Ex Parte Reynolds

Board of Patent Appeals and Interferences

Mar 11, 2004

09042291 (B.P.A.I. Mar. 11, 2004)

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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publication and is not binding precedent of the Board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 GERALD W. REYNOLDS
______________________
Appeal No. 2002-1311
Application No. 09/042,291

DECISION ON APPEAL
__________________

Before KRASS, JERRY SMITH, AND BLANKENSHIP, Administrative Patent Judges.
JERRY SMITH, Administrative Patent Judge.
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s rejection of
claims 1, 4-6, 8, 12, 14-24, 29 and 30, which constitute all the claims still pending in the
application.
The disclosed invention pertains to a graphics memory system of a computer graphics
display system that utilizes a batching architecture in conjunction with detached Z buffering for
minimizing paging overhead.
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Application No. 09/042,291
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Representative claim 1 is reproduced as follows:
Claim 1. A graphics memory system comprising:
a memory controller receiving a first quantity of Z coordinates and pixel
colors, each pixel color being associated with one location on a display
screen, each Z coordinate representing a depth in 3-dimensional space of
a pixel, each pixel color having a row and column address associated there-
with, each row and column address corresponding to a memory location in
a memory element such that each pixel color is associated with a particular
memory location in the memory element, the memory controller receiving
a plurality of Z coordinates from the memory element, the memory controller
comparing each Z coordinate received from the memory element with each Z
coordinate of the first quantity in accordance with a Z comparison test to
determine whether a pixel color associated with a compared Z coordinate of
the first quantity should be written into the memory element, wherein if the
Z coordinate of the first quantity passes the Z comparison test, a determination
is made that a pixel color associated with the compared Z coordinate of the first
quantity that passes the Z comparison test is to be saved in the memory element,
wherein after the Z comparison test has been performed on all of the Z
coordinates of the first quantity, pixel colors associated with the Z coordinates
that passed the Z comparison test are saved in the memory element at the memory
locations associated with the pixels, wherein the memory element comprises an
image buffer region and a Z buffer region, the image buffer region being separate
from the Z buffer region, wherein Z coordinates are stored in the Z buffer region and
pixel colors are stored in the image buffer region.
The examiner relies on the following reference:
Gonzalez-Lopez et al. 5,043,921 Aug. 27, 1991
(Gonzalez-Lopez)
Claims 1, 12, 19, 20 and 29 stand rejected under 35 U.S.C. § 103(a) “as being unpatentable
by Gonzalez-Lopez et al. (‘G-L’, U.S. Pat. No. 5,043,921) in view of In re Larson (‘Larson’),
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144 USPQ 347, 349; 339 US 965 (CCPA 1965).” Claims 4-6, 8, 14-18, 21-24 and 30 stand
rejected under 35 U.S.C. § 103(a) “as being unpatentable over G-L in view of Larson and further
in view of St. Regis Paper Co. v. Bemis Co., 193 USPQ 8, 11; 549 F.2d 833(7th Cir. 1977)(‘St.
Regis Paper Co’).”
Rather than repeat the arguments of appellant 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 rejections advanced by the
examiner and the evidence of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into consideration, in reaching our decision,
the appellant’s arguments set forth in the briefs along with the examiner’s rationale in support of
the rejections 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.
Appellant has indicated that for purposes of this appeal the claims will all stand or fall
together as a single group [brief, page 5]. Consistent with this indication appellant has made no
separate arguments with respect to any of the claims on appeal. Since there are two different
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rejections before us, appellant’s grouping will be accepted as a representation that all the claims
within each rejection will stand or fall together. Note In re King, 801 F.2d 1324, 1325, 231
USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir.
1983). Accordingly, we will only consider the rejections against a single claim from each
separate rejection as representative of all the claims on appeal.
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 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
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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 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 and are deemed to be waived by appellant [see 37
