Ex Parte Gelhaus et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10909087 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATTHEW GELHAUS, WINTHROP D. CHILDERS, ART
PIEHL, JIM PRZYBYLA, ADAM GHOZEIL, and ERIC MARTIN
____________________

Appeal 2009-006994
Application 10/909,0871
Technology Center 2600

____________________

Before MARC S. HOFF, THOMAS S. HAHN,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Hewlett-Packard Development Company, L.P.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006994
Application 10/909,087

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-37. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention relates to a method for spreading a non-periodic
color signal sent to a spatial light modulator across a frame period. The
method includes a step of dividing a frame period into a plurality of time
slices and another step of assigning a color to each of the plurality of time
slices. The method further includes a step of interleaving one or more colors
assigned to the time slices across the frame period in a non-periodic manner
(Abstract).
Claims 1 and 28 are exemplary:
1. A method for spreading a non-periodic color signal sent to a spatial
light modulator across a frame period, comprising the steps of:
dividing a frame period into a plurality of time slices;
assigning a color to each of the plurality time slices; and
interleaving one or more colors assigned to the time slices across the
frame period in a non-periodic manner.

28. An article of manufacture, comprising:
a computer usable medium having a computer readable program code
means embodied therein for spreading a non-periodic color signal sent to a
spatial light modulator across a frame period, the computer readable
program code means in the article of manufacture comprising:
computer readable program code for dividing a frame period into a
plurality of time slices; computer readable program code for assigning a
color to each time slice, wherein one or more colors are assigned to the
plurality of time slices in the frame period; and computer readable program
code for interleaving the one or more colors assigned to the time slices
across the frame period.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Doherty US 5,497,172 March 5, 1996
Jones, Jr. US 5,986,721 Nov. 16, 1999
Childers US 6,850,352 B1 Feb. 1, 2005
Rancuret US 6,958,841 B2 Oct. 25, 2005

Claim 28 stands rejected under 35 U.S.C. 101 as being directed to
non-statutory subject matter.
Claims 1-6 and 27-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jones in view of Rancuret.
Claims 7-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Rancuret and Childers.
Claims 13 and 29-37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Childers in view of Rancuret.
Claims 14-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Childers in view of Doherty and Rancuret.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed May 13, 2008), the Reply Brief
(filed September 29, 2008), and the Examiner’s Answer (mailed August 20,
2008) for their respective details.

