Ex Parte Pai et al

Board of Patent Appeals and Interferences

Mar 4, 2009

10463170 (B.P.A.I. Mar. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte R. LAKSHMIKANTH PAI, RAVINDRA BIDNUR,
SANDEEP BHATIA, L. RAMAKRISHNAN,
and VIJAYANAND ARALAGUPPE
____________

Appeal 2008-5276
Application 10/463,170
Technology Center 2600
____________

Decided: March 4, 20091
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY,
and R. EUGENE VARNDELL, JR., Administrative Patent Judges.

VARNDELL, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for response or filing an appeal or commencing
a civil action, as recited in 37 CFR § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5276
Application 10/463,170

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention claimed on appeal relates to a system, method, and
apparatus for accessing objects stored in a memory (Spec. 4). Claim 1,
which further illustrates and represents the invention claimed on appeal,
follows:
1. A method for retrieving an object from memory, said
method comprising:
fetching one or more data words, each of the data words
comprising a plurality of bytes, the object stored starting at a starting
byte in a particular one of the data words and ending at an ending byte
in another particular one of the data words, wherein there are a first
one or more bytes before the starting byte in the particular one of the
data words, and wherein there are a second one or more bytes after the
ending byte in the particular one of the data words; and
overwriting the first one or more bytes before the starting byte
in the particular one of the fetched data words, and the second one or
more bytes after the ending byte in the another particular one of the
fetched data words.

The Examiner relies on the following prior art references to show
unpatentability:
Ohgami US 4,700,182 Oct. 13, 1987
Munshi US 6,084,600 Jul. 4, 2000
Nishikawa US 6,750,871 B2 Jun. 15, 2004
Lee US 6,842,219 B2 Jan. 11, 2005
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The Final Rejection mailed on February 24, 2006 set forth five prior
art rejections on appeal as follows:
1. Claims 1-3 and 5 were rejected as being anticipated under 35
U.S.C. § 102(b) by Munshi.
2. Claim 4 was rejected as being obvious under 35 U.S.C. § 103(a)
over Munshi and Nishikawa.
3. Claims 6-8, 11-15, and 18-20 were rejected as being obvious under
35 U.S.C. § 103(a) over Munshi and Lee.
4. Claims 9 and 16 were rejected as being obvious under 35 U.S.C. §
103(a) over Munshi, Lee, and Ohgami.
5. Claims 10 and 17 were rejected as being obvious under 35 U.S.C.
§ 103(a) over Munshi, Lee, and Nishikawa.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Appeal Brief filed on July 24, 2007, the Examiner’s Answer
mailed on October 31, 2007, and the Reply Brief filed on December 31,
20072. Appellants only argue the patentability of independent claim 1 on
appeal (App. Br. 6-12; Reply Br. 6-12). Appellants’ Briefs contain no
separate arguments for claims other than claim 1 (App. Br. 6-12; Reply Br.
6-12). Arguments which Appellants could have made but did not make in
their Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii). Accordingly, claims 2, 3, and 5 stand or fall with
claim 1.

2 While both the Appeal Brief and Reply Brief have the date of July 25, 2007
on the first page, the USPTO records respectively set forth the filing dates of
July 24, 2007 and December 31, 2007 for these papers. In addition, the first
page of the Reply Brief is entitled “Appeal Brief.”
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On page 9 in the Reply Brief, Appellants request that the prosecution
be reopened because the Examiner allegedly argued a new position in the
Examiner's Answer. We have no jurisdiction over this request and make no
decision in connection therewith. A request to reopen prosecution is decided
by the Examiner or upon petition.3

ISSUES
The Examiner identifies where Munshi teaches all limitations in claim
1. Appellants argue that Munshi does not teach the "object" stored starting
at a starting byte in a particular one of the data words and ending at an
ending byte in another particular one of the data words, as required in claim
1. In addition, Appellants argue that Munshi does not teach "overwriting the
first one or more bytes before the starting byte in a particular one of the
fetched data words, and the second one or more bytes after the ending byte
in the another particular one of the fetched data words," as required in claim
1 on appeal. Based on these contentions, we frame the issue as follows.
Under § 102 have Appellants shown that the Examiner erred in
finding that Munshi:
(1) teaches the "object" stored starting at a starting byte in a particular
one of the data words and ending at an ending byte in another

