Ex Parte Brennan

Patent Trial and Appeal BoardMay 22, 2014

11236392 (P.T.A.B. May. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/236,392 09/27/2005 Christopher Brennan AMD-001 7750 32836 7590 05/22/2014 Schmeiser, Olsen & Watts LLP 5 MOUNT ROYAL AVENUE MOUNT ROYAL OFFICE PARK MARLBOROUGH, MA 01752 EXAMINER AMIN, JWALANT B ART UNIT PAPER NUMBER 2618 MAIL DATE DELIVERY MODE 05/22/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER BRENNAN ____________________ Appeal 2011-012727 Application 11/236,392 Technology Center 2600 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012727 Application 11/236,392 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, and 3-29. Claim 2 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION According to Appellant, the invention relates generally to graphics- processing systems, and more specifically, to performing sample-level screen-door transparency using programmable transparency sample masks (Spec. ¶ [0001]). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A computer-executed method for rendering a transparent object on a display of a computing system, the method comprising: identifying pixels to be processed for rendering the transparent object; dividing each pixel into a plurality of samples; receiving a command to generate, for one of the pixels, a transparency sample mask indicating which samples of the plurality of samples of the pixel may contribute to the pixel's color on the display of the computing system; defining, by an application developer, a function for generating the transparency sample mask, the application developer-defined function having a variable number of input parameters depending on the definition of the function by the application developer, the function being comprised of program code specified by the application developer for generating a pattern of bits related to the transparency sample mask; and Appeal 2011-012727 Application 11/236,392 3 executing, in response to the received command, the function defined by the application developer in order to generate the transparency sample mask. C. REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cosman US 6,147,690 Nov. 14, 2000 Kirkland US 2003/0128222 A1 Jul. 10, 2003 SGI, “SGI: glSampleMaskSGIS,” IRIX 6.5 Man Pages, XP- 002413487, 1998. Kempf, “OpenGL on Silicon Graphics System,” Silicon Graphics, 2005, http://www-f9.ijs.si/~matevz/docs/007-2392-003/sgi_html/ front.html. Lysator, “Variable-Length Argument Lists,” Section 7, http://www.lysator.liu.se/c/c-faq/c-7.html McReynolds, “Advanced Graphics Programming Techniques Using OpenGL,” SIGGRAPH ‘98 Course, XP-002413488, 1998. Claims 1, 3-6, 11-17, 22-25, and 27-29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cosman, SGI, Kempf and Lysator. Claims 7-9, and 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cosman, SGI, Kempf, Lysator and Kirkland. Claims 10, 21, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cosman, SGI, Kempf and Lysator and McReynolds. II. ISSUES Appeal 2011-012727 Application 11/236,392 4 The principal issues before us are whether the Examiner has erred in finding the combination of Cosman, SGI, Kempf and Lysator teaches or would have suggested a “receiving a command to generate… a transparency sample mask indicating which samples… may contribute to the pixel’s color,” “defining, by an application developer, a function for generating the transparency sample mask,” and “executing… the function … in order to generate the transparency sample mask” (claim 1, emphases added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Cosman 1. Cosman discloses providing image quality for scene details behind transparency polygons, and proper concatenation of overlaid transparent surfaces (col. 5, ll. 1-5). 2. An output summation network sums all the composite transmittance values output by the sample processors, wherein the resulting single value represents the current polygon’s transmittance value contribution (col. 5, ll. 56-59). 3. Sample processors receive identical input in the form of polygon transmittance, and the unique data received by the processors is in the form of polygon sample mask bits (col. 6, ll. 43-46), wherein a sample mask is a binary representation of all of the samples within a single pixel (col. 1, ll. 52-54). 4. During the processing of the transparent and opaque polygon records, identical polygon transmittance data is input to sample processors Appeal 2011-012727 Application 11/236,392 5 which are equal in number to the number of pixel samples; polygon sample mask bits are input to corresponding sample processors; and each color- opacity is multiplied by its sample processor sum and each polygon color- sum product is added to the accumulating pixel shade (col. 4, ll. 15-24), wherein the accumulated transmittance effects are combined with color information which then results in a single output pixel having the correct shade and coloring (col 4, ll. 29-32). IV. ANALYSIS Claim 1 Appellant contends “claim 1 relies on screen-door transparency to render overlapping transparent objects or objects of graduated transparency (App. Br. 7) whereas “Cosman abandons a screen-door approach” (App. Br. 8). According to Appellant, Cosman teaches “a polygon sample mask” which “is not a transparency sample mask” since “sample mask bits 20 are not altered to account