Ex Parte Laney et al

Board of Patent Appeals and Interferences

Jan 31, 2011

10643421 (B.P.A.I. Jan. 31, 2011)

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.
10/643,421 08/19/2003 Clifton W. Laney P17352 4529
94221 7590 02/01/2011
Buckley, Maschoff & Talwalkar LLC/
Intel Corporation
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
VU, KIEU D
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
02/01/2011 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 CLIFTON W. LANEY, ROBERT A. DUNSTAN, and
DAN NOWLIN
____________

Appeal 2009-005079
Application 10/643,421
Technology Center 2100
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge

DECISION ON APPEAL1

1 The two-month time 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” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005079
Application 10/643,421

1
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 1-16 and 19-26. Claims 17 and
18 have been cancelled. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We Affirm.

Claim 1 is illustrative:
1. A method, comprising:

determining that a display unit has transitioned from a
higher power state to a power off state; and

arranging for an opaque graphical user interface window
to be created in a graphics memory unit in response to the
determination.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Bagnas US 5,805,163 Sept. 8, 1998
Yanagisawa US 2001/0020928 Sept. 13, 2001
Seroussi US 2003/0005193 Jan. 2, 2003
Takase US 6,504,534 Jan. 7, 2003
Kusanagi US 6,961,034 Nov. 1, 2005
(filed Jan. 23, 2001)

Appellants appeal the following rejections:
Claims 24 and 25 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Takase.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
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unpatentable over the combination of Takase and Seroussi.
Claims 1, 2, 4, 6, 8-11, and 13-15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Takase and
Yanagisawa.
Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takase, Yanagisawa, and Seroussi.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Takase, Yanagisawa, and Kusanagi.
Claims 16, 19, and 21-23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bagnas and Yanagisawa.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bagnas, Yanagisawa, and Kusanagi.

Claims 24 and 25
Appellants contend that Takase fails to disclose “creating an opaque
GUI window responsive to a determination that a display unit is off.” (App.
Br. 7).
Based on Appellants’ arguments, we select claim 24 as the
representative claim of this group. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Under § 102, did the Examiner err in determining that Takase
discloses:
an opaque window is created in the random access memory unit
responsive to a determination that a display unit is to be in an off state, as
recited in representative claim 24?
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Application 10/643,421

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FACTUAL FINDINGS (FF)
1. Appellants’ Specification discloses that Fig. 4 is a flow chart of
a method that may be performed “when a display unit is turned off (e.g.,
immediately before or after the display unit turns off) according to some
embodiments.” (Spec. 5, ll. 17-19)(emphasis added).
2. Takase discloses that in a power save mode the video signal
from the host computer is interrupted so that the CRT 10 displays a
homogeneous black picture image. (Col. 10, ll. 39-47)
3. Takase discloses that when the CRT 10 continuously displays
the same image for a constant period of time in an operating state of the
“screen saver,” the video signal from the host computer is interrupted. (Col.
10, ll. 42-45).
4. Takase discloses that “a power supply control method is
provided for a CRT display unit which is adapted to turn off a power circuit
after a lapse of a predetermined period of time, as well as, to turn off a
heater after a further lapse of a predetermined period of time when a ‘screen
saver’ operates so that a CRT displays a homogeneous black picture image
. . . .” (Col. 2, ll. 8-15).

