Ex Parte Fushiki et al

Patent Trial and Appeal BoardOct 29, 2012

11057497 (P.T.A.B. Oct. 29, 2012)

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. 11/057,497 02/14/2005 Ikko Fushiki 137847.02 6341 27366 7590 10/29/2012 WESTMAN CHAMPLIN (MICROSOFT CORPORATION) SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER REPKO, JASON MICHAEL ART UNIT PAPER NUMBER 2666 MAIL DATE DELIVERY MODE 10/29/2012 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 IKKO FUSHIKI, HOCK SAN LEE, and J. ANDREW GOOSSEN ____________ Appeal 2010-005596 Application 11/057,497 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and JAMES R. HUGHES, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005596 Application 11/057,497 2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-6, 9-11, 13, 15, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. STATEMENT OF THE CASE Appellants’ claimed invention “is related to computer graphing systems. In particular, the present invention is related to transforming and rendering shapes on a computer output device.” (Spec. 1). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of displaying an image on a computer screen, the method comprising: describing at least a portion of a base image as a path comprising two functions of at least one variable, the path representing multiple pixels, one of the two functions defining values for a first coordinate, u, of the path and the other of the two functions defining values for a second coordinate, v, of the path; performing a non-affine transform on the path instead of the multiple pixels represented by the path to produce a transformed path by placing the function including the variable that defines values for the first coordinate u in place of u in two transform functions and placing the function including the variable that defines values for the second coordinate v in place of v in the two transform functions, where one of the two transform functions provides values for a first coordinate, x, of the transformed path and where the other of the two transform functions provides values for a second coordinate, y, of the transformed path, where the two transform functions are defined as: Appeal 2010-005596 Application 11/057,497 3 x = uvαx + uβx + δx y = uvαy + uβy + δy ; and rendering the transformed path onto the computer screen. REJECTION The Examiner rejected claims 1, 3-6, 9-11, 13, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable based over the combination of Watters (U.S. Patent Number 5,604,852, issued February 18, 1997) and Tuceryan (U.S. Patent Number 6,044,168, issued March 28, 2000). (Ans. 3- 13). GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal on the basis of representative claims 1, 10, 16. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants’ Contentions Regarding the group including claims 1, 3-6, and 9, Appellants admit that the two transform functions taught by Tuceryan “are the same bilinear transform functions that are found in claim 1.” (App. Br. 5). However, Appellants dispute that “it would be obvious to replace the two coordinates of a single vertex in Tuceryan with the functions that describe a parametric curve in Watters to produce the invention of claim 1.” (Id.). Appellants aver that “there is no rational underpinning to support the legal conclusion that such a replacement would be obvious.” (Id.). In particular, regarding claims 1, 3-6, 9-11, 13, 15, and 16, Appellants contend: Appeal 2010-005596 Application 11/057,497 4 However, there is no indication in Watters that applying the functions of the parametric curves in Watters to a bilinear transform function would be well suited to "modeling real world objects." Instead, Watters indicates that instead of using parametric curves directly to draw lines, the parametric curves should be approximated by a set of polylines that can be rendered on a display. (Watters, column 32, lines 47-50 and column 33, line 13 - column 34, line 62). Thus, instead of indicating that parametric curves are well suited to "modeling real world objects", Watters actually teaches that parametric curves are not directly useful for drawing images and should be approximated by a set of lines. Similarly, there is no indication in Tuceryan that applying functions of parametric curves to a bilinear transform would be well suited to "modeling real world objects". Instead, Tuceryan teaches that modeling real world objects should be done using a set of 383 vertices that define a triangular mesh and then applying image data of a real world object over the model. (Tuceryan, column 4, lines 16-17). Further, Tuceryan indicates that the coordinates of the individual vertices should be transformed, not functions of a variable. (Tuceryan, column 5, line 66 - column 6, line 13) Thus, there is no factual basis, no "rational underpinning," in the cited art to support the Examiner's conclusory statement that replacing the coordinates of a vertex in Tuceryan with functions that describe parametric curves as found in Watters would be obvious because the parametric curves in Watters are well suited to modeling real world objects. (App. Br. 5-6). Regarding the group including representative claim 10, and claims 11, 13, and 15, Appellants contend: Tuceryan and Watters do not render claim 10 obvious because it would not be obvious to combine the two references to place functions including a variable in two transform functions to Appeal 2010-005596 Application 11/057,497 5 produce transformed functions that define coordinates on a computer screen. As noted above, the Examiner has not provided any rational underpinning for the conclusory statement that it would be obvious to take the parametric curve functions of Watters and apply them directly to the bilinear transforms of Tuceryan. Further, replacing the coordinates of individual vertices that are transformed in Tuceryan with the parametric curve functions of Watters is more than a mere substitution of one known element for another because, as noted above, such a substitution significantly increases complexity without providing any benefit given the teachings of Watters and Tuceryan. As such, the combination suggested by the Examiner would not be obvious to one skilled in the art and therefore claim 16 is not obvious from Watters and Tuceryan. (App. Br. 9-10). Claim 16 Regarding representative claim 16, Appellants essentially restate the same arguments presented