Ex Parte Tognazzini

Board of Patent Appeals and Interferences

Jan 28, 2005

09984546 (B.P.A.I. Jan. 28, 2005)

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written for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRUCE TOGNAZZINI
_____________
Appeal No. 2004-0995
Application No. 09/984,546
______________
HEARD: JANUARY 25, 2005
_______________
Before THOMAS, FLEMING, and LEVY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claim 7. This claim is reproduced below:
7. A portable computer for linking with a non-
portable computer for the transfer of information,
comprising:
a. a wireless transceiver for receiving information
from said non-portable computer; and
b. two video buffers selectively providing respective
images to a single display, one of which provides at least
one image from said portable computer to said display and
the other of which provides at least one image from said
non-portable computer received over said wireless
transceiver to said display.
Appeal No. 2004-0995
Application No. 09/984,546
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The following reference is relied on by the examiner:
Banerjee et al. (Banerjee) 6,292,181 Sep. 18, 2001
(filing date: Sep. 2, 1994)
Claim 7 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Banerjee.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
Generally for the reasons set forth by the examiner in the
answer as embellished upon here, we sustain the rejection of
claim 7 under 35 U.S.C. § 102.
In affirming the noted rejection, we make special reference
to Banerjee’s figures 1a, 1b; figures 3a through 3c and figure
4 in addition to the following textual discussions in Banerjee’s
disclosure: the discussion of the structure of the mobile data
processing device MDPD/mobile user interface device in the
summary of the invention at column 2, lines 28 through 40 and
53 through 61 and the corresponding functional operational
description at column 2, lines 41 through 52; column 4, lines 9-
19; stylus operation at column 4, lines 49-53; column 5, lines
12 through 20; column 6, lines 34 through 50; the discussion of
Appeal No. 2004-0995
Application No. 09/984,546
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figure 3a at column 9, line 48 through col. 10, line 2; the
showing of two pen event buffers (302, 309) in figure 3a; and the
discussion at the bottom of column 10, line 61 through column 13,
line 29. Note particularly the discussion of local inking at
column 11 generally and the details at column 12, lines 1-13 and
column 13, lines 14-21.
In traversing the examiner’s stated rejection in the answer
at page 5 of the brief, appellant recognizes that the “viewer of
Banerjee et al. receives video events from the host computer and
stores them in a video event buffer 305” and further indicates
that the “display in digitizer/display unit 342 is part of an
LCD subsystem 113 that includes an LCD screen 113c, . . . a video
memory 113b, . . . . ” On the basis of this interpretation of
the reference, appellant asserts that there is only one video
event buffer 305 to correspond to one of the two recited video
buffers in claim 7 on appeal by taking the view that the
“Examiner mistakenly characterizes video memory 113b as a ‘video
buffer.’” Brief, bottom of page 5.
Initially, we do not agree with appellant’s assertion at
page 6 of the brief that the video memory 113b is part of one
embodiment and video event buffer 305 is part of a different
embodiment. According to the brief description of the drawings
Appeal No. 2004-0995
Application No. 09/984,546
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at the top of column 3, figures 1a, 1b depict the hardware
configuration of the pen-based peripheral device or viewer 100 in
these figures, where figures 3a-3c relate to a block diagram
format of the software environment 300 under which the viewer 100
and host computer 101 operate and where figure 4 shows a pen
control program state diagram to provide the viewer 100 remote
control of the host computer 101. The artisan would therefore
well appreciate that only a single embodiment with a structural
and software-functional type of environments are depicted in the
figures relied upon by the examiner and us in reaching our
decision.
Because appellant’s remaining arguments in the brief are
wrongly bottomed on the view that only one video buffer is
disclosed in this reference, we do not agree with appellant’s
additional assertions that Banerjee does not teach two video
buffers selectively providing images to a single display as
recited in clause “b” of claim 7 on appeal. It is not disputed
that the Video Event Buffer 305 in figures 3a and 3c buffer video
images from the non-portable computer that are received over the
wireless transceiver to the single display, LCD 113c/409.
Correspondingly, the Pen Event Buffer 302 in figures 3a, 3c and
the image buffering for local inking operations (401, 402, 405
Appeal No. 2004-0995
Application No. 09/984,546
5
and 409) within the hand-held interface 100 provides the video
buffering for the portable computer itself as claimed.
To the extent that we have applied the same art in a manner
somewhat differently than the examiner, this does not constitute
a new ground of rejection. See In re Boyer, 363 F.2d 455, 458
n.2, 150 USPQ 441, 444 n.2 (CCPA 1966) and In re Bush, 296 F.2d
491, 496, 131 USPQ 263, 267 (CCPA 1961). Furthermore, it is not
a new ground of rejection to cite additional portions of the same
reference relied upon by the examiner. In re Meinhardt, 392 F.2d
273, 280, 157 USPQ 270, 275 (CCPA 1968). We must consider a
reference in its entirety for what it fairly suggests to one
skilled in the art, and pointing to other portions of the same
reference used by the examiner is not viewed as being a new
ground of rejection. See In re Hedges, 783 F.2d 1038 1039, 228
USPQ 685, 686 (Fed. Cir. 1986). Appellant should not be
surprised by our reliance upon a different portion of Banerjee
because we must presume appellant read the entire reference.

Appeal No. 2004-0995
Application No. 09/984,546
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In view of the foregoing, the decision of the examiner
rejecting claim 7 on appeal under 35 U.S.C. § 102 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JDT:hh
Appeal No. 2004-0995
Application No. 09/984,546
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FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP
1300 I STREET, N.W.
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