Ex Parte Katsura et al

Board of Patent Appeals and Interferences

Apr 26, 2002

08625241 (B.P.A.I. Apr. 26, 2002)

1
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not written for publication and is not binding precedent of the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. 81
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KOYO KATSURA, SHIGERU MATSUO,
SHIGEAKI YOSHIDA, HIROSHI TAKEDA AND HISASHI KAZIWARA
__________
Appeal No. 2000-0064
Application 08/625,241
___________
HEARD: MARCH 19, 2002
___________
Before JERRY SMITH, FLEMING and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 19-22 and 31-33, which
constitute all the claims remaining in the application. An
amendment after final rejection was filed on August 14, 1997,
but was denied entry by the examiner.
The disclosed invention pertains to a graphic display
system and to a method for controlling a graphic display system.
Appeal No. 2000-0064
Application 08/625,241
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More particularly, graphic information to be outputted is stored
in a first area of a frame buffer, and font pattern information
of a character is stored in a second area of the frame buffer.
Coded information of a character is provided by an external
providing means to a processing means which is connected to the
providing means on a first bus while the processing means is
connected to the frame buffer on a second bus. Font pattern
information is transferred by the processing means in parallel
with the processing of addresses of font pattern information from
the second area of the frame buffer.
Representative claim 19 is reproduced as follows:
19. A method of controlling a graphic display system
comprising the steps of:
memorizing graphic information to be outputted to an
output means in a first area of a frame buffer;
memorizing font pattern information of a character in a
second area of said frame buffer in accordance with coded
information of said character;
providing, by providing means, coded information of a
character to processing means from external of said system, said
processing means being connected to said providing means via a
first bus and to said frame buffer via a second bus;
processing, by said processing means, addresses of font
pattern information memorized in said second area of said frame
buffer on the basis of said coded information; and
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Application 08/625,241
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transferring, by said processing means in parallel with
said processing step, font pattern information specified by said
addresses from said second area of said frame buffer to a
predetermined output position of said first area of said frame
buffer.
The examiner relies on the following references:
Katsura et al. (Katsura 1) 4,947,342 Aug. 07, 1990
Katsura et al. (Katsura 2) 5,751,930 May 12, 1998
Fleming et al. (Fleming) WO 82/04153 Nov. 25, 1982
Harold S. Stone, Microcomputer Interfacing, 1982 by Addison-
Wesley Publishing Company, Inc., pages 1-6.
Claims 19-22 and 31-33 stand rejected under the
judicially created doctrine of obviousness-type double patenting
as being unpatentable over the invention claimed in Katsura 1 in
view of Stone. Claims 19-22 and 31-33 also stand provisionally
rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over the invention
claimed in copending application Serial No. 08/213,820 in view of
Stone. Copending application Serial No. 08/213,820 has become U.
S. Patent No. 5,751,930 (Katsura 2), and this rejection will now
be considered as an actual double patenting rejection based on
Katsura 2. Finally, claims 19-22 and 31-33 stand rejected under
35 U.S.C. § 103 as being unpatentable over the teachings of
Fleming in view of Stone.
Appeal No. 2000-0064
Application 08/625,241
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At the oral hearing assigned for this appeal, appellants’
representative indicated that appellants wished to withdraw the
appeal with respect to the two rejections based on obviousness-
type double patenting because they were prepared to file a
terminal disclaimer if necessary. In view of this indication by
appellants’ representative, we will only consider the rejection
of claims 19-22 and 31-33 under 35 U.S.C. § 103 based on Fleming
and Stone. We do not address the merits of the obviousness-type
double patenting rejections or of any of the arguments made with
respect to these rejections.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
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Application 08/625,241
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rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 19-22 and 31-33. Accordingly, we reverse.
At the outset, we note that appellants have requested
that we remand this appeal to the examiner based on appellants’
view that the examiner’s answer has improperly made a new ground
of rejection [Reply Brief, footnote 1]. To the extent that
appellants’ request asserts that this rejection is not properly
before us, we do not agree. Appellants have raised the question
that the examiner’s answer improperly includes a new ground of
rejection in two separate petitions to the Commissioner and in a
request for remand addressed to the Board. The two petitions and
the request for remand have all been decided on the merits
adversely to appellants. Thus, the Commissioner and the Chief
Administrative Patent Judge have ruled that the examiner’s answer
does not set forth a new ground of rejection in violation of 37
CFR § 1.193(a)(2).
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Application 08/625,241
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To the extent that appellants’ request asks that we use
our discretionary authority to remand this appeal to the
examiner, we also decline to remand on that basis. The Board can
remand an appeal to the examiner to request clarification of the
record. In this appeal, however, the record is clear. The
rejection made in the examiner’s answer is identical to the
rejection made in the final rejection except that the reference
to Stone, which was clearly used in the final rejection, has now
been identified in the statement of the rejection. No
clarification of the record is necessary because both the
examiner and appellants have made their positions on Stone clear
on this record. The change in the statement of the rejection in
the examiner’s answer was a technical change rather than a
substantive change. Therefore, this rejection is properly before
us, and we will decide this appeal on the merits.
We now consider the single remaining rejection of claims
19-22 and 31-33 under 35 U.S.C. § 103 as being unpatentable over
the teachings of Fleming and Stone. In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
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Application 08/625,241