above for claim 10. (App. Br. 11-12). ISSUE Issue 1: Did the Examiner err in combining the references under §103? ANALYSIS At the outset, we agree with Appellants (App. Br. 5) that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (U.S. 2007). See App. Br. 5. However, the Supreme Court also guides that “[a]s our precedents make clear . . . the analysis need not seek out precise teachings directed to the Appeal 2010-005596 Application 11/057,497 6 specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” (Id.). “It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 402. The Court of Appeals for the Federal Circuit also guides that the motivation to combine under § 103 may also be established, not just by the teachings of the respective references, but also by the nature of the problem to be solved, or within the general knowledge of an artisan in the field of the invention, to look to particular sources, to select particular elements, and to combine them as combined by the inventor. Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000) (emphasis added). We find this reasoning is applicable to the Examiner’s proffered combination of Watters and Tuceryan. On this record, we are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418)). Nor have Appellants rebutted the Examiner’s legal conclusion of obviousness by showing that the claimed combination of familiar elements produces any new function. To the contrary, Appellants admit that the two transform functions taught by Tuceryan “are the same bilinear transform functions that are found in claim 1.” (App. Br. 5). Appellants have not provided any factual evidence of secondary considerations, such as Appeal 2010-005596 Application 11/057,497 7 unexpected or unpredictable results, commercial success, or long felt but unmet need. Thus, for these reasons, we disagree with Appellants’ contentions regarding the Examiner’s obviousness rejection. Based upon our review of the record, we agree with the Examiner’s finding that “Appellants' claimed invention can be arrived at by a simple substitution of one known element (set of points created from Watters' functions) for another (Tuceryan's point set) to obtain predictable results (a transformed set of points).” (Ans. 18, last paragraph). We also are of the view that the Examiner does provide a sufficient rational underpinning to support the legal conclusion of obviousness: At the time of the invention, it would have been obvious to a person of ordinary skill in the art to warp Watters' parametric curves using Tuceryan's bilinear transform by using Watters' equation for y (line 57 of column 32) to supply the values for Tuceryan's Ym in the two transform functions and using Watters' equation for x (line 59 of column 32) to supply the values for Tuceryan's Xm in the two transform functions. That is, it would have been obvious to transform the starting and ending points of each segment of Watters' parametric curves using Tuceryan's transform functions described at line 7 of column 6, or alternatively, transform Watters' functions directly then create the line segments to arrive at the claimed transformed path. The motivation for doing so would have been to use Watters' curves in modeling real world objects, which Watters' parametric representation would be well suited to do. For example, Watters' curved lines could be used to model faces by drawing curved lines through the feature points shown in Figure 7 in Tuceryan. Watters' curves could be warped according to Tuceryan's transform to produce an animation as described at lines 10-20 of column 6. Watters discloses the computational advantages of using a parametric representation to draw lines Appeal 2010-005596 Application 11/057,497 8 that approximate a parametric curve at in lines 33-38 of column 3 and lines 14-17 of column 35. Moreover, the substitution of Watters' parametric equations into Tuceryan's bilinear transform is a simple substitution of one known element for another to obtain the predictable result of a warping the representation of the original geometric shape. Tuceryan's method differs only from the claimed method by the substitution of Watters' "path comprising two functions" for lines in Tuceryan's model (see mapping above). Drawing lines using parametric equations instead of line segments is known (Watters' at lines 16-38 of column 3). One of ordinary skill in the art could have substituted Watters' teachings into Tuceryan by using Watters' equation for y (line 57 of column 32) to supply the values for Tuceryan's Ym in the two transform functions and using Watters' equation for x (line 59 of column 32) to supply the values for Tuceryan's Xm in the two transform functions. Therefore, it would have been obvious to combine Watters et al. with Tuceryan et al. to obtain the invention specified in claim 1. (Ans. 6-7). In the “Response to Arguments” portion of the Answer, we particularly observe that the Examiner supports the finding that parametric curves are well suited to represent real-world objects (and the aforementioned reasons for combining the Watters and Tuceryan references), with specific citations to extrinsic evidence. (Ans. 15). However, Appellants’ Reply Brief is silent regarding any mention of the Examiner’s extrinsic evidence as proffered in support of the rejection. Moreover, Appellants present in the Reply Brief new “teaching away” and “hindsight” arguments. (Reply Br. 4). We note that “[t]he reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to Appeal 2010-005596 Application 11/057,497 9 rebut the Examiner's rejections, but were not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“Informative”). Cf. Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived.") (citations and quotation marks omitted). Because Appellants have failed to present any rebuttal to the Examiner’s proffered extrinsic evidence (Ans. 15), and for the reasons discussed above, we find the weight of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Therefore, for essentially the same reasons set forth by the Examiner (Ans. 13-19), as discussed above, we sustain the Examiner’s § 103 rejection of representative independent claims 1, 10, and 16. The associated respective dependent claims (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the Examiner's rejection of claims 1, 3-6, 9-11, 13, 15, and 16 under 35 U.S.C. § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Vsh