Takahiro Harada et al.

Patent Trials and Appeals Board

Dec 11, 2019

13892712 - (D) (P.T.A.B. Dec. 11, 2019)

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.
13/892,712 05/13/2013 Takahiro Harada AMD-120072-US-NP 8493
25310 7590 12/11/2019
VOLPE AND KOENIG, P.C.
DEPT. AMD
30 SOUTH 17TH STREET -18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
GE, JIN
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
12/11/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHIRO HARADA, JERRY MCKEE, and JASON YANG
Appeal 2018-003755
Application 13/892,712
Technology Center 2600
BEFORE JEAN R. HOMERE, JASON V. MORGAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–27. Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 We refer to the Specification, filed May 13, 2013 (“Spec.”); Final Office
Action, mailed July 14, 2017 (“Final Act.”); Appeal Brief, filed November
9, 2017 (“Appeal Br.”); and Examiner’s Answer, mailed December 22, 2017
(“Ans.”), and the Reply Brief, filed February 22, 2018 (“Reply Br.”). An
oral hearing was held in this appeal on November 15, 2019. A transcript of
the oral hearing is being prepared and will be entered into the record in due
course.
2 We use the word “Appellant” to refer to “Applicant” as defined in
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Application 13/892,712
2
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for improving light culling efficiency and dynamic
shadowing from many light sources (i.e., displaying lights from direct and
indirect sources simultaneously) wherein a graphics processor using minimal
computational resources performs forward rendering with light culling in a
video game. Spec. ¶ 4. As depicted in Figure 1, a graphics rendering
pipeline (100) having a graphics processing unit (GPU) executing a
computer shader code segment culling operation (110) on a per tile basis
generates a list of light indices overlapping each pixel. Id. ¶¶ 25– 27, 59.
The GPU then executes a pixel shader code segment to perform a surface
shading operation (115) by evaluating materials using information related to
each light index. Id. ¶¶ 25–27, 59. Then, the GPU limits the number of
shading permutations executed to reduce pixel overdraw in the graphics
rendering pipeline. Id. ¶¶ 3, 24.
Claims 1, 11, 18, and 26 are independent. Claim 1, reproduced below
with disputed limitations emphasized in italics, is illustrative of the claimed
subject matter:
1. A method for rendering a screen, the screen composed of
pixels, comprising:
culling, on a per tile basis, a light list to generate a list of light
indices overlapping each pixel; and
performing surface shading by evaluating materials using
information related to each light index,
wherein the culling and performing surface shading are executed in a
graphics rendering pipeline using a graphics processing unit, the
culling and performing surface shading at least limiting a number of

37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Advanced Micro Devices (AMD), Inc. Appeal Br. 3.
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shader permutations executed and reducing pixel overdraw in the
graphics rendering pipeline using the graphics processing unit.
(Emphasis added).

III. REFERENCES
Name3 Reference Date
Tsao US 2007/0273689 A1 Nov. 29, 2007
Falchetto US 2008/0170066 A1 July 17, 2008
Schreyer US 2013/0293544 A1 Nov. 7, 2013
Johan Andersson, Parallel Graphics in Frostbite- Current & Future,
Beyond Programmable Shading, SIGGRAPH 2009 previously available at
http://s09.idav.ucdavis.edu/talks/04-JAndersson-ParallelFrostbite-
Siggraph09.pdf4

Johan Andersson, Bending the Graphics Pipeline, Beyond Programmable
Shading Course, ACM SIGGRAPH 2010

Elmar Eisemann and Xavier Décoret, Fast Scene Voxelization and
Applications, Association for Computing Machinery, Inc., 71–78, 223
(2006)

Martin Kinkelin and Christian Leinsberger, Instant Radiosity An Approach
for Real-Time Global Illumination, ICGA/TU (2008)

Ola Olsson and Ulf Assarsson, Tiled Shading, 15 Journal of Graphics,
GPU, and Game Tools, 235–51 (2011)

Steven Tovey and Stephen McAuley, Parallelized Light Pre-Pass
Rendering with the Cell Broadband Engine, 3D Engine Design, 509–28