for transparency” (id.). Appellant contends “[t]he sample mask bits 20 are used to determine whether a polygon transmittance value… is passed to a multiplier” not “to indicate which samples of a pixel that may contribute to the pixel’s color” (id.). Furthermore, although Appellant concedes, in SGI, “an application developer can specify parameter values passed to [an] SGI command . . .” Appellant contends “the glSampleMaskSGIS command [is] not defined by the application developer” (App. Br. 9). Although Appellant also concedes “Kempf can define a multisample mask using the glSampleMaskSGIS command . . .” Appellant contends the command is “presented to an application developer, instead of being defined by an application developer” Appeal 2011-012727 Application 11/236,392 6 (id.). While Appellant concedes “Lysator teaches how to write a function . . .” Appellant contends “there is no teaching or suggestion in Lysator of defining a function for generating a transparency sample mask” (id.). However, the Examiner finds “Cosman teaches transparency is really transmittance, and a value of 0.0 means the polygon is fully opaque . . .” “a value of 1.0 means the polygon is fully transmissive or transparent . . .” wherein “the polygon transmittance is received in the form of polygon sample mask bits . . .” (Ans. 19). According to the Examiner, “Cosman further indicates to add each polygon color-sum product to the accumulating pixel shade,” and “[t]he shade multiply-accumulators combine the accumulated transmittance effects with color information . . .” and thus “Cosman teaches the sample mask bits 20 indicating which samples of a pixel may contribute to the pixel’s color . . .” (Ans. 20-21). The Examiner further finds SGI teaches “defining, by an application developer, a function for generating a transparency sample mask” because SGU’s “program code is specified by an application developer . . .” and thus it would have been obvious “to apply the sample mask as taught by SGI to render transparent objects in Cosman’s system” because “such mask is often used for level of detail management . . .” (Ans. 23). The Examiner also finds that it would have been obvious “to execute the user-specified function as taught by Kempf and apply it into the system of Cosman and SGI” because “such a multisample mask if used to fade levels of details” (Ans. 24). The Examiner then finds that it would have been obvious “to write a function that takes variable number of arguments as taught by Lysator and apply it into the system of Cosman, SGI and Kempf” because “such a Appeal 2011-012727 Application 11/236,392 7 function would give the developer necessary flexibility based on the requirement” (id.). We find no error with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Although Appellant contends “Cosman abandons a screen-door approach,” Cosman’s “sample mask bits 20 are not altered to account for transparency . . .” and Cosman’s “sample mask bits 20 are used to determine whether a polygon transmittance value… is passed to a multiplier . . .” (App. Br. 8), such contentions are not commensurate in scope with the recited language of claim 1. That is, claim 1 does not recite any “screen-door” approach” or any altering of the sample bits “to account for transparency,” and do not preclude any additional use of the sample bits such as “to determine whether a polygon transmittance value… is passed to a multiplier . . .” (id.). Furthermore, although Appellant contends SGI’s “glSampleMaskSGIS command [is] not defined by the application developer,” Kempf’s command is “presented to an application developer, instead of being defined by an application developer” and “there is no teaching or suggestion in Lysator of defining a function for generating a transparency sample mask” (App. Br. 9), since the Examiner rejects the claims as obvious over the combined references, the test for obviousness is not what the references individually disclose, as Appellant argues, but what the combination would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with the Examiner that “one cannot show nonobviousness by attaching references Appeal 2011-012727 Application 11/236,392 8 individually . . .” and thus the references “should be viewed in combination” (Ans. 25). We give the claims their broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We note claim 1 does not positively recite a step of generating a sample mask. Instead, claim 1 merely requires “receiving a command” for the intended purpose of “to generate” a sample mask, “defining” a function for the intended purpose of “for generating” the mask, and then “executing” the function with the intended purpose of “in order to generate” the mask. That is, the mask itself is never generated in claim 1, but rather the generating of the mask is merely the intended purpose of the specifically claimed steps of “receiving,” “defining” and “executing” steps. The intended purpose does not limit the scope of the claim because the intended purpose merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Further, by contending Cosman’s mask is not a “transparency sample mask” (App. Br. 8), such contention urging patentability is predicated on non-functional descriptive material (i.e., the type or content of the data that is being generated). That is, the “transparency sample mask” is the