ISSUES
Appellants argue that the claimed computer-readable medium
encoded with a data structure or computer program is statutory (App. Br.
18). Appellants contend further that the claimed computer program is part
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of an otherwise statutory manufacture and, hence, the claimed subject matter
is statutory (App. Br. 18). Appellants assert that it is commonly understood
that “computer readable medium” encompasses tangible physical media
which is patentable under § 101 when it contains functional descriptive
matter (App. Br. 21).
With regard to the obviousness rejection, Appellants contend (App.
Br. 23-25) that the combined teachings of the references fail to disclose the
claim limitation “interleaving one or more colors assigned to the time slices
across the frame period in a non-periodic manner.”
Appellants’ contentions present us with the following two issues:
1. Where the Specification is silent to limiting the meaning of
“computer usable medium” to non-transitory tangible media, does the
broadest reasonable interpretation of a claim drawn to a “computer usable
medium” cover transitory propagating signals per se which are non-statutory
subject matter?
2. Do the combined teachings of the references disclose interleaving
one or more colors assigned to the time slices across a frame period in a non-
periodic manner?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention relates to a method for
spreading a non-periodic color signal sent to a spatial light modulator across
a frame period. The method includes a step of dividing a frame period into a
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plurality of time slices and another step of assigning a color to each of the
plurality time slices. The method further includes a step of interleaving one
or more colors assigned to the time slices across the frame period in a non-
periodic manner (Abstract).
Jones
2. Jones discloses a basis display system including a Digital
Micromirror Device (DMD) 104 and color wheel arrangement, wherein the
transparent rotating color wheel 110 is positioned between a light source and
the DMD for colorizing the image. The color wheel 110 is used to filter
light from the light source, generating a single display frame from the three
color frame periods (Fig. 1; col. 3, l. 24-39).
3. Jones discloses a periodic or sequential placement of the three
color periods with a display frame period. When the color wheel rotates at a
speed 10% less than that of the nominal speed, the color periods are longer.
Conversely, when the color wheel rotates at a speed 10% greater than that of
the nominal speed, the periods are shorter (Fig. 4 and 5; col. 4, ll. 15-31).
Rancuret
4. Rancuret discloses a DMD which is a type of pixel-based
Spatial Light Modulator and a method for determining pixel patterns to be
used or applied to the DMD to achieve certain optical response
characteristics and for tuning the optical response characteristics (col.1, ll.
37-41).
5. Rancuret disclose that for a DMD, each individual pixel
element is the individual DMD mirrors which can be individually switched
‘on’ and ‘off’ by circuitry underlying the DMD pixels on a semiconductor
substrate as a form of signal processing (Fig. 2; col. 3, ll. 55-60; col. 4, ll.
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31-46). The surface of the DMD 114 includes a number of segments 204 of
pixels aligned in a band 206 (Fig.2; col. 3, l.66-col.4, l.15)
6. Rancuret discloses a method for efficiently determining the
patterns that are applied to turn the pixels on and off (col. 4, ll. 31-46).
Rancuret discloses that the patterns may be periodic, like the exemplary
pattern 301 applied and repeated through the segments 304. ‘On’ and ‘off’
pixels may be arranged in different patterns to be applied and repeated
across segments 304 in order to achieve different optical performance
characteristics (Fig. 3A and 3B; col. 4, l. 63-col. 5, l. 7). In the alternative,
Rancuret discloses that the patterns may be non-periodic (col. 5, ll. 43-57).

PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits
within one or more of the statutory categories, it may not be patent eligible.
In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
In re Zletz, 893 F.2d at 322.
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Our reviewing court has found that transitory, propagating signals
such as carrier waves are not within any of the four statutory categories
(process, machine, manufacture or composition of matter.) Therefore, a
claim directed to computer instructions embodied in a signal is not statutory
under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007.)
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.

ANALYSIS
Section 101 rejection of Claim 28
Independent claim 28 recites “a computer usable medium having a
computer readable program code means embodied therein for spreading a
non-periodic color signal sent to a spatial light modulator across a frame
period.”
Appellants’ Specification is silent as to meaning of computer readable
media. During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
Because Appellants’ Specification does not limit the meaning of the
phrase “computer usable medium” to non-transitory tangible media, the
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broadest reasonable meaning of the phrase includes both non-transitory
tangible media and transitory propagating signals per se. It is well settled
that a claim directed to computer instructions embodied in a signal is not
statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1354 (Fed.
Cir. 2007.)3 Therefore, claim 28 does not recite subject matter eligible
under 35 U.S.C. § 101, because the scope of the claim includes the non-
statutory subject matter of transitory propagating signals per se. As a result,
Appellants’ argument is not found to be persuasive.
Accordingly, we sustain the Examiner’s rejection of independent
claim 28 under 35 U.S.C. § 101 as being directed to nonstatutory subject
matter.
Section 103 rejection of Claims 1 - 6 and 27 - 28
Independent claim 1 recites “interleaving one or more colors assigned
to the time slices across the frame period in a non-periodic manner.”
Independent claims 6 and 27 recite similar claim limitations.
Appellants’ arguments have persuaded us that the combination of
Jones and Rancuret do not teach “interleaving one or more colors assigned
to the time slices across the frame period in a non-periodic manner.”
Specifically, Jones discloses the prior art periodic display frame
period for a system that uses a color wheel and generates color time slices in
the same sequence starting at the beginning of each frame of data (FF 2, 3).
Rancuret discloses a DMD which is a type of pixel-based Spatial
Light Modulator (SLM) and a method for determining pixel patterns to be
used or applied to the DMD to achieve certain optical response

