11158638 (B.P.A.I. Feb. 5, 2010)

Ex Parte Solanki et al

Board of Patent Appeals and InterferencesFeb 5, 2010

11158638 (B.P.A.I. Feb. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GOPAL SOLANKI and Kioumars Kevin Dawallu ____________ Appeal 2009-0049351 Application 11/158,638 Technology Center 2600 ____________ Decided: 5 February 2010 ____________ Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and RICHARD TORCZON and SALLY C. MEDLEY, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The rejection of claims 1-20 (all pending claims) is AFFIRMED. 1 Related proceedings include a remand order (BPAI 2008) and a Board decision in a parent application (BPAI 2004). Appeal 2009-004935 Application 11/158,638 2 OPINION The examiner rejected all claims on two theories. The first theory was grounded on the judicially created doctrine of double patenting. The second theory was grounded on 35 U.S.C. 103.2 Double patenting The appellants seek review of the rejections based on § 103, but not the rejection based on double patenting.3 The examiner maintained the double-patenting rejection in his answer,4 but the appellants' reply brief only addresses the § 103 even as the appellants ask the Board to "instruct the Examiner to allow claims 1-20."5 In both the final rejection and the answer, the examiner advised that the double-patenting rejection could be overcome with a proper terminal disclaimer, but the appellants have not identified any terminal disclaimer in the record. Since the appellants have not addressed or apparently appealed the double-patenting rejection, we do not disturb the Examiner’s final decision. Obviousness The Appellants refer us to arguments made in a related appeal (in U.S. Patent 6,919,895) and conclusorily argue that the “Examiner has failed to properly demonstrate the motivation to combine Wang and Gossett.” (Br. 9- 10). This argument is unpersuasive. 2 Final Rej. at 2-9. 3 Brief at 8 (Grounds of Rejection to be Reviewed on Appeal). 4 Answer at 3 (Grounds of rejection) 5 Reply at 2-3. Appeal 2009-004935 Application 11/158,638 3 First, we observe that incorporation of arguments by reference to another paper is improper,6 especially when the reference is so general7 and in a separate proceeding. Secondly, the Examiner provided sufficient reasoning to combine Wang and Gossett, to provide enhanced system performance by generating pixel and texture data for plural pixels (Final Rejection 4-5). There need only be an articulated reasoning with rational underpinnings to support a motivation to combine teachings. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). Consequently, the argument is likewise unpersuasive. AFFIRMED John C. Carey, Esq. PATTERSON & SHERIDAN, L.L.P. 3040 POST OAK BOULEVARD SUITE 1500 HOUSTON, TX 77056 6 37 C.F.R. § 41.37(c)(1)(vii) (arguments not in the brief are waived). 7 The appeal brief (at 9-10) contains only two pages of argument and relies on arguments said to have been presented to the examiner in another paper. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250 n.2 (Fed. Cir. 2008) (declining to consider skeletal arguments).