type/content of data to be generated (“a pattern of bits”), but the particular content of the generated data is not positively recited as changing or affecting the manner in which the steps or acts of the claimed method are performed, nor the manner in which the data is to be generated. (Claim 1). Moreover, the informational content of the generated transparency sample mask is not positively recited as actually being used to change or Appeal 2011-012727 Application 11/236,392 9 affect any machine or computer function, within the broad scope of claim 1. Rather, claim 1 broadly recites a “developer-defined function having a variable number of input parameters depending on the definition of the function by the application developer, the function being comprised of program code specified by the application developer for generating a pattern of bits related to the transparency sample mask;” (Claim 1, emphasis added). Thus, the sweeping, broad scope of claim 1 covers all functions having any number of input variables (parameters) for generating data as an output (“a pattern of bits related to the transparency sample mask”) that is not positively recited as actually being used (“receiving a command to generate, for one of the pixels, a transparency sample mask indicating which samples of the plurality of samples of the pixel may contribute to the pixel's color on the display of the computing system;”).1 See Boehringer Ingelheim Vetmedica, Inc., 320 F.3d at 1345. Because the scope of the claim covers any number of possible functions having any number of input variables (parameters), we conclude the claim is amenable to two or more plausible claim interpretations, depending on how the developer may choose to define the claimed function.2 We question how the public may reasonably avoid infringing 1 See In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim because they can always be omitted.”). 2 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.”). In the event of further prosecution, we leave it to the Examiner Appeal 2011-012727 Application 11/236,392 10 such a claim when different application developers are free to define different functions at some future time throughout the term of a hypothetical patent.3 Thus, we conclude the recited “transparency sample mask” is merely the type of data to be generated, and is merely non-functional descriptive material. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). See also MPEP § 2111.05, Eighth Edition, Rev. 9, Aug. 2012. Nevertheless, we give “transparency sample mask” its broadest reasonable interpretation as a “sample mask” relating to an object’s to consider whether at least independent claim 1 (and associated dependent claims) should also be rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. See also In re Packard, No. 13-1204, slip. op. *20 (Fed. Cir. 2014)(J. Plager concurring)(“ In my view (and that of the per curiam court), it is within the authority of the USPTO to so interpret the applicable standard”). 3 Our reviewing court guides that if the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. § 112, second paragraph is deemed appropriate. Morton Int’l, Inc. v. Cardinal Chemical Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). We leave this issue to be considered by the Examiner in the event of further prosecution. Appeal 2011-012727 Application 11/236,392 11 transparency, wherein the mask indicates samples that “may contribute to the pixel’s color” on a display, as consistent with claim 1. We agree with the Examiner’s finding “Cosman teaches transparency is really transmittance . . .” wherein “the polygon transmittance is received in the form of polygon sample mask bits . . .” (Ans. 19; FF 1-4). We also agree with the Examiner’s finding “Cosman further indicates to add each polygon color-sum product to the accumulating pixel shade” and “[t]he shade multiply-accumulators combine the accumulated transmittance effects with color information . . .” (Ans. 20-21; FF 4). Accordingly, we find no error with the Examiner’s finding that Cosman in combination with SGI, Kempf and Lysator would at least have suggested a “transparency sample mask” indicating which samples “may contribute to the pixel’s color on the display” (claim 1). As to Appellant’s argument that SGI, Kempf and Lysator do not each individually teach “defining, by an application developer, a function” (App. Br. 9), Appellant also concedes in SGI, “an application developer can specify parameter values passed to [an] SGI command . . .” “Kempt can define a multisample mask using the glSampleMaskSGIS command . . .” and “Lysator teaches how to write a function . . .” (id.). We find no error with the Examiner’s finding that it would have been obvious: 1) “to apply the sample mask as taught by SGI to render transparent objects in Cosman’s system” (Ans. 23); 2) “to execute the user-specified function as taught by Kempf and apply it into the system of Cosman and SGI” because “such a multisample mask is used to fade levels of details” (Ans. 24); and 3) “to write a function that takes variable number of arguments as taught by Lysator and apply it into the system of Cosman, SGI and Kempf” because Appeal 2011-012727 Application 11/236,392 12 “such a function would give the developer necessary flexibility based on the requirement” (id.). Thus, we agree with the Examiner