ANALYSIS
Based upon our review of the record, we find unconvincing
Appellants’ argument that Takase fails to disclose “creating an opaque GUI
window responsive to a determination that a display unit is off.” (App. Br.
7).
We note that claim 24 requires that “an opaque GUI window is
created in the random access memory unit responsive to a determination that
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a display unit is to be in an off state.” (emphasis added). We conclude that a
broad but reasonable interpretation of the limitation of determining that “a
display unit is to be in an off state” (claim 24) does not actually require the
display unit to be off. Thus, we agree with the Examiner (Ans. 13) that the
time period in which the display unit is “to be in an off state” (as claimed)
includes, in light of Appellants’ Specification (FF 1), a period immediately
before the display unit is actually off. We further agree with the Examiner’s
construction that that “off” broadly but reasonably reads on a state of
inactivity. (Ans. 13).
In light of the above construction, we find that Takase discloses
creating an opaque window (black picture image) in a graphics memory. (FF
2). We further find that Takase discloses creating the black picture image
(opaque window) in response to a determination that the display unit is to be
off (i.e., in a period of inactivity). (FF 3-4).
Therefore, we find the Examiner did not err in determining that
Takase discloses “an opaque window is created in the random access
memory unit responsive to a determination that a display unit is to be in an
off state,” as recited in representative claim 24. (emphasis added).
Accordingly, we affirm the Examiner’s § 102 rejection of independent claim
24 and claim 25 which falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claim 26
Appellants recite the limitations of dependent claim 26. (App. Br. 8).
We note that a statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim. See
37 C.F.R. § 41.37(c)(1)(vii). Appellants also contend that Seroussi does not
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cure the deficiencies of Takase. (Id.). However, we find no deficiencies in
Takase for the reasons discussed supra regarding independent claim 24.
Therefore, we affirm the Examiner’s rejection of claim 26 for the same
reasons discussed above regarding claim 24.

Claims 1, 2, 4, 6, 8-11, and 13-15
Appellants note that clam 1 recites ‘“determining that a display unit
has transitioned from a higher power state to a power off state.’ Moreover,
it is arranged ‘for an opaque graphical user interface window to be created in
a graphics memory unit in response to the determination.’” (App. Br. 8).
Appellants further contend that the Examiner has engaged in impermissible
hindsight reconstruction. (App. Br. 9).
Based on Appellants’ arguments, we select claim 1 as the
representative claim of this group. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
1) Under §103, did the Examiner err in determining that the cited
references would have taught or suggested arranging for an opaque graphical
user interface window to be created in a graphics memory unit in response to
the determination, as recited in representative claim 1?
2) Under §103, did the Examiner err by improperly combining the
Takase and Yanagisawa references?
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FACTUAL FINDINGS (FF)
With respect to the limitations at issue, we adopt the Examiner’s
findings in the Answer and Final Office Action as our own. (Ans. 6, 14;
Final Rejection 4).
ANALYSIS
Issue 1
Based upon our review of the record, we find Appellants’ contention
unpersuasive that the cited references do not teach or suggest arranging for
an opaque graphical user interface window to be created in a graphics
memory unit in response to the determination that a display unit has
transitioned from a higher power state to a power off state. (App. Br. 8; see
also claim 1).
We note that the language of claim 1 recites “arranging for an opaque
graphical user interface to be created. . .” (emphasis added). Thus, the
opaque GUI window is not positively recited as actually being created in a
graphics memory unit. We note that “[a]n intended use or purpose usually
will not limit the scope of the claim because such statements usually do no
more than define a context in which the invention operates.” Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the
claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
This reasoning is applicable here. Therefore, we conclude that the
recited language of claim 1 (“arranging for . . . to be created”) is a statement
of intended purpose and is not given patentable weight. On this record, we
find Appellants have not shown the Examiner erred in reaching the legal
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conclusion of obviousness regarding the disputed limitations of
representative claim 1.

Issue 2
We next decide the question whether the Examiner erred by
improperly combining the Takase and Yanagisawa references.
In particular, Appellants contend that the Examiner has engaged in
impermissible hindsight reconstruction. (App. Br. 9). While we are fully
aware that hindsight bias often plagues determinations of obviousness,
Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that
the Supreme Court has clearly indicated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results,” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Here, Appellants have failed to demonstrate that the Examiner’s
proffered combination of the familiar elements in Takase and Yanagisawa
would have yielded anything more than what one of ordinary skill in the art
would have expected from such a combination. “[W]hen a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (citing
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976))
This reasoning is applicable here. For the aforementioned reasons, we
affirm the Examiner’s § 103 rejection of representative claim 1, and claims
2, 4, 6, 8-11, and 13-15, which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Claims 3 and 12
Based on Appellants’ arguments, we select claim 3 as the
representative claim of this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants recite the limitations of dependent claim 3. (App. Br. 10).
We again note that a statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Appellants also contend that Seroussi does
not cure the deficiencies of Takase. (Id.). However, we find no deficiencies
in Takase for the reasons discussed supra regarding independent claim 24.
Therefore, we affirm the Examiner’s rejection of claim 3 and claim 12 which
falls therewith for the same reasons discussed above regarding independent
claims 1 and 24. See 37 C.F.R. § 41.37(c)(1)(vii).

Claim 5
Appellants acknowledge that Kusanagi teaches that a user may power
off an LCD display. (App. Br. 10). Thus, we find that this admitted teaching
clearly meets the recited limitation of claim 5: “receiving from a user a
request to turn off the display unit.” However, Appellants further contend
that they do not understand why one of ordinary skill in the art would have
combined the references to provide the user with the ability to control the
display of opaque window (black window). (Id.).

ISSUE
(1) Under §103, did the Examiner err in combining Takase,
Yanagisawa, and Kusanagi?
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FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action, with respect to the limitations at issue, as our own. (Ans. 9-10, 16;
Final Rejection 7-8).
ANALYSIS
ISSUE
We decide the question whether the Examiner erred in combining
Takase, Yanagisawa, and Kusanagi.
We note that Appellants have acknowledged that Kusanagi teaches
that a user may power off an LCD display. (App. Br. 10). We find powering
off a display is clearly a familiar practice known to any computer user –
moreover, turning off a display clearly has a predictable result. As stated
above, “[t]he combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results,”
KSR, 550 U.S. at 416. Therefore, we find Appellants’ arguments unavailing
regarding the Examiner’s proffered combination of Takase, Yanagisawa,
and Kusanagi. We affirm the Examiner’s rejection of claim 5.

Claims 16, 19, and 21-23
Based on Appellants’ arguments, we select claim 16 as the
representative claim of this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the cited references fail to teach or suggest
determining that a display unit is powered off and in response to the
transition, arranging for a third window (opaque) of the operating system
(OS) to be automatically created. (App. Br. 11)

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ISSUE
Under §103, did the Examiner err in determining that the cited
references would have taught or suggested arranging for a third window of
the OS to be automatically created in response to a display unit transitioning
from a power on state to a power off state?

FACTUAL FINDINGS (FF)
With respect to the limitations at issue, we adopt the Examiner’s
findings in the Answer and Final Office Action as our own. (Ans. 10-11,
17-18; Final Rejection 8-9).
ANALYSIS
Similar to our discussion above regarding claim 1, we conclude that
the recited limitation of “arranging for . . . to be automatically created”
(claim 16)) is a statement of intended purpose and is not given patentable
weight.
See Boehringer 320 F.3d at 1345; Stencel 828 F.2d at 754. On this
record, Appellants have not shown the Examiner erred in reaching the legal
conclusion of obviousness regarding the disputed limitations of
representative claim 16. Therefore, we affirm the rejection of representative
claim 16 and claims 19, and 21-23 which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 20
We note that although claim 20 is argued separately, Appellants’
arguments are essentially commensurate with those presented for claim 5,
discussed supra, which we did not find persuasive. (App. Br. 11).
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We therefore affirm the rejection of claim 20 for the same reasons as
those discussed above for claim 5.

DECISION
We affirm the Examiner’s § 102 rejection of claims 24 and 25.
We affirm the Examiner’s § 103 rejections of claims 1-16, 19-23 and
26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

Erc
Buckley, Maschoff & Talwalkar LLC/
Intel Corporation
50 Locust Avenue
New Canaan CT 06840