3 See also Interim Guidelines for Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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characteristics and for tuning the optical response characteristics (FF 4). For
a DMD, each individual pixel element is represented by an individual DMD
mirror which can be individually switched ‘on’ and ‘off’ by circuitry
underlying the DMD pixels on a semiconductor substrate as a form of signal
processing (FF 5). The surface of the DMD 114 includes a number of
segments 204 of pixels aligned in a band 206 (FF 5). Rancuret discloses a
method for efficiently determining the patterns that are applied to turn the
pixels on and off (FF 6). Rancuret discloses that the patterns may be
periodic, like the exemplary pattern 301 applied repeated through the
segments 304 (FF 6). In the alternative, Rancuret discloses that the patterns
may be non-periodic (FF 6).
In summary, the periodic and non-periodic patterns disclosed in
Rancuret refer to the signal processing of the DMD in an effort to determine
which mirrors reflect light. The non-periodic patterns disclosed in Rancuret
do not relate to the colors applied during a display frame period. Rancuret is
silent as to interleaving colors assigned to time slices of a display frame
period in a non-periodic manner.
We agree with the Appellants that Rancuret discloses spatial patterns
that are not related to the temporal distribution of color within a display
frame period (App. Br. 22; Reply Br. 6).
As such, we find that the combined teachings of Jones and Rancuret
do not disclose all the limitations of independent claims 1, 6, and 27. Thus,
we find error in the Examiner’s rejection of claims 1, 6, and 27 and that of
dependent claims 2-5 under 35 U.S.C. § 103 (a) as being unpatentable over
Jones in view of Rancuret, and we will not sustain the rejection.
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Claims 7-12
As noted supra, we reversed the rejection of claim 6 from which
claims 7-12 depend. We have reviewed Childers (the additional reference
applied by the Examiner to reject these claims), and find that it does not
teach the limitations deemed to be absent from the combined teachings of
Jones and Rancuret.
We therefore reverse the Examiner’s rejections of claims 7-12 under
35 U.S.C. § 103, for the same reasons expressed with respect to the § 103
rejection of parent claim 6, supra.
Claims 13, 29-37
Independent claims 13, 29, and 34 recite interleaving color in a non-
periodic manner similar to independent claims 1, 6, and 17.
As noted supra, we reversed the rejection of claim 1, 6, and 17 since
the combination of the teachings of Jones and Rancuret do not teach
interleaving color in a non-periodic manner.
We have reviewed Childers (the additional reference applied by the
Examiner to reject these claims), and find that it does not teach the
limitations deemed to be absent from Rancuret and Jones.
We therefore reverse the Examiner’s rejections of claims 13 and 29-
37 under 35 U.S.C. § 103, for the same reasons expressed with respect to the
§ 103 rejection of claims 1, 6, and 27, supra.
Claims 14-26
Independent claim 14 recites “a non-periodic primary color sequence
for each of a plurality of time slices during the frame period for each pixel
element.” Independent claims 1, 6, and 17 recite similar claim limitations.
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As noted supra, we reversed the rejection of claim 1, 6, and 17 since
the combination of the teachings of Jones and Rancuret do not teach
interleaving color in a non-periodic manner.
We have reviewed Childers and Doherty (the additional references
applied by the Examiner to reject these claims), and find that none of the
references teaches the limitations deemed to be absent from Jones and
Rancuret.
We therefore reverse the Examiner’s rejections of claims 14-26 under
35 U.S.C. § 103, for the same reasons expressed with respect to the § 103
rejection of claims 1, 6, and 27, supra.

CONCLUSIONS OF LAW
Where the Specification is silent to limiting the meaning of “computer
usable medium” to non-transitory tangible media, the broadest reasonable
interpretation of a claim drawn to a “computer usable medium” covers
transitory propagating signals per se which are non-statutory subject matter.
The combined teachings of the references do not disclose interleaving
one or more colors assigned to the time slices across a frame period in a non-
periodic manner.

ORDER
The Examiner’s rejection of claim 28 is affirmed. The Examiner’s
rejection of claims 1-27 and 29-37 is reversed.
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)(iv).

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Application 10/909,087

AFFIRMED-IN-PART

ELD

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
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