Ex Parte Stavely et al

Board of Patent Appeals and Interferences

May 30, 2007

10417656 (B.P.A.I. May. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD J. STAVELY,
MARK J. BIANCHI, DAVID K. CAMPBELL,
AMY E. BATTLES, and HEATHER NOEL BEAN
____________

Appeal 2007-0831
Application 10/417,656
Technology Center 2600
____________

Decided: May 30, 2007
____________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN,
and LANCE LEONARD BARRY, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1 to 24. We have jurisdiction under 35 U.S.C. § 6(b).
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Appellants have invented a method and apparatus for displaying a
reduced-pixel, whole image that comprises fewer active pixels than an
original, complete image that can be displayed on the display (Specification
2). The reduced-pixel, whole image is displayed to conserve power
(Specification 11).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A method for controlling a display, comprising:

monitoring the state of a computing device associated with the
display;

determining if pixel reduction is warranted in view of the monitoring;
and
if pixel reduction is warranted, displaying a reduced-pixel, whole
image that comprises fewer active pixels than an original, complete image
previously presented in the display.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith US 5,167,024 Nov. 24, 1992
Chee US 5,886,689 Mar. 23, 1999
Ranganathan US 6,801,811 B2 Oct. 5, 2004
(filed Dec. 27, 2001)
The Examiner rejected claims 1 to 7, 9, 10, 12 to 19 and 21 to 24
under 35 U.S.C. § 103(a) based upon the teachings of Smith and
Ranganathan, and the Examiner rejected claims 8, 11 and 20 under 35
U.S.C. § 103(a) based upon the teachings of Smith, Ranganathan and Chee.

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Appellants contend that the motivation or suggestion to combine the
teachings of Smith and Ranganathan comes not from the references but from
Appellants’ own disclosure (Br. 8; Reply Br. 2).
We will sustain the obviousness rejections of claims 1 to 24.

ISSUES
1. Did the Examiner resort to impermissible hindsight reconstruction
to demonstrate the obviousness of the claimed subject matter?
2. Do the references teach reducing the resolution of an entire image?

FINDINGS OF FACT
Appellants describe a system and method for “monitoring the state of
a computing device associated with the display, determining if pixel
reduction is warranted in view of the monitoring, and, if pixel reduction is
warranted, displaying a reduced-pixel, whole image that comprises fewer
active pixels than an original, complete image previously presented in the
display” (Specification 2). According to Appellants, “displaying reduced
pixel images is advantageous not only from a power conservation standpoint
but also from a user feedback standpoint” (Specification 11).
Smith recognizes the power requirements of a display screen on a
portable computing device, and describes a power management scheme to
conserve battery power (col. 2, ll. 7 to 36). Smith is silent as to “displaying
a reduced-pixel, whole image that comprises fewer active pixels than an
original, complete image previously presented in the display.”

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Ranganathan, like Smith, is directed to “energy savings in computer
displays and particularly to energy savings in displays of mobile computing
systems” (col. 1, ll. 7 to 9). Ranganathan states in the “Background of the
Invention”:
Another example involves reducing the
number of pixels to consume less energy. Fonts,
icons and graphics can be designed to minimize
the number of pixels. With reduced font size the
number of pixels to be turned on can be smaller.
However, this approach can impact readability.

(Col. 1, l. 66 to col. 2, l. 3.)

The Examiner contends “it would have been obvious to a person of
ordinary skill in the art to modify the method of controlling a display taught
by SMITH, such that power conservation means includes pixel reduction by
displaying a reduced-pixel, whole image that comprises fewer active pixels
than an original, complete image previously presented in the display, as
taught/suggested by Ranganathan” (Answer 4). “The suggestion/motivation
for doing so would have been for consuming less energy
(RANGANATHAN: column 1, line 66 - column 2, line 3)” (Answer 4).

PRINCIPLES OF LAW
“Obviousness is tested by ‘what the combined teachings of the
references would have suggested to those of ordinary skill in the art.’” In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1599 (Fed. Cir. 1988).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
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time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
“All the disclosures in a reference must be evaluated, including
nonpreferred embodiments,” in an obviousness determination. In re Mills,
470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972).
Our reviewing court has stated that “limitations from the specification
must not be imported into the claims.” Nazomi Communications, Inc. v.
ARM Holdings, PLC, 403 F.3d 1364, 1368, 74 USPQ2d 1458, 1461 (Fed.
Cir. 2005). Reading a claim in the light of the specification to interpret
broadly worded limitations explicitly recited in the claim is a quite different
thing from reading limitations of the specification into a claim to thereby
narrow the scope of the claim by implicitly adding disclosed limitations
which have no express basis in the claim. In re Prater, 415 F.2d 1393,
1405, 162 USPQ 541, 551 (CCPA 1969).

ANALYSIS
In view of Smith’s recognition that the display screen adds to the
power consumption in a portable computing device, and Ranganathan’s
teaching that power to the display can be reduced by reducing the number of
pixels that are turned on in the display screen, we agree with the Examiner’s
finding that it would have been obvious to the skilled artisan to modify
Smith’s display so that only a reduced number of pixels are turned on for
improved power consumption in the portable computing device. The
Examiner did not have to turn to Appellants’ disclosure to demonstrate the
obviousness of the claimed subject matter (Reply Br. 2).
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Appellants’ argument (Reply Br. 3) that “Ranganathan explicitly
identifies that the implications of pixel reduction are a problem in the
Background of the Invention section of the patent, and then goes on to
describe a solution that does not suffer from that problem” is without merit
because it is abundantly clear from the rejection that the Examiner is relying
solely on the admitted prior art in Ranganathan. As indicated supra, all of
the disclosures in a reference must be fairly evaluated for what they would
have suggested to the skilled artisan. If power reduction at the display is the
primary goal, then the skilled artisan would have known from the admitted
prior art in Ranganathan to use pixel reduction. On the other hand, if higher
resolution is the primary goal, then the skilled artisan would have known to
avoid the admitted prior art approach taught by Ranganathan because pixel
reduction would reduce the resolution of the display. In any event,
Appellants’ argument (Reply Br. 3 and 4) that Ranganathan “expressly
teaches away from the pixel reduction” is without merit in view of the
teachings found in the Background of the Invention in Ranganathan. Based
upon the teachings in the Background of Ranganathan, a font of reduced size
in the whole display requires fewer active pixels than a full-sized font
previously presented in the whole display. Displaying the “whole image” in
reduced-pixel form does not require more than only reducing the size of
some discrete text, as argued by Appellants (Reply Br. 5).
With respect to Appellants’ argument (Reply Br. 4 and 5) that “the
Examiner is not giving weight to the plain and ordinary meaning of
Applicant’s claims as interpreted by Applicant’s Specification, which clearly
describes and illustrates what such pixel reduction comprises,” we hereby
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decline Appellants’ invitation to read limitations from the disclosure into the
claims.

CONCLUSION OF LAW
The obviousness of the claimed subject matter has been demonstrated
by the Examiner. The Examiner did not have to resort to impermissible
hindsight to demonstrate the prima facie obviousness of claims 1 to 24.

DECISION
The obviousness rejections of claims 1 to 24 are 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

KIS

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