3 All reference citations are to the first named inventor only.
4 The reference is currently unavailable at the cited locations. It is available,
however, through Archive.org. Another version of this reference, with only
minor, non-substantive differences, is available at https://media.contentapi.
ea.com/content/dam/eacom/frostbite/files/04-jandersson-parallelfrostbite-
siggraph09.ppt (last accessed December 2, 2019).
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IV. REJECTIONS5
Claims Rejected 35 U.S.C. § Basis/References
1–27 101 Patent eligibility
1, 11, 12, 18, 25–27 102(e) Schreyer
2, 3, 19, 20 103(a) Schreyer, Tovey
4, 10, 13, 14, 17, 21, 24 103(a) Schreyer, Kinkelin
5, 22 103(a) Schreyer, Kinkelin, Andersson
15 103(a) Schreyer, Falchetto
6 103(a) Schreyer, Tovey, Falchetto
7, 8 103(a) Schreyer, Tovey, Falchetto,
Tsao
9, 23 103(a) Schreyer, Tovey, Falchetto,
Tsao, Eisemann
16 103(a) Schreyer, Falchetto, Tsao,
Eisemann
1, 2, 11, 18, 26 102(a) Olsson

V. ANALYSIS
1. Patent Eligibility Rejection
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo

5 The Examiner withdrew the 112 rejections. Ans. 3–4.
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and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176, 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
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protection for that formula in the abstract . . . is not accorded the protection
of our patent laws,[] and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook), and 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO published revised guidance on the application of
section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 PEG”). Recently, the PTO published
an update to that guidance. October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942 (hereinafter “PEG Update”). Under the 2019
PEG, and PEG Update, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and

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(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).6

See 2019 PEG, 52, and 55–56. Only if a claim (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, does the Office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 PEG 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
The Examiner determines claims 1–27 are directed to the abstract idea
of “the idea itself.” Ans. 5. According to the Examiner, because the claims
do not specify how the list of light sources is derived, how they are culled,
and how the surface shading is performed, the claimed limitations
correspond to “[c]ollecting information, analyzing it, and displaying certain
results of the collection and analysis.” Id. (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). Further, the Examiner
determines that the claim is merely directed to using a generic computer to
perform the well-understood, routine and conventional functions of culling
light sources and shading surfaces. Id. at 5–6.

6 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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Our Review
Applying the guidance set forth in the 2019 PEG, we determine
whether the Examiner has erred in rejecting the claims as being directed to
patent ineligible subject matter. In revised step 1 of 2019 PEG, we consider
whether the claimed subject matter falls within the four statutory categories
of patentable subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter. Because independent claims 1 and
11 recite a method including a number of steps, claims 1 and 11 fall within
the process category of patentable subject matter. Because independent claim
18 recites a processor, claim 18 falls within a machine category of patentable
subject matter. Because independent claim 26 recites a computer-readable
“non-transitory medium” including instructions, when executed by a
computer, performs various functions, claim 26 falls within the manufacture
category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially excepted groupings: (1) mathematical
concepts; (2) certain methods of organizing human activity such as
fundamental economic practices; and (3) mental processes. Independent
claim 1 recites, inter alia, the following limitations:
[1] culling, on a per tile basis, a light list to generate a list of
light indices overlapping each pixel; and
[2] performing surface shading by evaluating materials using
information related to each light index,
[3] wherein the culling and performing surface shading are executed in
a graphics rendering pipeline using a graphics processing unit, the
culling and performing surface shading at least limiting a number
of shader permutations executed and reducing pixel overdraw in
the graphics rendering pipeline using the graphics processing unit.
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At a high level, the claimed invention relates to a graphics processor
rendering graphics in a video game by simultaneously culling lights from
direct and indirect sources followed by a surface shading operation for
reducing pixel overdraw in the graphics rendering. Although we agree with
the Examiner that these activities may involve collecting data, analyzing
data, and displaying the result of the data analysis, we do not concur with the
Examiner that they merely refer to “the idea itself.” As correctly argued by
Appellant, the claims are directed to a particular arrangement of the culling
of light sources and surface shading sequences in the graphics rendering
pipeline to improve the efficiency of a GPU rendering graphics in the
computer display. Appeal Br. 19 (citing Spec. ¶¶ 3, 74). Because the
disclosed arrangement of culling and surface shading operations not only
improve the individual operations themselves, but also improve the
efficiency of the GPU processing, we agree with Appellant that the claimed
limitations fundamentally change how the GPU operates. Id. (citing Enfish).
We further agree with Appellant that the recitation of rules “limiting a
number of shader permutations executed and reducing pixel overdraw in the
graphics rendering pipeline using the graphics processing unit” results in
“optimally limiting amount of memory required to process the permutations
based on the application of rules with specific characteristics.” Id. at 21.
Therefore, because the amended claims incorporate rules limited by specific
characters to achieve an improved technological result in a conventional
industry practice, they are thus patent eligible. Id. (citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016)).
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Accordingly, we do not agree with the Examiner that independent
claim 1 recites the judicial exception of “the idea itself.” Id. Because
independent claims 11, 18, and 21 recite similar limitations, they also do not
recite the cited judicial exception. Furthermore, because claim steps 1–3,
outlined above, provide a technical solution to a technical problem as
required by DDR Holdings,7 we are persuaded by Appellant’s argument that
even if claims 1–27 were directed to an abstract idea, it is nonetheless
integrated into a practical application, and is thereby patent-eligible. Id.
Because Appellant has shown at least one error in the Examiner’s analysis of
Step I, we do not reach Step 2B of the Revised Guidance (corresponding to
step two of the Alice/Mayo test). We, therefore, determine claim 1 is
directed to patent eligible subject matter. For the foregoing reasons, we do
not sustain the § 101 rejection of claim 1. We, likewise, do not sustain the
rejection of claims 2–27, which recite similar limitations.
Prior Art Rejections
1. Schreyer
Appellant also argues Schreyer is not a valid prior art reference under
35 U.S.C. § 102(e) because Appellant invented the claimed subject matter
prior to the filing date of the Schreyer’s patent application on May 3, 2012.

7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
The Federal Circuit found DDR’s claims are patent-eligible under § 101
because DDR’s claims: (1) do not merely recite “the performance of some
business practice known from the pre-Internet world” previously disclosed
in Bilski and Alice; but instead (2) provide a technical solution to a technical
problem unique to the Internet, i.e., a “solution . . . necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” DDR, 773 F.3d at 1257.
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Appeal Br. 29. Appellant argues that the 1.131 declarations filed on June
16, 2017, should have been considered and are sufficient to establish that
Appellant had possession of the claimed invented to the filing of the
Schreyer. Appeal Br. 25–32. In particular, Appellant argues the 1.131
affidavit declarations indicate that one of the inventors, Jay McKee,
presented a talk “Technology Behind AMD’s Leo Demo” at the Game
Developer Conference held in San Francisco, California on March 5–9,
2012, including:
1. Slides containing pseudo code with “algorithm Summary” included in
the application. Appeal Br. 25 (citing Supplemental Declaration
Appendix A);
2. A recorded video of the conference (“Leo Demo”) showing a
representative of the assignee of the Application, AMD, talking about
the technological advantages of the invention. Id. “Specifically, the
representative explains how the ‘Leo Demo’ practices the current
invention by using a forward renderer to show hundreds of lights from
both direct and indirect light sources simultaneously using minimal
computational resources.” Id. The “Leo Demo” also shows rendering
of screen that results from “limiting a number of shader permutations
executed and reducing pixel overdraw in the graphics rendering
pipeline” as recited in the present claims. In addition, the video shows
screen shots of Figures 3A, 3B, 5, 8A–8C, 9A–9C and 12 of the
present application were captured from the Leo Demo. Id. at 28.
Therefore, Appellant argues that if Figures 3A, 3B, 5, 8A–8C, 9A–9C
and 12 are enabling in the present application, then they are also
sufficient in the “Leo Demo” to demonstrate the functional principles
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of the claimed invention. Id. Therefore, Appellant submits that the
“Leo Demo” is sufficient to demonstrate the soundness of the present
invention. Id.
3. The Sushi2 Revision Log showing activity from May 20, 2011,
through January 30, 2011. Id. at 26.
4. The Culling Revision Log of the “Leo Demo” (Supplemental
Appendix E) showing activities from June 2, 2011, through December
22, 2011.
5. The Indirect Lighting Revision Log of the “Leo Demo” showing
continuous activities from June 6, 2011 through September 9, 2011.
(Supplemental Declaration Appendix F). Id.
According to Appellant, by showcasing substantial continuing activity
from May 20, 2011, through actual reduction to practice and the posting of
the video “Leo Demo” on YouTube on January 30, 2012, the 1.131 affidavit
declarations show the process, including timestamps of the revisions to the
source code, and thereby provide sufficient documentary evidence to show
conception, diligence, and/or actual reduction to practice. Id. at 26–27.
These arguments are persuasive.
The purpose of filing a § 1.131 Declaration is to demonstrate that the
Appellant invented the subject matter of the rejected claims prior to the
effective date of a reference. 37 C.F.R. § 1.131; In re Asahi/America Inc.,
68 F.3d 442, 445 (Fed. Cir. 1995). “Antedating a reference is a common
occurrence, governed by a stable and non-controversial jurisprudence.”
Loral Fairchild Corp. v. Matsushita Elec. Indus., 266 F.3d 1358, 1366 (Fed.
Cir. 2001) (Newman, P., concurring). A reference may be removed from
consideration by submitting an affidavit (Declaration) under 37 C.F.R.
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§ 1.131, antedating the reference. In re Costello, 717 F.2d 1346, 1349 (Fed.
Cir. 1983). See also In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974)
(“[F]or the purpose of antedating [a] reference under Rule 131, it is
sufficient that appellant has shown a reduction to practice of his basic
invention, which showing will also suffice as to claims differing therefrom
only in details which are obvious to one of ordinary skill in the art.”). “To
establish prior inventorship, one must show either a prior reduction to
practice of the invention or a prior conception followed by reasonable
diligence in reducing the invention to practice.” Life Technologies v.
Clontech Laboratories, 224 F.3d 1320 (Fed. Cir. 2000). “A party seeking to
antedate a reference based on reduction to practice must present evidence of
the actual reduction to practice of the invention prior to the effective date of
the reference.” In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). “To
demonstrate an actual reduction to practice, the Appellant must have:
(1) constructed an embodiment or performed a process that met all the
limitations of the claim and (2) determined that the invention would work
for its intended purpose.” In re Steed, 802 F.3d 1311, 1318 (Fed. Cir. 2015).
To demonstrate actual reduction to practice, “[a]n inventor cannot rely on
uncorroborated testimony to establish a prior invention date.” In re NTP,
Inc., at 1291. Instead, additional corroborating evidence is required and the
“evidence is assigned probative value and collectively weighed to determine
whether reduction to practice has been achieved.” Medichem S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006).
We do not agree with the Examiner that Appellant has not provided
sufficient documentary evidence to show conception, diligence, and/or
reduction to practice prior to the filing date of the Schreyer reference. Ans.
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9–15. We are particularly unpersuaded by the Examiner’s summary
dismissal of the cited volume of documentary evidence provided by
Appellant as merely being insufficient to replicate test conditions,
simulations, and test results, thus impairing a reasonable evaluation to
determine whether or not they satisfy the claimed limitations. Id. Instead,
we agree with Appellant that the record before us has sufficient independent
corroborating evidence to show that Appellant constructed the invention
prior to the May 3, 2012, filing date of the Schreyer reference and that
Appellant appreciated that the invention would work for its intended
purpose. Appeal Br. 30.8 As set forth by the controlling case law,
Appellant’s declarations need only establish that the claimed invention
physically existed and successfully worked for its intended purpose before
the effective date of the reference. In this case, Appellant submits
declarations including slides presented by Mr. McKee at the conference held
on March 5–9, 2012. Id. at 31. The slides include an example algorithm

