Ex parte LUM et al.

Board of Patent Appeals and Interferences

Jul 31, 2001

08425741 (B.P.A.I. Jul. 31, 2001)

-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today was not written for publication and is not
binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SANFORD S. LUM, ADRIAN HARTOG, FRIDTJOF M.G. WEIGEL,
JOSH GROSSMAN and DAN O. GUDMUNDSON
________________
Appeal No. 1999-0409
Application 08/425,741
________________
ON BRIEF
________________
Before JERRY SMITH, DIXON and BARRY, 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 1-12, which constitute
all the claims in the application.
The disclosed invention pertains to a method for
providing text data for display in a processor controlled
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apparatus.
Representative claim 1 is reproduced as follows:
1. A method of providing text data for display in a
processor controlled apparatus comprising:
(a) storing data defining a text character in a
memory, in packed monochrome bit map form,
(b) addressing the memory to read the text character
data,
(c) providing the text character in packed form to a
graphics processor circuit,
(d) performing a bitblt operation on each bit of the
packed form of text character while providing a color
attribute, and
(e) storing the packed text character having a color
attribute for subsequent display.
The examiner relies on the following references:
Guttag et al. (Guttag) 5,522,082 May 28, 1996
(filed Oct. 23, 1992)
Morse et al. (Morse) 5,590,260 Dec. 31, 1996
(filed Dec. 30, 1993)
The admitted prior art.
Claims 1-12 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers the admitted prior
art in view of Guttag and Morse.
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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
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 the claims on appeal. Accordingly, we reverse.
Before we discuss the substantive issues in this case,
we note that appellants have asked us to rule on the propriety
of the action of March 31, 1997 being made final by the
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examiner [reply brief]. The question of the propriety of
making an Office action final, however, is not within our
jurisdiction. We only decide if rejections have been properly
made. The proper way for an applicant to contest a premature
final rejection is to
petition the Commissioner under 37 CFR § 1.181. Thus, we do
not rule on this question.
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. 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
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Application 08/425,741
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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
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
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§ 1.192(a)].
We consider first the rejection of independent claims
1 and 2. The examiner finds that the admitted prior art
teaches all the features of these claims except for a method
for addressing a memory and for performing a bit block
transfer on each bit of the packed form of text character
while providing a color attribute. The examiner cites Guttag
as teaching a method comprising registers for storing
addressing information of memories, and the examiner finds
that it would have been obvious to the artisan to have
modified the admitted prior art with the teachings of Guttag
so that data could be written into or read out from a
predetermined position of memory. The examiner cites Morse as
teaching a bit block transfer [bitblt] on each bit of the
packed form of text data. The examiner finds that it would
have been obvious to modify the admitted prior art with the
teachings of Morse to increase the display efficiency of a
data processing system [answer, pages 3-4].
Appellants argue that the admitted prior art teaches
that a bit map is stored in off-screen memory 23 in sparse
monochrome form and not in packed form as contended by the
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examiner [brief, page 9]. Thus, appellants argue that the
bitblt of the admitted prior art is performed on sparse bit-
map data rather than on packed bit-map data as claimed [id.,
pages 9-11]. With respect to independent claim 2, appellants
additionally argue that the bitblt operation set forth in
clause (c) of claim 2 is not the same as the bitblt operation
taught by Morse [id., pages 12-15].
The examiner responds that the term “packed text
character” is very broad and is met by appellants’ block of
text character data or by Morse’s rectangular region of text
character data. The examiner finds that the text data is in
packed form regardless of whether the text data is packed with
spaces [answer, pages 5-6]. With respect to claim 2, the
examiner simply disagrees with appellants.
We agree with appellants’ position as argued in the
briefs. The examiner cannot rely on the admitted prior art
and then change what is taught by the admitted prior art. The
admitted prior art indicates that in monochrome bitblt,
“sparse monochrome (i.e. only one bit in each byte) sources
have been used for the color expansion of one destination
pixel” [specification, page 2]. The admitted prior art also
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notes that “[c]haracter bitmaps provided by the Windows GUI
are mostly packed, that is, all bits per source byte are used
during the bitblt” [specification, pages 2-3]. Thus, the
admitted prior art clearly defines the difference between
sparse data and packed data.
There is no question that the admitted prior art
teaches a bitblt operation being performed on a sparse
monochrome bitmap [off-screen memory 23 of admitted prior art
Figure 2]. The examiner’s attempt to redefine this sparse
monochrome bitmap memory as a packed form of text character
memory has to fail as it contradicts what is clearly taught by
the admitted prior art. Since the admitted prior art does not
teach a bitblt operation on each bit of the packed form of
text character as recited in independent claim 1, the examiner
has failed to establish a prima facie case of obviousness.
Therefore, we do not sustain the examiner’s rejection of claim
1 or of claims 3-7 which depend therefrom.
With respect to independent claim 2, we agree with
appellants that the bitblt steps set forth in claim 2 are not
taught or suggested by Morse for the reasons noted by
appellants in the briefs. Therefore, we do not sustain the
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examiner’s rejection of independent claim 2 or of claims 8-12
which depend therefrom.
In summary, we have not sustained the examiner’s
rejection of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-12 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
JOSEPH L. DIXON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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