
claims to the use of floating point calculations unobvious. Our reviewing court
has stated “a known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use.” In re Gurley 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed.
Cir. 1994). Accordingly, we sustain the examiner’s rejection of claims 1, 4, 5, 7
and 9 through 15 and 17 through 23 under 35 U.S.C. § 103 as unpatentable over
Suzuki in view of Nelson and the examiner’s rejection of claims 8, 16 and 24
under 35 U.S.C. § 103 as unpatentable over Suzuki in view of Nelson and Goel.
In affirming a multiple reference rejection under 35 U.S.C. 103, the board
may rely on one reference alone in an obviousness rationale without designating
it as a new ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263,
266-67 (CCPA 1961; In re Boyer, 363 F.2d 455, 458, n.2, 150 USPQ 441, 444,
n.2 (CCPA 1966) . However, an anticipation rationale may constitute a new
ground of rejection. In re Meyer, 599 F.2d 1026, 1031, 202 USPQ 175, 179
(CCPA 1979); In re Echerd 471 F.2d 632, 635, 176 USPQ 321, 323 (CCPA
1973).

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Rejection of claims in Group 2 (claim 27)
On pages 7 and 8 of the brief appellant’s arguments are directed to claim
25 and the limitation of an inverse square root circuit (ISR). Appellant argues on
page 8 “Hong does not anticipate or suggest a claim limitation reciting where the
output of an ISR circuit is provided to an inverter circuit to generate its reciprocal
as claimed.”
As stated supra, the examiner has withdrawn the rejection of claims 25
and 26. We do not find any limitation in claim 27 directed to an inverse square
root circuit. As appellant has not identified any limitation of claim 27 which is not
taught by the combination of Suzuki in view of Nelson in view of Hong, we
sustain the examiner’s rejection of claim 27.
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 or by filing a reply brief have not been considered and are
deemed waived by appellant (see 37 CFR § 41.37(c)(vii)) Support for this rule
has been demonstrated by our reviewing court in In re Berger 279 F.3d 975,
984, 61 USPQ2d 1523, 1528-1529 (Fed. Cir. 2002) wherein the Federal Circuit
Court stated that because the appellant did not contest the merits of the
rejections in his brief to the Federal Circuit Court, the issue is waived. See also
In re Watts 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).

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In summary, we sustain the examiner’s rejection of claims 1, 4, 5, 7
through 24 and 27under 35 U.S.C. § 103. The decision of the examiner is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

REN/vsh

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