8 The “person who first reduces an invention to practice is ‘prima facie the
first and true inventor.’” Mahurkar v. CR Bard, Inc., 79 F.3d 1572 (Fed.
Cir. 1996) (internal citation omitted). However, “an inventor’s testimony as
to the facts of invention must be corroborated by independent evidence.” In
re Garner, 508 F.3d 1376, 1380 (Fed. Cir. 2007). The “Independent
corroboration may consist of testimony of a witness, other than the inventor,
to the actual reduction to practice or it may consist of evidence of
surrounding facts and circumstances independent of information received
from the inventor.” Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981). Yet,
“the law does not impose an impossible standard of ‘independence’ on
corroborative evidence by requiring that every point of a reduction to
practice be corroborated by evidence having a source totally independent of
the inventor.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998).
Therefore, a patent should be awarded to the true inventor who is able
to provide surrounding facts and circumstances that show that the invention
was reduced to practice prior to the publication of a reference.
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that implements the invention, as well as pseudo code snippets that appear in
the originally filed patent application. Id. Although the declarations do not
outline point by point how each line of code relates to each claim limitation,
the declarations need not delve into such details. The declarations also state
a video “Leo Demo” recorded at the conference includes screenshots of
various Figures that illustrate principal features of the invention such as: (1)
using the forward renderer to show hundreds of lights from both direct and
indirect light sources simultaneously using minimal computational
resources; (2) rendering of screen that results from “limiting a number of
shader permutations executed; (3) reducing pixel overdraw in the graphics
rendering pipeline” as recited in the present claims. Id. The declarations
also include various logs of Appellant’s continuous activities from the date
of conception on May 20, 2011, through the posting of the video on
YouTube on January 30, 2012. Accordingly, we agree with Appellant that
the inventors in the present case exercised reasonable continuous diligence
from May 20, 2011, though the actual reduction to practice upon publishing
the “Leo Demo” on YouTube on January 30, 2012. Appeal Br. 26.
In Spiller, the court determined a Rule 131 Declaration showing
possession of the “basic invention,” or the “heart of the invention,” or
“establish[ing] broadly possession of the invention,” can be adequate to
antedate a prior art reference even if what is shown in the Rule 131
declaration does not include all of the limitations of the later-claimed
invention. Spiller, 500 F.2d at 1177. In this case, we find that Appellant has
sufficiently demonstrated a reduction to practice through a declaration and
exhibit showing possession of the “basic invention” or the “heart of the
claimed invention.” Thus, Appellant has shown a reduction to practice of
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their basic invention, which showing will also suffice as to claims differing
therefrom only in details which are obvious to one of ordinary skill in the
art. See id. at 1178. We are satisfied that the cumulative weight of the
evidence before us favors Appellant’s position that the claimed invention
was actually reduced to practice before the May 3, 2012, filing date of the
Schreyer invention.
Because we are persuaded of Examiner error with regard to
