11269239 (P.T.A.B. Jan. 31, 2014)

Ex Parte Fu et al

Patent Trial and Appeal BoardJan 31, 2014

11269239 (P.T.A.B. Jan. 31, 2014)

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. 11/269,239 11/08/2005 Rong Yao Fu CN920040032US1 5674 108669 7590 01/31/2014 Mitch Harris, Atty at Law, LLC. (IBM-YOR) PO Box 7998 Athens, GA 30604 EXAMINER BLANCHA, JONATHAN M ART UNIT PAPER NUMBER 2691 MAIL DATE DELIVERY MODE 01/31/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RONG YAO FU, HAI XIN CHAI, GUO HUI LIN, JAMES YEH TIEN-CHENG, and XIAO XI LIU ______________ Appeal 2011-007387 Application 11/269,239 Technology Center 2600 ____________ Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and LARRY J. HUME, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of claims 21-40. Claims 1-20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-007387 Application 11/269,239 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (“App. Br.”) filed November 1, 2010, the Answer (“Ans.”) mailed January 21, 2011, and the Reply Brief (“Reply Br.”) filed March 21, 2011, for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants’ Invention Appellants’ invention relates to an apparatus and method to display structured graphics data generated by an application program running in a portable device, and to allow the interaction with the application program via an external display to change the structured graphics data generated by the application program. Spec. 2:24-3:1. Claim 21 is representative of the invention and reads as follows: 21. A method for displaying structured graphical output of an application executing within a portable device on a graphics monitor, the method comprising: establishing a connection between the portable device and an external graphics processing unit using an interface of the external graphics processing unit, wherein the external graphics processing unit is further coupled to the graphics monitor; transmitting the structured graphical output of the application over the interface to the external graphics processing unit; Appeal 2011-007387 Application 11/269,239 3 within the external graphics processing unit, rendering the structured graphical output of the application into a graphical image by invoking functions of a graphics function library; and displaying the graphical image on the graphics monitor. The Examiner’s Rejections The Examiner rejected claims 21, 29, 30, and 38 under 35 U.S.C. § 103(a) as being unpatentable over Ninke (US 3,653,001, May 28, 1972), Nason (US 6,727,918 B1, Apr. 27, 2004), and Viredaz (US 2005/0146507 A1, Jul. 7, 2005). Ans. 4-9. The Examiner rejected claims 22-24, 31-33, 39, and 40 under 35 U.S.C. § 103(a) as being unpatentable over Ninke, Nason, Viredaz, and Beda (US 7,417,645 B2, Aug. 26, 2008). Ans. 9-15. The Examiner rejected claims 25, 26, 34, and 35 under 35 U.S.C. § 103(a) as being unpatentable over Ninke, Nason, Viredaz, and Smyers (US 6,313,880 B1, Nov. 6, 2001). Ans. 15-18. The Examiner rejected claims 27 and 36 under 35 U.S.C. § 103(a) as being unpatentable over Ninke, Nason, Viredaz, Smyers, and Scott (US 2004/0174338 A1, Sep. 9, 2004). Ans. 18-20. The Examiner rejected claims 28 and 37 under 35 U.S.C. § 103(a) as being unpatentable over Ninke, Nason, Viredaz, and Scott. Ans. 20-22. ANALYSIS The Examiner finds Ninke teaches or suggests substantially all the limitations of Appellants’ claim 21 except for a portable device and rendering the structured graphical output of the application into a graphical Appeal 2011-007387 Application 11/269,239 4 image by invoking functions of a graphics function library. The Examiner finds Nason and Viredaz disclose these features. Ans. 4-5. We agree with and adopt the Examiner’s findings as our own. Particularly, we concur with the Examiner’s conclusion that Ninke in combination with Nason and Viredaz teaches and fairly suggests Appellants’ claimed invention (Ans. 22-24). We further agree with the Examiner’s broad but reasonable interpretation of Appellants’ claimed terms “structured graphical output” as no express definition of this phrase is provided in Appellants’ Specification (Ans. 23). Rather, only non-limiting examples are given (see e.g., Spec. 7:21 (“HTML, XML, DHTML”)), which do not specifically define the claim terminology.1 Based on our review of Ninke (col. 9, ll. 20-27), and consistent with the Examiner’s stated position (Ans. 5), we interpret the claim language “structured graphical output” using the broadest reasonable interpretation consistent with Appellants’ disclosure to include Ninke’s structured graphic data. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appellants also contend that in Ninke, graphics data is retrieved by the local workstation from the central computer when the data is not present in the local memory, e.g., when the user of the local workstation 120 has scrolled beyond the edge of the portion of a picture that is present in the memory of local workstation. Reply Br. 4 (emphasis ours). 1 Appellants’ Specification states, “According to an embodiment, the structured graphics data include for example a set of graphic function APIs or a markup language (such as HTML, XML, DHTML, etc.) page.” Spec. 7:19-21. Appeal 2011-007387 Application 11/269,239 5 We find Appellants’ arguments are not commensurate in scope with the broad claim language. For example, Appellants contend the claimed invention is “transmitting the structured graphical output of the application over the interface to the external graphics processing unit” (App. Br. 8 (emphasis omitted)). However, the claim language (“transmitting . . . over the interface”) does not distinguish between the location of a local workstation and a central computer. “[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted). Thus, in light of the broad terms recited in claim 21 and the arguments presented, Appellants have failed to clearly distinguish their claimed invention over the prior art combination relied on by the Examiner. Therefore, we are persuaded the Examiner’s reading of the claims on the cited references is correct and sustain the rejection of independent claims 21, 29, and 38, and dependent claim 30, which include substantially the same limitations and were argued together (App. Br. 8-11). Appellants provided additional arguments with respect to the patentability of dependent claims 22-24, 31-33, 39, and 40 (App. Br. 11-14). The Examiner has rebutted each of those arguments in the Answer by a preponderance of the evidence (Ans. 9-12, 24-26). Therefore, we agree with the Examiner’s findings and underlying reasoning and adopt them as our own. Consequently, we conclude there is no reversible error in the Examiner’s rejections of claims 22-24, 31-33, 39, and 40. Appeal 2011-007387 Application 11/269,239 6 With respect to dependent claims 25-28 and 34-37, Appellants argue these claims are patentable due to their dependency on their respective independent or dependent claims (App. Br. 11). Thus, as we sustained the rejection of claims 21, 29, and 38, we also sustain the rejection of claims 25- 28 and 34-37 dependent therefrom. DECISION The Examiner’s decision rejecting claims 21-40 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED msc