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See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references to
arrive at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
Appeal No. 2000-0064
Application 08/625,241
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and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
The examiner notes that Fleming fails to explicitly
disclose the limitation of transferring information in parallel
with the processing of information. The examiner cites Stone as
teaching that this is known in the art. The examiner finds that
it would have been obvious to the artisan to incorporate the
teachings of Stone into Fleming’s device [answer, pages 8-11].
Appellants argue that the examiner’s reliance on a small
introductory portion of the Stone textbook is misleading.
Appellants also argue that Fleming does not teach the first and
second buses as asserted by the examiner. Appellants further
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Application 08/625,241
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argue that the portion of Stone relied on by the examiner does
not support the parallel processing and transferring of
information as claimed. With respect to claims 31 and 32,
appellants additionally argue that the applied prior art does not
teach or suggest the first and second registers as claimed. With
respect to claim 33, appellants additionally argue that the
examiner has failed to properly apply a “means-plus-function”
analysis to this claim [brief, pages 5-12].
The examiner responds that the first bus in the claimed
invention corresponds to the communication link in Fleming. The
examiner notes that the claim language on appeal now is similar
to claim language considered by the Board in a previous decision.
The examiner also responds that the processing and transferring
steps in Fleming are performed in parallel. The examiner also
notes that Stone teaches that parallel processing was well known.
With respect to claims 31 and 32, the examiner takes Official
Notice that registers for storing addresses were well known, and
the examiner cites a Motorola manual for support of this
position. With respect to claim 33, the examiner responds that
Fleming in view of Stone discloses the same processing as claim
Appeal No. 2000-0064
Application 08/625,241
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33 and, therefore, the processing means are equivalent [answer,
pages 11-14].
Appellants respond that the communication link in Fleming
is not a bus as that term should be interpreted. Appellants
challenge the examiner’s assertion that this question was decided
in the previous Board decision. Appellants note that the claim
identified in the previous decision was not, in fact, the claim
which was on appeal. Appellants argue that the previous Board
decision did not state that the processing and transferring steps
in Fleming occurred in parallel, but rather, that one step
occurred before the other. Appellants also respond that merely
because parallel processing was known does not automatically mean
that one would have been motivated to use parallel processing in
a specific application. Appellants challenge the propriety of
the Official Notice taken by the examiner. Finally, appellants
argue that the Fleming and Stone references do not have the
structural equivalent of the single processor means disclosed in
their specification [reply brief].
We agree with the arguments presented by appellants in
the briefs. First, we note that the two key features argued by
appellants on this appeal were not considered in the previous
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Application 08/625,241
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Board decision. Although the wrong claim was mistakenly inserted
into the previous Board decision, the decision itself quotes from
the correct version of the claims on appeal. Thus, the previous
Board decision made no findings with respect to the presently
claimed first and second buses and the claimed parallel
processing and transferring of information. To the extent that
the examiner’s position considers that the previous Board
decision addressed these features, that position is in error.
Appellants are correct to argue that the communication
link in Fleming is not a bus. It appears to be a radio link of
some kind. Although we would prefer to be considering arguments
directed to the obviousness of replacing the communication link
of Fleming with a bus, such arguments are not of record because
the examiner’s finding is that the communication link is a bus.
As argued by appellants in the reply brief and unrebutted by the
examiner, this finding of the examiner is erroneous.
We also agree with appellants that the portion of Stone
relied on by the examiner does not support the obviousness of the
parallel processing and transferring as claimed. The examiner
refers to the portion of Stone wherein it states “[t]he execution
Appeal No. 2000-0064
Application 08/625,241
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of a single instruction, in general, involves one or more
additional bus transactions that depend on the instruction
executed. For example, the processor may read from or write to
memory to exchange data between internal registers and memory.”
We do not find any relevance in this passage to the concept of
parallel processing. The passage seems to suggest that execution
of a single instruction may require several sequential uses of
the bus to complete the execution. The examiner’s position that
this passage somehow suggests parallel processing is clearly
erroneous.
We also note that appellants do not claim to have
invented parallel processing. Parallel processing, as a general
concept, was well known in the data processing arts. We agree
with appellants, however, that the mere knowledge of parallel
processing by the artisan does not establish the obviousness of
using parallel processing in the manner specifically recited in
appellants’ claims. The examiner has failed to address the
specific question of why the parallel processing as recited in
the claimed invention would have been obvious within the meaning
of 35 U.S.C. § 103. Therefore, the examiner has failed to
establish a prima facie case of obviousness.
Appeal No. 2000-0064
Application 08/625,241
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Since each of the claims on appeal recites at least these
features discussed above, we do not sustain the examiner’s
rejection of any of claims 19-22 and 31-33 based on the teachings
of Fleming and Stone. As noted above, this decision offers no
position on the merits of the rejections based on obviousness-
type double patenting. In summary, the decision of the examiner
rejecting claims 19-22 and 31-33 under 35 U.S.C. § 103 is
reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 2000-0064
Application 08/625,241
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