Ex Parte Foster

Patent Trial and Appeal BoardAug 18, 2014

11726776 (P.T.A.B. Aug. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/726,776 03/23/2007 Mark J. Foster 60269-0057 8582 7590 08/19/2014 LAURA GANOZA ESQ. FOLEY & LARDNER LLP ONE BISCAYNE TOWER SUITE 1900 2 SOUTH BISCAYNE BOULEVARD MIAMI, FL 33131 EXAMINER KETEMA, BENYAM ART UNIT PAPER NUMBER 2696 MAIL DATE DELIVERY MODE 08/19/2014 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 MARK J. FOSTER _____________ Appeal 2012–004094 Application 11/726,776 Technology Center 2600 ______________ Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and JOHN P. PINKERTON, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 16 and 23 through 31. We reverse and enter a NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b). INVENTION The invention is directed to a method for using a display system, which includes a processor, a display device, and a first and second display Appeal 2012–004094 Application 11/726,776 2 controller. The system is such that, when new frames are sent from the processor, the display device is controlled by the first display controller. When the same frames are continually sent by the processor, the display device is controlled by the second display controller, which is optimized for low-power operation. See Abstract of Appellants’ Specification. Claim 1 is illustrative of the invention and reproduced below: 1. A method for driving a display device by a display system, the display system comprising the display device, a first display controller, a second display controller and a processor, the second display controller being optimized for low-power operation, the method comprising the steps of: receiving display data from the processor, the display data being received at the first display controller; switching control of the display device between the first display controller and the second display controller, the control of the display device being switched in proximity to a trailing edge of an input vertical synchronization (V -sync) pulse; and refreshing the display device, the display device being refreshed by the second display controller with a clock independent of the processor and the first display controller. REJECTION AT ISSUE The Examiner has rejected claims 1 through 16 and 23 through 31 under 35 U.S.C. § 103(a) as unpatentable over Kosaka (U.S. 2005/0268236 A1; Dec. 1, 2005) and Okumura (U.S. 5,945,972; Aug. 31, 1999). Answer 5–18. 1 1 Throughout this opinion we refer to the Appeal Brief dated August 8, 2011, Reply Brief dated December 28, 2011, and the Examiner’s Answer mailed on November 29, 2011. Appeal 2012–004094 Application 11/726,776 3 ISSUE Appellant argues on pages 6 through 13 of the Appeal Brief and pages 1 through 4 of the Reply Brief the Examiner’s rejection of independent claims 1 and 23 through 25 is in error. The dispositive issue presented by these arguments is: did the Examiner err in finding the combination of Kosaka and Okumura teach a display device being refreshed by the second display controller with a clock independent of the processor and the first display controller as recited in each of the independent claims? ANALYSIS We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellant’s arguments. We agree with Appellant’s conclusion that the Examiner erred in finding the combination of Kosaka and Okumura teaches the limitations of independent claims 1 and 23 through 25. Each of independent claims 1 and 23 through 25 recite limitations directed to a display device being refreshed by the second display controller with a clock independent of the processor and the first display controller. The Examiner relies upon Okumura to teach that, when a user switches displays, the switching can be performed at a higher speed than the processor. Answer 20. Further the Examiner reasons that Kosaka’s teaching of two independent display data outputs from two different controllers derives an understanding that two clock speeds may be used. Id. Based upon these findings the Examiner concludes the second controller would have an independent clock as claimed. Id at 21. We disagree. The Examiner’s explanation does not cite sufficient evidence to support this finding, and we do not find sufficient Appeal 2012–004094 Application 11/726,776 4 evidence to suggest the second controller has an independent clock. Further, even if we did accept the Examiner’s premise that two clock speeds are used, such finding is not the same as the clocks being independent. Thus, we conclude the Examiner has not shown all of the elements of independent claims 1 and 23 through 25 are taught by the prior art and, we do not sustain the Examiner’s rejection of the independent claims or the claims which depend thereupon. NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b) Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection against claim 24 under 35 U.S.C. § 101. This claim recites a machine- readable storage medium. Appellant’s Specification does not identify what comprises a machine-readable storage medium. We do not consider the term machine-readable storage medium to be limited to non-transitory media, and thus, we consider the claim to be broad enough to encompass a transitory signal. A signal is not within one of the four categories of patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential); Manual of Patent Examining Procedure (“MPEP”) § 2106(I), ed. 8, Rev. 9 (Aug. 2012). Accordingly, we now reject claim 24 as being drawn to subject matter that is not eligible for patent protection under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 1 through 16, and 23 through 31 is reversed. Appeal 2012–004094 Application 11/726,776 5 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 C.F.R. 41.50(b) ELD