that the combined teachings would at least have suggested defining a function “by an application developer” (claim 1). Although Appellant also contends “there is no motivation to combine” the references (App. Br. 10), the Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 420-21. Appellant has presented no evidence that receiving a command for the intended purpose of generating a mask as “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Therefore, we find the Examiner’s proffered combination of familiar prior art elements according to their established functions would have conveyed a reasonable expectation of success to a person of ordinary skill having common sense at the time of the invention (Ans. 23-24). Accordingly, we find no error with the Examiner’s rejection of claim 1 over Cosman, SGI, Kempf and Lysator. Claim 15 As for claim 15, Appellant contends the teachings of Cosman “in no way can be interpreted as meaning that a depth block interprets” attribute Appeal 2011-012727 Application 11/236,392 13 data (App. Br. 12). However, claim 15 is directed to a graphics-processing “unit” and merely requires a “depth block” with the intended purpose of “to receive” data, and “to determine a status of the flag,” wherein “the depth block interpreting” a portion of the data if the flag is set. As discussed above, the intended purpose of the “depth block” does not limit the scope of the “unit” claim because the intended purpose merely defines a context in which the invention operates. See Boehringer Ingelheim Vetmedica, 320 F.3d at 1345. Moreover, since claim 15 is directed to a “unit,” we conclude the contested functional limitation “the depth block interpreting” does not further limit the structure of the claimed unit/apparatus. Our reviewing court guides that the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries v. Masaba, 2013-1302, 2014 WL 163046 at *5 (Fed. Cir. Jan. 16, 2014) (Rader, J., concurring) [A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). That is, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009). We find this reasoning applicable here, as Appellant urges the claimed unit (structure) is patentably distinguished over the prior art structure (Cosman) based solely on a functional limitation (Claim 15; App. Br. 12). Appeal 2011-012727 Application 11/236,392 14 Nevertheless, we find no error with the Examiner’s finding that Cosman at least suggests the contested claim limitation (Ans. 33-35). Accordingly, we find no error with the Examiner’s rejection of claim 15 over Cosman, SGI, Kempf and Lysator. Claims 3-6, 11-14, 16, 17, 22-25, 27, 28, and 29 Appellant does not provide arguments for independent claims 16, 22, 28, and 29 separate from claims 1 and 15 (App. Br. 12), or for dependent claims 3-5, 11-14, 17, 23-25, and 27 depending from claims 1, 16, and 22 respectively (App. Br. 13). Accordingly, claims 3-5, 11-14, 16, 17, 22-25, 27, 28, and 29 fall with claims 1 and 15. As for claim 6, Appellant merely contends there is no teaching or suggestion in “cited sections of Cosman, or anywhere in Cosman, of a bit pattern used to determine a color of a pixel” (App. Br. 13). However, claim 6 does not require any determining of the pixel’s color but rather merely recites the samples “may be used to determine” the pixel’s color. That is, claim 6 merely recites that the sample may (or may not) be used for the intended purpose of determining the pixel’s color, which does not limit the scope of the claim. See Johnston, 435 F.3d at 1384 (“[O]ptional elements do not narrow the claim because they can always be omitted.”). Nevertheless, we find no error with the Examiner’s finding that Cosman at the least suggests such determining of the pixel’s color (Ans. 35- 37). Claims 7-10, 18-21, and 26 As for claims 7-9 and 18-20, Appellant merely contends “Kirkland fails to teach or suggest the claim limitations of claims 1 and 16 [from which they depend],” and each of the dependent claims “recites an additional Appeal 2011-012727 Application 11/236,392 15 limitation that further distinguishes that claim from the combination” (App. Br. 13-14). Further, as for claim 7, Appellant contends “Kirkland teaches a system that uses a pixel address as an index to a table . . .” and the skilled artisan “would understand that this is different than executing a hashing function” (App. Br. 14). However, mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at http://www.uspto.gov/web/offices/dcom/bpai/its/ fd09004693.pdf. Appellant’s arguments fail to comply with 37 C.F.R 1.111 (b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the reference. Nevertheless, we find no error with the Examiner’s finding that the combined references would at least have suggested a hashing function (Ans. 37). Accordingly, we find no error with the Examiner’s rejection of claims 7-9 and 18-20 over Cosman, SGI, Kempf and Lysator in further view of Kirkland. Appellant does not provide arguments for claims 10, 21, and 26 separate from claims 1, 16, and 22 from which they respectively depend (App. Br. 14). Accordingly, we also affirm the rejection of claims 10, 21, and 26 over Cosman, SGI, Kempf and Lysator in further view of McReynolds. Appeal 2011-012727 Application 11/236,392 16 V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1, and 3-29 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj