Ex parte Murphy

Board of Patent Appeals and Interferences

Jul 31, 2001

08659132 (B.P.A.I. Jul. 31, 2001)

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written for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NICHOLAS J. N. MURPHY
____________
Appeal No. 1999-1845
Application No. 08/659,132
____________
HEARD: June 14, 2001
____________
Before JERRY SMITH, BARRETT, 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 1-21, which constitute
all the claims in the application.
The disclosed invention pertains to a graphics
processing system in which the same address locations of a
buffer memory are used to store both color values and depth
values.
Representative claim 1 is reproduced as follows:
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Application No. 08/659,132
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1. A rendering system comprising:
means for decomposing primitives into
fragments to be rendered;
a processor for computing depth
values, and color values including a
blending parameter, for individual ones of
said fragments;
means for reading a local buffer
memory in which depth and/or color values
are stored, and for comparing the compound
depth values for individual ones of said
fragments against values retrieved from
said local buffer, and conditionally
storing the computed depth or color values
depending on the results of the comparison;
and
circuitry for forcing the blend
parameter to a predetermined value;
whereby said circuitry for forcing can
assure that no color value will ever be
equal to a depth value, even when color and
depth values are overwritten into the same
set of address locations.
The examiner relies on the following references:
Deering 4,885,703 Dec. 05, 1989
Hardy et al. (Hardy) 5,640,496 Jun. 17, 1997
(filed Feb. 04,
1991)
Claims 1-21 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Deering in view of
Hardy.
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Application No. 08/659,132
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief 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 appellant’s
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 1-21. Accordingly, we reverse.
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
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Application No. 08/659,132
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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
and/or evidence. Obviousness is then determined on the basis
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Application No. 08/659,132
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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 appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
With respect to each of independent claims 1, 5, 8 and
10, the examiner finds that Deering teaches the claimed
invention except for the recitation of forcing the blending
parameter to a predetermined value. Hardy is cited to teach a
blend parameter (opacity) which is set to a predetermined
value. The examiner finds that it would have been obvious to
the artisan to configure Deering’s system to include the blend
parameter in pixel attributes to yield a visual sense of
transparency [answer, pages 3-4].
Appellant argues that the applied prior art does not
teach or suggest that the exact same memory locations are used
to store both depth and color data so that the total memory
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requirement is reduced as recited in the claims on appeal
[brief, pages 9-16]. Although Deering uses separate buffers
for storing depth values and color values, the examiner
responds that the same address location of each memory is used
to respectively store the depth and color values. The
examiner finds the language of the claimed invention to be met
by this operation.
We agree with appellant that a critical feature of the
disclosed invention is not taught or suggested by Deering and
Hardy. This critical feature is the use of the same memory
locations to separately store the depth values and the color
values. The question is whether appellant’s claims have
properly recited this feature.
A major part of the problem appears to be appellant’s use
of the phrase "depth and/or color values" or "depth or color
values" in the claims. Appellant is clearly ascribing a
meaning to the first phrase which requires that depth and
color values be considered together whereas the examiner is
essentially interpreting the first phrase as being met by
either depth values or color values. Thus, the examiner looks
at the two buffer memories of Deering as meeting the claimed
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invention because each memory stores depth values or color
values. This interpretation is the correct way to interpret
claims for purposes of determining patentability over the
prior art.
There is one recitation of independent claims 1, 5 and 8,
however, that has not been discussed by the examiner. Each of
these claims recites that a condition is assured "even when
color and depth values are overwritten into the same set of
address locations." Appellant argues that the concept of
color and depth values being overwritten requires that the
same physical memory be used to store both of these values,
and is not met by the two separate memories of Deering.
We agree with appellant. Although color and depth values
might be written into the same set of address locations in
Deering, they would not be overwritten into the same set of
address locations because color values and depth values in
Deering are stored in separate memories. We interpret the
phrase "overwritten into the same address locations" to
require that data be written into the same physical space and
not just the same address number. Independent claims 1, 5 and
8 require that the same memory store both the color values and
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the depth values by overwriting one with the other. The
applied prior art does not teach this feature of the claimed
invention.
Although independent claim 10 does not have the
limitation quoted above, appellant argues that the applied
prior art does not teach the four functionally distinct units
operating asynchronously and in a pipelined fashion as recited
in claim 10. The examiner responds that Deering teaches
polygon processors which perform different functions in a
pipeline fashion.
We agree with appellant that the examiner has failed to
consider every limitation of independent claim 10. We can
find no teaching or suggestion on this record for the claimed
recitation of asynchronous operation of the four functionally
distinct processing units or that the units are mutually
interconnected to provide a pipelined MIMD processing
architecture as claimed. The examiner’s failure to address
these features of claim 10 results in the failure to establish
a prima facie case of obviousness.
In conclusion, we have not sustained the examiner’s
rejection of any of the independent claims on appeal.
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Application No. 08/659,132
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Consequently, we also do not sustain the rejection of any of
the claims which depend therefrom. Accordingly, the decision
of the examiner rejecting claims 1-21 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1999-1845
Application No. 08/659,132
10
ROBERT GROOVER
17000 PRESTON ROAD, #230
DALLAS, TX 75248
Shereece
Appeal No. 1999-1845
Application No. 08/659,132
APJ JERRY SMITH
APJ
APJ KEYBOARD()
REVERSED
Prepared: March 27, 2002