Takahiro Harada et al.Download PDFPatent Trials and Appeals BoardDec 11, 201913892712 - (D) (P.T.A.B. Dec. 11, 2019) Copy Citation 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 Appeal 2018-003755 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. Appeal 2018-003755 Application 13/892,712 3 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). Appeal 2018-003755 Application 13/892,712 4 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. Appeal 2018-003755 Application 13/892,712 5 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 Appeal 2018-003755 Application 13/892,712 6 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 Appeal 2018-003755 Application 13/892,712 7 (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). Appeal 2018-003755 Application 13/892,712 8 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. Appeal 2018-003755 Application 13/892,712 9 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)). Appeal 2018-003755 Application 13/892,712 10 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. Appeal 2018-003755 Application 13/892,712 11 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 Appeal 2018-003755 Application 13/892,712 12 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. Appeal 2018-003755 Application 13/892,712 13 § 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. Appeal 2018-003755 Application 13/892,712 14 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. Appeal 2018-003755 Application 13/892,712 15 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 Appeal 2018-003755 Application 13/892,712 16 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 Appeal 2018-003755 Application 13/892,712 17 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 Copy with citationCopy as parenthetical citation