Ex Parte Sullivan

Board of Patent Appeals and Interferences

Apr 17, 2009

09839679 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY J. SULLIVAN
____________

Appeal 2008-4848
Application 09/839,679
Technology Center 2600
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Decided:1 April 17, 2009
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO
and JOHN A. JEFFERY, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 1 to 25.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 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 deliver) or Notification Date (electronic delivery).
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Application 09/839,679

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We will reverse the non-statutory subject matter rejection of claims 10
and 11, and reverse the obviousness rejection of claims 1 to 25.
Appellant has invented a method and a system for receiving a
command from a decoder application at an application program interface
(API). The API is configured to facilitate the use of a plurality of different
multimedia accelerators with the decoder application by generating one or
more filter control command data structures recognizable by a
communicatively coupled accelerator. The filter control command data
structure includes one or more parameters which, when received by the
accelerator, affects one or more filter settings of the accelerator based, at
least in part, on the content of the received command (Fig. 2; Spec. 3, 12, 15,
23, 52, 62, and 70).
Claim 1 is representative of the claimed invention, and it reads as
follows:
1. A method comprising:
receiving a command from a decoder application at an application
program interface (API), wherein the API is configured to facilitate the use
of a plurality of different multimedia accelerators with the decoder
application; and
generating one or more filter control command data structures,
recognizable by a communicatively coupled accelerator including one or
more parameters which, when received by the accelerator, affects one or
more filter settings of the accelerator based, at least in part, on the content of
the received command.

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Application 09/839,679

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sriram US 6,539,059 B1 Mar. 25, 2003
(filed Mar. 2, 2000)
MacInnis US 6,744,472 B1 Jun. 1, 2004
(filed Nov. 9, 1999)
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 101 for
being directed to non-statutory subject matter.
The Examiner rejected claims 1 to 25 under 35 U.S.C. § 103(a) based
upon the teachings of MacInnis and Sriram.
The Examiner contends that claims 10 and 11 are rejected because
“the claims do not meet the 35 U.S.C. 101 requirements (the claims have
improper language regarding the Computer-readable media)” (Ans. 3).
Appellant argues (App. Br. 6 and 7) that the Examiner has not provided an
explanation or justification for the rejection.
Turning to the obviousness rejection, the Examiner contends (Ans. 3
and 4) that the teaching of receiving a command from a decoder application
in the integrated circuit graphics system as in MacInnis and the teaching of
using a plurality of different multimedia accelerators with a decoding
application as in Sriram when combined “would have rendered obvious to
one having ordinary skill in the art at the time the invention was made to
implement an API configuration taught by Sriram in order to obtain an
apparatus that is more versatile by being able to correctly and effectively
facilitate the use between multiple processors of a system.” Appellant
argues that:
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[T]he Office’s reliance on the Graphics
Accelerator 64 in MacInnis is misplaced because
nothing indicates “…one or more parameters
which, when received by the accelerator, affects
one or more filter settings of the accelerator based,
at least in part, on the content of the received
command.” (emphasis added). Indeed, the only
commands that are received by the accelerator in
MacInnis appear to be commands it receives
directly from a CPU (see Fig. 37 and Column 57
(lines 46-47). As such, Applicant is left without
any explanation as to how the Graphics
Accelerator 64 in MacInnis is relevant to the
claimed subject matter.

In addition, the integrated circuit system of
MacInnis simply does not inherently disclose an
application interface (API) that would be necessary
for it to correctly operate, as the Office contends.
In this regard, Sriram does not disclose or suggest
an API that is configured to “facilitate the use of a
plurality of different multimedia accelerators with
the decoder application” as claimed.
(App. Br. 9 and 10)

ISSUES
Non-statutory subject matter
Has Appellant demonstrated that the Examiner erred by not presenting
an explanation or justification for the rejection?
Obviousness
Has Appellant demonstrated that the Examiner erred by finding that
the combined teachings of the applied references would render obvious
claims 1 to 25?
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Application 09/839,679

