10959695 (B.P.A.I. Oct. 25, 2010)

Ex Parte Green et al

Board of Patent Appeals and InterferencesOct 25, 2010

10959695 (B.P.A.I. Oct. 25, 2010)

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. 10/959,695 10/06/2004 Robin James Green PA2806US 3623 22830 7590 10/25/2010 CARR & FERRELL LLP 120 CONSTITUTION DRIVE MENLO PARK, CA 94025 EXAMINER REPKO, JASON MICHAEL ART UNIT PAPER NUMBER 2628 MAIL DATE DELIVERY MODE 10/25/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBIN JAMES GREEN, AXEL MAMODE, and ROY TADASHI HASHIMOTO ____________ Appeal 2009-003537 Application 10/959,695 Technology Center 2600 ____________ Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and THOMAS S. HAHN, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. ON REQUEST FOR REHEARING1 1 The two-month period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for 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” (electronics delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-003537 Application 10/959,695 2 Appellants request that we reconsider our Decision of June 22, 2010, wherein we sustained the Examiner’s 35 U.S.C. § 103(a) rejection of claims 38-59 as being unpatentable over the combination of Baker and Dietrich. We have reconsidered our Decision of June 22, 2010, in light of Appellants’ arguments in the Request for Rehearing, and we find no error therein. We, therefore, decline to make any changes in the prior Decision for the reasons which follow. Appellants’ arguments in the Request for Rehearing initially focus on the contention that our original Decision, in affirming the Examiner’s obviousness rejection, erred, as did the Examiner, in properly interpreting the claimed term “shader.” In particular, according to Appellants (Request 3-4), the texture mapping structure disclosed by Baker, relied upon by the Examiner providing a teaching of a “shader program,” is inapplicable for use as a multi-pass shader program as claimed. In making this argument, Appellants direct attention to paragraphs [0058] and [0078] of Baker which, in Appellants’ view, disclose that each pass through the texture hardware of Baker acts in isolation and does not materially change any other pass. Appellants contend, therefore, that Baker has no disclosure of any operation that modifies a default step of a second pass of a shader program based on a data value obtained from a first pass as claimed. (Request 4). It is important to note, however, that, although the Examiner, at page 4 of the Answer, identified portions of Baker (Fig. 6, items 154-158; ¶ [0075]) which disclosed the claimed default step modification feature, Appellants presented no arguments in the main Brief or Reply Brief challenging this position. Since Appellants never raised this factual issue Appeal 2009-003537 Application 10/959,695 3 with the Examiner, we do not have the benefit of the Examiner’s position on this question of fact. A new argument advanced in a Request for Rehearing but not advanced in the main Brief or Reply Brief is not properly before the Board because an argument advanced in such a manner has not afforded the Examiner an opportunity to respond to the new argument. See 37 C.F.R. § 41.52 (“Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section.). Consequently, we will not consider this new argument of fact as a basis for changing our prior Decision in this case. We will only consider questions raised by Appellants which are properly asserted at this time. With respect to Appellants’ argument (Request 5) regarding the lack of any teaching or suggestion in the Dietrich reference of the pre-compiled generation of binary execution code, we do not find such argument to be persuasive of any error in our prior Decision. In particular, we find no error in the Examiner’s reliance (Ans. 5) on the portion of Dietrich (Table 2, Item 4) as providing a teaching of pre-compiling shader program code as claimed. The end result of Dietrich’s pre-compiling of shader program code is the generation of binary execution code as claimed since, as pointed out by the Examiner (Ans. 5, 16) and not disputed by Appellants, the generated code must be in executable machine code prior to execution on the system processor. To whatever extent the pre-compiled shader program of Dietrich may need to be transformed by additional compilation steps to finally be distilled to binary execution code as argued by Appellants (Request 5), any Appeal 2009-003537 Application 10/959,695 4 such additional compilation steps are not precluded by the language of the appealed claims. CONCLUSION Based on the foregoing, we have granted Appellants’ request to the extent that we have reconsidered our original Decision of June 22, 2010, but we deny the request with respect to making any changes therein. 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)(2009). REHEARING DENIED babc CARR & FERRELL LLP 120 CONSTITUTION DRIVE MENLO PARK, CA 94025