CFR § 1.192(a)].
With respect to the rejection of representative, independent claim 1, the examiner
essentially finds that Gonzalez-Lopez teaches the claimed invention except for one memory
element which comprises an image buffer region and a Z buffer region, the image buffer region
being separate from the Z buffer region, wherein Z coordinates are stored in the Z buffer region
and pixel colors are stored in the image buffer region. The examiner cites In re Larson ,
however, as rendering obvious the integration of parts such as two separate memory elements
into one. Thus, the examiner concludes that it would have been obvious to the artisan to have
modified the memory structure of Gonzalez-Lopez based on the holding of In re Larson
(hereinafter Larson) [answer, pages 4-6].
Appellant argues that the facts in Larson have nothing to do with combining separate
memory elements into one. Appellant argues that the claimed invention is more than simply
combining two separate elements into one. Appellant notes that the claimed invention recites a
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single memory element for storing both the Z coordinates and the color values associated
therewith, which is not taught by Gonzalez-Lopez. Appellant also argues that the memory
controller of Gonzalez-Lopez operates differently from the claimed memory controller. Finally,
appellant argues that the claimed invention implements a batching architecture which is not
taught by Gonzalez-Lopez [brief, pages 5-12].
The examiner responds that Larson is applicable because it holds that it is obvious to
integrate two separate things into a single thing. The examiner reiterates that Larson renders
obvious appellant’s integration of the separate Gonzalez-Lopez image buffer region and Z buffer
region into a single memory. The examiner also finds that the reduced paging result of
appellant’s invention is not recited in the claims on appeal [answer, pages 11-14].
Appellant responds that the examiner has applied Larson as a prior art reference, but
appellant argues that Larson is non-analogous art and is, therefore, unavailable as prior art.
Appellant also argues that there is no motivation to combine the teachings of Gonzalez-Lopez
with Larson. Appellant also argues that the facts of Larson are distinguishable from the facts of
this case [reply brief, pages 4-10].
We will not sustain the examiner’s rejection of the claims on appeal. We note, however,
that we do not agree with appellant’s argument that the case of Larson is being used as a prior art
reference by the examiner. The Larson case is being used by the examiner as a basis for finding
an acknowledged difference between the claimed invention and a prior art reference (Gonzalez-
Lopez) to be obvious. Thus, all of appellant’s arguments regarding the Larson case being non-
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analogous art are misplaced. The holding in Larson is relevant to any case in which the facts
cannot be persuasively distinguished, which brings us to this case which is before us.
The examiner has improperly applied the holding of Larson as a per se rule. In other words, the
examiner finds that integrating any two things into one thing must be obvious regardless of the
individual facts in the case. Since the examiner has used a per se rule, the examiner has failed to
consider the particular problems associated with combining separate memories into a single
memory. It was improper for the examiner to apply the holding in Larson without regard for the
particular nature of the claimed subject matter.
We also agree with appellant that the examiner has failed to consider all the recitations of
the claimed invention. The claimed invention also recites that the Z comparison test is
performed in such a manner that the repaging of the memory element is reduced. The examiner
has not explained how the controller of Gonzalez-Lopez achieves this claimed result.
In summary, we find that the examiner has failed to consider the specific recitations of the
claimed invention, and the examiner has improperly applied the holding of Larson as a per se
rule of obviousness. Therefore, we do not sustain the examiner’s rejection of claims 1, 12, 19,
20 and 29.
Since we have not sustained the rejection of independent claims 1, 12 and 19, we also do
not sustain the examiner’s rejection of any of the dependent claims. We note for the record that
appellant’s arguments and the examiner’s arguments with respect to the St. Regis Paper Co. case
would be disposed of in the same manner as the arguments related to the Larson case.
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In conclusion, we have not sustained either of the examiner’s rejections of the claims on
appeal. Accordingly, the decision of the examiner rejecting claims 1, 4-6, 8, 12, 14-24, 29 and
30 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS/dpv
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