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FINDINGS OF FACT
1. The claimed method and system receives a command from a
decoder application at an API that in turn generates a data structure which
when received by a communicatively coupled accelerator affects one or
more filter settings of the accelerator (Fig. 2; Spec. 70).
2. MacInnis describes a graphics integrated circuit chip 10 that
includes a video decoder 50 and a graphics accelerator 64 for processing
audio and video input signals 34 and 14, respectively (Figs. 1 and 2;
Abstract; col. 3, ll. 40 to 46; col. 4. ll. 11 to 16).
3. The graphics accelerator 64 used by MacInnis is programmable and
performs graphics processing operations that require intensive CPU
processing (e.g., “3D effects such as real-time video warping and flipping,
texture mapping, and Gouraud and Phong polygon shading, as well as 2D
and image effects such as blending, scaling, blitting and filling) (col. 5, ll. 61
to 64; col. 57, ll. 26 to 35). The graphics accelerator is under the control of
CPU 22 (Figs. 1 and 37; col. 57, ll. 46 to 48).
4. Sriram describes a method of decoding a Motion Compensated-
Discrete Cosine Transform (MC-DCT) video stream via video decoder 26A
to 26N (Fig. 1; Abstract; col. 4, ll. 21 to 30). A monitor processor 40 splits
the MC-DCT video stream into a set of video streams for parallel processing
of the set of video streams by sub-processors 42A to 42N (col. 4, ll. 43 to
53).

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PRINCIPLES OF LAW
Non-statutory subject matter
The Examiner bears the initial burden of presenting a prima facie
case, and, if the Examiner meets the initial burden, then the Appellant has
the burden of presenting a rebuttal to the prima facie case. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Obviousness
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 (Fed. Cir. 1988).
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
Non-statutory subject matter
As indicated supra, Appellant argues that the Examiner has not
presented an explanation or justification for finding that claims 10 and 11
are directed to non-statutory subject matter under the provisions of 35
U.S.C. § 101. We agree with Appellant’s argument. Although the Examiner
refers us generally to the Interim Guidelines for Patent Subject Matter
Eligibility (Ans. 3), the Examiner has not made any findings or presented
any reasoning as to why claims 10 and 11 run afoul of the provisions of 35
U.S.C. § 101. Nor has the Examiner explained why the recited computer-
readable media of claim 10 does not constitute a particular article of
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manufacture, let alone explained why including such an article in a system
as in claim 11 fails to constitute patentable subject matter under § 101.
Merely alleging that “the claims have improper language regarding the
[c]omputer-readable media” by generally referencing guidelines and
suggesting language to the Appellant to overcome the purported deficiencies
(Ans. 3) falls well short of the requisite analysis needed to establish a prima
facie case of unpatentability under § 101. Accordingly, the non-statutory
subject matter rejection of claims 10 and 11 is reversed for failure of the
Examiner to meet the initial burden of informing the Appellant of a reason
for rejecting the claims. Oetiker, 977 F.2d at 1445.
Obviousness
The reference to MacInnis describes a graphics integrated circuit chip
10 that includes a video decoder 50 and a graphics accelerator 64 for
processing audio and video input signals 34 and 14, respectively (FF 2). The
graphics accelerator used by MacInnis is programmable and performs
intensive graphics processing operations (e.g., 3D effects such as real-time
video warping and flipping, texture mapping, as well as 2D and image
effects such as blending, scaling, blitting, and filling) (FF 3).
We agree with the Appellant’s argument (App. Br. 9 and 10) that the
graphics accelerator in MacInnis is under the control of the CPU 22 (FF 3),
and not an API that generates one or more parameters which, when received
by the accelerator, affects one or more filter settings of the accelerator
“based, at least in part, on the content of the received command” from the
decoder application as set forth in the claims on appeal. With respect to the
Examiner’s contention (Ans. 4) that Sriram describes the use of a plurality of
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different multimedia accelerators, we find that Sriram merely describes a
plurality of sub-processors 42A to 42N for parallel processing of a set of
video streams during a video decoding operation (FF 4). In summary, we
find that the Examiner has not set forth a factual basis to support a legal
conclusion of obviousness. Fine, 837 F.2d at 1073. The Examiner’s
articulated reasoning in the rejection does not possess a rational
underpinning to support a legal conclusion of obviousness. See Kahn, 441
F.3d at 988.

CONCLUSIONS OF LAW
Non-statutory subject matter
The Appellant has demonstrated that the Examiner erred by finding
that claims 10 and 11 are directed to non-statutory subject matter.
Obviousness
The Appellant has demonstrated that the Examiner erred by finding
that the video decoding teachings of MacInnis and Sriram would render
obvious claims 1 to 25.

ORDER
The decision of the Examiner rejecting claims 10 and 11 under 35
U.S.C. § 101 is reversed.

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Application 09/839,679

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The decision of the Examiner rejecting claims 1 to 25 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

KIS

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