3 See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition….”).

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particular one of the data words as required in claim 1 on appeal,
and
(2) "overwriting the first one or more bytes before the starting byte in
a particular one of the fetched data words, and the second one or
more bytes after the ending byte in the another particular one of
the fetched data words," as required in claim 1 on appeal?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. It is known in the art that objects are stored in memory and that
objects include data structures for compressing video data (Spec. ¶¶ 0005,
0006).
2. It is known in the art that an object can start and end in the
middle of different data words (Spec. ¶ 0005; Munshi Fig. 3B). For
example, Munshi shows an alignment of pixel data within memory and
bitmap words (Fig. 3B). In case 321 of Munshi, the first (Pixel 1) and last
pixel (Pixel 5) of a pixel set are arranged in the middle of the data words 1
and 2 (Fig. 3B; col. 6, ll. 56-59). Case 322 of Munshi is similarly arranged
(Fig. 3B; col. 6, ll. 60-64).
3. Appellants explain that the bytes before and after the object can
comprise all zeros or another pattern indicative of null information (Spec. ¶
0027).
4. Munshi describes a method for retrieving an object (e.g., block
image) from memory (col. 1, ll. 8-12), where pixel data is transferred from
main memory to display memory (col. 3, ll. 19-24). The Munshi method
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comprises fetching one or more data words (col. 3, ll. 24-30), each of the
data words comprising a plurality of bytes (col. 5, ll. 3-7; col. 6, ll. 38-39;
Figs. 3A, 3B).
5. Munshi teaches a moving object (i.e., sprite 102), which includes
both patterned (color or opaque) pixels and transparent pixels (Fig. 1; col. 3,
ll. 51-53; col. 4, ll. 28-40, 51-52).
6. Munshi teaches that objects are retrieved and fetched from the
bitmap data structure 299 and output to the display memory 612 (Figs. 2B,
6; col. 9, ll. 20-22, 37-39). The data structure 299 includes offset addresses
(e.g., 211, 221) that indicate the number of bits to be skipped, because the
bitmap is transparent in those pixels (col. 5, ll. 26-60). The patterned blocks
in bitmap data structure 299 represent contiguous pixels, each of which is
separately addressed via an offset, i.e., offset 211, 221 (col. 6, ll. 27-36).
7. Munshi teaches software interpreting the database structure 299
(on the host CPU 601 or graphics interpreter 500) and modifying the pixel
values in display memory 612 accordingly (Figs. 5, 6; col. 7, ll. 45-49; col.
9, ll. 37-39). If the initial or final pixels within the set of contiguous pixels
within a fast bitmap do not align with the memory word boundaries, then
host CPU performs a read-modify-write cycle (col. 9 ll. 39-42). “This leaves
those pixels where the bitmap is transparent unmodified” (Figs. 4, 5; col. 9,
ll. 42-44).
8. Within the display memory of Munshi, when the bitmap changes
location, selected patterned pixels are rewritten while the transparent pixels
are not, which necessitates overriding in memory one or more patterned
pixels before and after the transparent pixels (col. 5, ll. 47-67; col. 7, ll. 26-
44).
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PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Anticipation is determined by first
construing the claims and then comparing the properly construed claims to
the prior art. In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346 (Fed.
Cir. 2002). During patent examination, the pending claims must be given
their broadest reasonable interpretation “consistent with the specification.”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).
Claims must be interpreted "in view of the specification" without importing
limitations from the specification into the claims unnecessarily. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Concerning the §103(a) rejections, it is well settled that “[a]nticipation
is the epitome of obviousness.” Connell v. Sears Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983).

