Ex Parte Iourcha et al

Board of Patent Appeals and Interferences

Dec 21, 2007

09371972 (B.P.A.I. Dec. 21, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KONSTANTINE I. IOURCHA,
CHUNG-KUANG CHIN, and ZHOU HONG
____________

Appeal 2007-2857
Application 09/371,972
Technology Center 2600
____________

Decided: December 21, 2007
____________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and SCOTT R. BOALICK, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 1 to 18 and 23 to 29.
Appeal 2007-2857
Application 09/371,972

Claim 1 is representative of the claimed invention, and it reads as
follows:
1. In a graphics system, a computer-implemented method of rendering
a graphic primitive, the graphic primitive having a plurality of sides that
define the edge of the primitive, the method comprising:
receiving a signal from an interface, the signal comprising data about
a plurality of vertices of the primitive and an independent variable;
determining a channel value for each of the plurality of vertices of the
primitive using the data about the plurality of vertices and the independent
variable;
randomly selecting an interior point within the graphic primitive;
selecting at least two side points located on a side of the graphic
primitive;
determining an interpolated channel value with an interpolation
engine for each of the at least two side points; and
determining a channel value at the randomly selected interior point by
interpolation from the interpolated channel values of each of the at least two
side points.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shochet US 6,108,007 Aug. 22, 2000
(filed Oct. 9, 1997)
Wood US 6,204,856 B1 Mar. 20, 2001
(filed Jul. 28, 1998)
Foley, Computer Graphics: Principles and Practice, Addison-Wesley
Publishing Company, 668 to 672, 736, and 737 (1997).

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Application 09/371,972

The Examiner rejected claims 1 to 18 and 23 to 29 under 35 U.S.C.
§ 102(e) based upon the teachings of Wood. The Examiner rejected claims
1 to 18 and 23 to 29 under 35 U.S.C. § 103(a) based upon the teachings of
Foley and Shochet.
Appellants contend inter alia that the applied references neither teach
nor would have suggested to the skilled artisan the receiving of a signal that
comprises an “independent variable,” determining a channel value for each
of a plurality of vertices of a primitive using data about the plurality of
vertices and the “independent variable,” and “randomly” selecting an
interior point within a graphic primitive as set forth in the claims on appeal.
Turning to the Appellants’ disclosure for an understanding of the
phrase “independent variable,” we find that the disclosure describes an
independent variable as “X (or Y) from the API” (Specification 19). The
disclosure never explains how and under what conditions the API provides
the independent variables X or Y (Specification 20). More importantly, the
disclosure never explains what exactly constitutes an independent variable X
or Y. With respect to the term “randomly,” we can not find it in the
originally filed disclosure.
In view of the lack of an explanation as to what constitutes an
“independent variable,” and the complete lack of a description in the
originally filed disclosure of the term “randomly,” we are not able to
determine the metes and bounds of the claimed invention set forth in claims
1 to 18 and 23 to 29. Accordingly, the prior art rejections of claims 1 to 18
and 23 to 29 are reversed because a prior art rejection can not be sustained if
the hypothetical person of ordinary skill in the art would have to make

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Appeal 2007-2857
Application 09/371,972

speculative assumptions concerning the meaning of claim language. In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962).

NEW GROUNDS OF REJECTION

Claims 1 to 18 and 23 to 29 are rejected under the second paragraph
of 35 U.S.C. § 112 for indefiniteness because the metes and bounds of the
disclosed and claimed invention can not be determined based on the use of
the phrase “independent variable” in connection with a signal received from
an interface in the claimed graphics system, and the use of the term
“randomly” in connection with the selection of an interior point within the
graphics primitive. According to In re Moore, 439 F.2d 1232, 1235 (CCPA
1971), any analysis under the second paragraph of 35 U.S.C. § 112 begins
with a determination of whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure as they would
be by one possessing ordinary skill in the art. As indicated supra, the claims
on appeal fail to pass such a test as set forth in Moore.
Claims 1 to 13 and 16 to 18 are rejected under the first paragraph of
35 U.S.C. § 112 for lack of enablement. The skilled artisan would have to
resort to undue experimentation to derive or select an “independent variable”
due to the lack of an explanation in the disclosure as to how one of skill
would know what constitutes such a variable. In the absence of any
explanation in the disclosure, we find that the skilled artisan would have to
resort to an undue amount of experimentation to be able to “randomly”
select an interior point within the graphics primitive. In order to comply
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Appeal 2007-2857
Application 09/371,972

with the enablement portion of the first paragraph of 35 U.S.C. § 112, the
disclosure “must teach those skilled in the art how to make and
use the full scope of the claimed invention without undue experimentation.”
Bruning v. Hirose, 161 F.3d 681, 686 (Fed. Cir. 1998).
Claims 1 to 18 and 23 to 29 are rejected under the first paragraph of
35 U.S.C. § 112 for lack of written description. As indicated supra, the term
“randomly” selecting an interior point within a graphics primitive was not
described in the originally filed disclosure. Under the written description
portion of the first paragraph of 35 U.S.C. § 112, the Applicants must
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983).
The decision of the Examiner is reversed1.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:

1 Our reversal of the prior art rejections does not mean that the Examiner’s
rationale for rejecting the claims over the prior art of record lacks merit.
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Application 09/371,972

(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

tdl/gvw

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