Appellant’s declarations, which are dispositive of the rejections of claims 1–
27, we do not reach the additional arguments raised by Appellant. Therefore,
Schreyer is disqualified as prior art under 35 U.S.C. § 102(e). Accordingly,
we do not sustain the prior art rejections of claims 1–27 over Schreyer alone
or in combination with other references.
2. Olsson
Appellant argues Olsson is not a valid prior art reference under
35 U.S.C. § 102(a) because Appellant reduced the claimed invention prior to
October 12, 2011, and therefore prior to the November 8, 2011 publication
of the Olsson reference. Appeal Br. 32–33. Appellant argues that the 1.131
declaration filed by one of the inventors, Takahiro Harada, should have been
considered and are sufficient to establish that Appellant had possession of
the claimed invented to the publication of Olsson. Appeal Br. 34. In
particular, Appellant argues that the “Leo Demo” video was captured on
October 12, 2011, is not only supported by Takahiro Harada’s declaration, it
is corroborated by independent evidence from Abe Wiley’s email on
October 12, 2011, stating “I have posted an updated movie on the Leo demo
to the network.” Id. (quoting Supplemental Declaration Appendix B).
According to Appellant, Abe Wiley’s email further is corroborated by the
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Premiere Revision Log showing that he created the “Premiere project for
creating the Leo movie from Shushi output” on September 19, 2011. Id.
(quoting Supplemental Declaration Appendix C). Appellant further submits
that the Premiere Revision Log is supported by the Light Culling Revision
Log of the Leo Demo showing “cones as capsules, simplified per tile
culling” being implemented on September 30, 2011. Id. (quoting
(Supplemental Appendix E). Consequently, Appellant submits that because
the video of the “Leo Demo” was reduced to practice on October 12, 2011, it
antedates the November 8, 2011, publication of the Olsson reference. Id.
These arguments are persuasive.
We do not agree with the Examiner’s summary dismissal of the
evidence presented by Appellant as merely being insufficient to show
reduction to practice. Ans. 16–18. We note the Examiner merely parrots the
comments made regarding McKee’s declaration without particularly
addressing Appellant’s arguments regarding the merits of Harada’s
declaration and Wiley’s declaration. Accordingly, the Examiner has failed
to traverse Appellant’s arguments regarding that Harada’s declaration
supporting the “Leo Demo” was reduced to practice on October 12, 2011,
prior to the November 8, 2011, publication date of the Olsson reference.
Because we are persuaded of Examiner error with regard to
Appellant’s declarations, which are dispositive of the rejection of claims 1,
2, 11, 18, and 26, we do not reach the additional arguments raised by
Appellant. For the foregoing reasons, Olsson is disqualified as prior art
under 35 U.S.C. § 102(a). Accordingly, we do not sustain the prior art
rejection of claims 1, 2, 11, 18, and 26 over Olsson.
VI. CONCLUSION
Appeal 2018-003755
Application 13/892,712
18
We reverse the Examiner’s patent eligibility rejections of claims 1–27
under 35 U.S.C. § 101. We reverse the Examiner’s prior art rejections of
claims 1–27.

In summary:

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–27 101 Patent eligibility 1–27
1, 11, 12, 18,
25–27 102(e) Schreyer
1, 11, 12, 18,
25–27
2–10, 13–17,
19–24 103(a)
Schreyer, Tovey,
Kinkelin, Falchetto,
Andersson, Tsao,
Eisemann
2–10, 13–17, 19–24
1, 2, 11,18, 26 102(a) Olsson 1, 2, 11,18, 26
Overall
Outcome 1–27

REVERSED