ANALYSIS
As explained by the Examiner, the teachings of Munshi read on the
invention claimed on appeal (FF 1-8). Appellants do not establish any error
in the findings by the Examiner. Appellants argue that section or offset
address 221 in Munshi is not an object (Reply Br. 9). For this reason,
Appellants argue that the Examiner erred when finding that Munshi teaches
"the object stored starting at a starting byte in a particular one of the data
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words and ending at an ending byte in another particular one of the data
words" as required in claim 1 on appeal (Reply Br. 9-10).
The term "object" has a broad meaning, which can include data
structures for compressing video data (FF 1), transparent pixels (FF 5), and
an offset address indicating a number of transparent pixels (FF 6), any of
which is found in Munshi. Accordingly, section or offset address 221 of
Munshi reads on an object as required in the claims on appeal. Furthermore,
Appellants' Specification and Munshi teach it is common in the art for an
object to start and end in the middle of different data words (FF 2), as
required in claim 1 on appeal.
Appellants also argue that bytes 213 and 214 of Munshi are ignored
and shown as “do not care” values, and therefore, these bytes are not
overwritten (Reply Br. 10). For this reason, Appellants argue that Munshi
does not teach "overwriting the first one or more bytes before the starting
byte in the particular one of the fetched data words, and the second one or
more bytes after the ending byte in the another particular one of the fetched
data words," as required in claim 1 on appeal. However, bytes 213 and 214
(ignore or do not care value bytes) of Munshi are no different than the bytes
before or after the pattern in the claims on appeal, which can comprise all
zeros or other pattern indicative of null information, as described in
Appellants' Specification (FF 3). Since these bytes in Munshi and
Appellants' claims can be the same value, Appellants' arguments establish no
error in the Examiner's factual findings.
Appellants further argue that the data structure 299 and the display
memory 612 of Munshi are different structures (App. Br. 10). For this
reason, Appellants argue that Munshi does not teach "overwriting the first
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one or more bytes before the starting byte in the particular one of the fetched
data words, and the second one or more bytes after the ending byte in
another particular one of the fetched data words," as required in claim 1 on
appeal (App. Br. 10). However, claim 1 on appeal does not require that the
object is stored in the display memory, and we cannot read this limitation
into the claim. Since Appellants' allegation of error does not correspond to a
claim limitation on appeal, it cannot establish error in the Examiner's
findings.
For the foregoing reasons, Appellants have not shown error in the
rejection of independent claim 1 over Munshi. Accordingly, we affirm the
§ 102 rejection of claim 1, as well as claims 2, 3, and 5 that fall therewith.
For similar reasons, we affirm the § 103 rejections of (1) claim 4 over
Munshi and Nishikawa; (2) claims 6-8, 11-15, and 18-20 over Munshi and
Lee; (3) claims 9 and 16 over Munshi, Lee, and Ohgami; and (4) claims 10
and 17 over Munshi, Lee, and Nishikawa. Appellants have not particularly
pointed out errors in the Examiner’s reasoning to persuasively rebut the
Examiner's prima facie case of obviousness, but merely rely on the same
arguments presented in connection with claim 1 (App. Br. 6-12; Reply Br. 6-
12). There is no substantive discussion in Appellants’ Briefs concerning any
§ 103(a) rejections (App. Br. 6-12; Reply Br. 6-12). Thus, we are not
persuaded that the Examiner erred in rejecting claims 4 and 6-20 for the
same reasons discussed above with respect to claim 1. The § 103 rejections
are therefore sustained.

CONCLUSION
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Appellants failed to establish any error in the Examiner’s position that
Munshi teaches each and every element in the claims on appeal.
Accordingly, we affirm all the Examiner's rejections, including:
1. The rejection of claims 1-3 and 5 as being anticipated under 35
U.S.C. § 102(b) by Munshi.
2. The rejection of claim 4 as being obvious under 35 U.S.C. § 103(a)
over Munshi and Nishikawa.
3. The rejection of claims 6-8, 11-15, and 18-20 as being obvious
under 35 U.S.C. § 103(a) over Munshi and Lee.
4. The rejection of claims 9 and 16 as being obvious under 35 U.S.C.
§ 103(a) over Munshi, Lee, and Ohgami.
5. The rejection of claims 10 and 17 as being obvious under 35
U.S.C. § 103(a) over Munshi, Lee, and Nishikawa.

ORDER
The Examiner’s decision rejecting claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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