Ex Parte Mills et al

Board of Patent Appeals and Interferences

Jun 21, 2002

08667826 (B.P.A.I. Jun. 21, 2002)

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written for publication and is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KARL S. MILLS,
RICHARD C.A. OWEN,
and
MARK E. BONNELCKE
_____________
Appeal No. 1999-2614
Application No. 08/667,826
______________
ON BRIEF
_______________
Before FLEMING, RUGGIERO, and GROSS, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-22, which are all of the claims pending in the present
application. An amendment filed March 26, 1999 after final
rejection, which corrected a typographical error in claim 20, was
approved for entry by the Examiner.
Appeal No. 1999-2614
Application No. 08/667,826
2
The claimed invention relates to a graphics controller
circuit which includes a register file with a plurality of
registers. Commands addressed to virtual registers are accepted
by the graphics controller, and a plurality of instructions are
generated including instructions to access one of the registers
in the register file. According to Appellants (specification,
page 6), by having commands which are directed to virtual
registers and generating multiple instructions in response
thereto, the graphics controller permits an access command to be
combined into one command on the system bus, thereby minimizing
the amount of data transferred over the system bus.
Claim 1 is illustrative of the invention and reads as
follows:
1. A graphics controller circuit for use in a computer
system, the computer system comprising a bus and a host, the
host being coupled to the bus, comprising:
a host interface for receiving a single command on the
bus from the host, and generating a plurality of
instructions in response to the command, at least one of the
plurality of instructions comprising a set register
instruction, and at least another of the plurality of
instructions being an execute instruction; and
an execution circuit, coupled to the host interface,
for executing the plurality of instructions to execute the
command.
Appeal No. 1999-2614
Application No. 08/667,826
3
The Examiner relies on the following prior art:
Grunewald et al. (Grunewald) 4,616,220 Oct. 07, 1986
Sone et al. (Sone) 5,452,469 Sep. 19, 1995
(filed Dec. 09, 1993)
Claims 1-22 stand finally rejected under 35 U.S.C. § 103(a)
as being unpatentable over Grunewald in view of Sone.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief (Paper No. 19) and
Answer (Paper No. 20) for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection, 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,
Appellants’ arguments set forth in the Brief 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
claims 1-22. Accordingly, we reverse.
Appeal No. 1999-2614
Application No. 08/667,826
4
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, 1073-74, 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,
17-18, 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).
Appeal No. 1999-2614
Application No. 08/667,826
5
With respect to each of independent claims 1, 8, and 16, the
Examiner, as the basis for the obviousness rejection, proposes to
modify the graphics controller system of Grunewald. According to
the Examiner, Grunewald discloses the claimed invention except
for the failure “ . . . to explicitly teach at least one of
plurality of instructions comprising a set register instruction
and at least another of the plurality of instructions being an
execute instruction.” (Answer, page 3). To address this
deficiency, the Examiner turns to Sone which, in the Examiner’s
view, discloses the claimed set register and execute
instructions. The Examiner’s stated position (id. at 4) suggests
the obviousness to the skilled artisan of applying the set
register and execution instruction teachings of Sone to the
graphic controller system of Grunewald in order to achieve high
resolution color graphic images.
In response, Appellants assert that the Examiner has not
established a prima facie case of obviousness since all of the
limitations of the appealed claims are not taught or suggested by
the applied Grunewald and Sone references. After careful review
of the applied prior art references in light of the arguments of
record, we are in agreement with Appellants’ position as stated
in the Brief. As argued by Appellants (Brief, pages 8 and 9),
Appeal No. 1999-2614
Application No. 08/667,826
6
the Examiner has pointed to no disclosure in Grunewald that would
suggest any support for the Examiner’s assertion that Grunewald
discloses the generation of a combined command for setting a
register and executing an instruction as presently claimed. Our
interpretation of the disclosure of Grunewald coincides with that
of Appellants, i.e., while Grunewald describes the sending of
pixel data as an address to a look up table to output the
contents of the table at that particular address, we find no
disclosure of the generation of a combined set register and
execute command as claimed.
We have reviewed the Sone reference, applied by the Examiner
(Answer, page 4) to supply a teaching of generating plural
instructions including set register and execute instructions, and
we find no disclosure which would overcome the innate deficiency
of Grunewald disclosed above. As such, even assuming, arguendo,
that the skilled artisan would have been motivated to make the
Examiner’s proposed combination, the resulting system would not
possess the features present in the claims on appeal.
Further, even assuming the correctness of the Examiner’s
interpretation of the disclosure of Sone, we find no indication
as to how and in what manner Sone would be combined with
Grunewald. Although the Examiner has suggested the accomplishing
Appeal No. 1999-2614
Application No. 08/667,826
7
of high resolution color graphic images as motivation for the
skilled artisan to modify Grunewald with Sone, we find no
indication from the Examiner as to how such a combination would
accomplish the desired result. The Examiner must not only make
requisite findings, based on the evidence of record, but must
also explain the reasoning by which the findings are deemed to
support the conclusion of obviousness. See In re Lee, 277 F.3d
1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002). In our
opinion, any suggestion to modify the disclosure of Grunewald to
add the plural instruction generating feature of Sone could only
come from an improper attempt to reconstruct Appellants’
invention in hindsight.
Accordingly, since the Examiner has not established a prima
facie case of obviousness, the rejection of independent claims 1,
8 and 16, as well as claims 2-7, 9-14 and 17 dependent thereon,
over the combination of Grunewald and Sone is not sustained.
Turning to a consideration of the Examiner’s obviousness
rejection of independent claims 15, 18, 20, and 22 and dependent
claims 19 and 21, we do not sustain this rejection as well for
all of the reasons discussed supra. In addition, we find no
Appeal No. 1999-2614
Application No. 08/667,826
8
disclosure in either of the applied Grunewald and Sone references
of the execution of a command if the register address of a
command is that of a virtual register as set forth in independent
claims 15, 18, 20, and 22.
In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of any of the claims on appeal. Therefore,
the decision of the Examiner rejecting claims 1-22 is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JFR:hh
Appeal No. 1999-2614
Application No. 08/667,826
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ROBERT P. BELL
8033 WASHINGTON RD.
ALEXANDRIA, VA 22308