Ex parte Zandee

Board of Patent Appeals and Interferences

Sep 14, 2000

08593114 (B.P.A.I. Sep. 14, 2000)

1
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publication and is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES C. ZANDEE
____________
Appeal No. 1998-0626
Application No. 08/593,114
____________
ON BRIEF
____________
Before KRASS, HECKER and LALL, Administrative Patent Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 5 through 7, all claims pending in this application.
The invention relates to a method of producing graphic
images. The current state of a graphics environment is
specified by a collection of information fields and is
modified at times by an image source. A record is maintained
of a previous state of the graphics environment, and the
current state of the graphics environment is compared to the
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previous state. If any information fields have changed, a
current value of each changed information field is recorded in
a uniquely identifiable location. The current state is then
recorded using a record specifying the current values of each
changed information field by reference to the uniquely
identifiable location. Image capture is thereby accomplished.
(Specification page 4, line 28 to page 5, line 13.)
Independent claims 5 is reproduced as follows:
5. Using a computer having a memory system, a method for
use in producing a graphic image using a set of graphics
primitives each of which is executed in accordance with a
current state of a graphics environment at a time when a
command invoking the graphics primitive was received, the
current state of the graphics environment including a
plurality of state elements and being changed at times by an
image source, the method comprising the steps of:
each time a state element has changed from when a
previous command involving a graphics primitive was received
to when a current command involving a graphics primitive was
received:
saving in the memory system an instance of that state
element containing current information for that state element;
and
saving in the memory system a graphics state object
including for each of said plurality of state elements a
pointer to a most recently saved instance of that state
element;
wherein each graphics state object includes a pointer to
only one instance of a given state element, and at least some
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Application No. 08/593,114
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instances of state elements are pointed to by multiple
graphics state objects.

The Examiner relies on the following references:
Doyle et al. (Doyle) 5,097,411 Mar. 17, 1992
Epard et al. (Epard) 5,241,625 Aug. 31, 1993
Zimmerman EPO 0 027 566 Apr. 29,
1981
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Doyle in view of Zimmerman.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Doyle and Zimmerman, and further in view of
Epard.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
After a careful review of the evidence before us, we will
not sustain the rejection of claims 5 through 7 under 35
U.S.C.
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§ 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the prior art, or by a reasonable inference to the artisan
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied,
469 U.S. 851 (1984)).
With regard to claim 5, the Examiner reasons that Doyle
teaches the claimed invention but does not explicitly teach
pointing to the most recently saved state element. The
Examiner notes that Zimmerman,
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suggests that it is well known in the art to point
to the recently saved element (or element to be
changed)(abstract, lines 8-15, [i.e.], the pointers
can be used to indicate changes to a selected group
of elements or to modify only to a selected element
(character image)). It would have been obvious to
one of ordinary skill in the art to provide the
graphics data structure of Doyle et al. with the
means to point to the current saved element as
taught by Zimmerman, in order to reduce the number
of location[s] where changes have to be made and
reducing the amount of memory needed to store[] the
changes in state elements, by only recording the
changes in the state elements of the state elements
being modif[ied]. [Answer-pages 4 and 5.]
We note that claim 5 recites:
saving in the memory system a graphics state
object including for each of said plurality of state
elements a pointer to a most recently saved instance
of that state element; [emphasis added]
Although the Examiner contends this is suggested by Zimmerman
in the abstract, we can find no such suggestion of a most
recently saved state element or something equivalent thereto.
On pages 5 through 7 of the brief, Appellant argues that
Doyle fails to disclose several of the elements recited in
claim 5. For example, Appellant argues Doyle is “composed of
various nodes that are linked together by pointers” (brief-
page 5), and that a “reference node” may point to multiple
other nodes. “Nevertheless a reference node is not the same
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We assume “page” means “column”.1
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as a graphics state object, as recited in Claim 5.” (Brief-
page 6.)
The Examiner responds that “one cannot show non-
obviousness by attacking references individually” (answer-page
7), and that Doyle teaches saving state elements at “(page 22,
lines 12 thru page 26 . . .).” 1
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We find Appellant’s argument appropriate. Appellant's
argument that Doyle does not disclose a claimed element, is
not a “non-obviousness” showing “by attacking references
individually, as alleged by the Examiner.” Furthermore, the
Examiner has still not shown that the node structures of Doyle
meet the claimed saved state elements.
One must first have a prior art disclosure of the
required elements before one can consider the propriety of a
combination. Since the Examiner has not shown where the cited
references disclose the limitations of claim 5, we cannot
proceed to the question of motivation to combine the
references.
In view of the foregoing, since the prior art has not
been shown to teach or suggest the limitations of claims 5, we
will not sustain the Examiner’s rejection of claim 5.
The remaining claims on appeal also contain the above
limitations discussed in regard to claim 5 and thereby, we
will not sustain the rejection as to these claims.
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We have not sustained the rejection of claims 5 through 7
under 35 U.S.C. § 103. Accordingly, the Examiner's decision
is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART N. HECKER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
jg
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JAMES W. PETERSON
BURNS DOANE SWECKER & MATHIS
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
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