Ex Parte 4439759 et al

Board of Patent Appeals and Interferences

Sep 29, 2010

90008721 (B.P.A.I. Sep. 29, 2010)

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.
90/008,721 07/24/2007 4439759 75543-014 7264
7590 09/30/2010
Lucent Technologies, Inc.
600 Mountain Avenue
P. O. Box 636
Murray Hill, NJ 07974
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte LUCENT TECHNOLOGIES, INC.
________________

Appeal 2010-009146
Reexamination Control 90/008,721
Patent 4,439,759
Technology Center 3900
________________

Before JAMESON LEE, KARL EASTHOM, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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Reexamination Control 90/008,721

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Lucent Technologies, Inc. appeals under 35 U.S.C. § 134(b) and 306
from the Examiner’s final rejection of claims 1-4. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We affirm-in-part.
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination of
U.S. Patent 4,439,759 (“the ’759 patent”) that was filed on July 24, 2007, by
Kenneth L. Cage of McDERMOTT WILL & EMERY LLP, Reexamination
Control No. 90/008,721.
The ’759 patent
The ’759 patent is now expired. It relates to a terminal independent
color memory for digital image display systems (col. 1, ll. 7-9).
Claims 1 and 4 are illustrative:
1. In a digital image display system:
a memory for storing color data values;
processing means responsive to a predetermined
command and data sequence comprising at least one
command, the processing means decoding the
predetermined command and data sequence, the
predetermined command and data sequence selecting one
of a plurality of modes of access to color data values, the
modes comprising
a first mode of access wherein an in-use
foreground color is directly specified as a color
data value;
a second mode of access wherein the in-use
foreground color is specified as an index into the
color memory; and
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a third mode of access wherein the in-use
foreground color and an in-use background color
are specified as indexes into the color memory;
and
display means responsive to the processing means, the
display means displaying the colors associated with the
color data values accessed by the selected mode.
4. In a video image display system having a color
memory, a method for displaying a color image in a
terminal independent manner responsive to commands
and data received from a command and data source, the
method comprising the steps of:
receiving commands and data from the command and
data source;
reading a first command for selecting a mode of access to
the color memory, and responsive to data following the
first command, selecting the mode of access to the color
memory;
reading a second command for setting color data values
in the color memory and, responsive to data following
the second command, setting the color data values in the
color memory,
reading a third command for accessing color data values
in the color memory, and
displaying a color image associated with the color data
values accessed by the third command on a video display
terminal.
Reference
The Examiner relies on the following reference as evidence in support
of the rejection:
Mueller US 4,213,189 Jul. 15, 1980
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Rejection
Claims 1-4 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Mueller.
ISSUES
Issue 1
Appellant submits that “Mueller . . . does not disclose the first mode
of access, which requires direct color specification” (App. Br. 10).
Issue: Did the Examiner err in finding that Mueller teaches a first
mode of access wherein an in-use foreground color is directly specified as a
color data value?
Issue 2
Appellant argues that “Mueller fails to teach or suggest ‘a first
command, a second command and a third command’” (App. Br. 20).
Issue: Did the Examiner err in finding that Mueller teaches the
claimed first, second, and third commands?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
1. Mueller discloses a system “including color pointers for
identifying those colors of the palette by which the characters of
the image currently being displayed are to be colored” (col. 44,
ll. 24-26).
2. Mueller discloses a text mode in which a “text color memory . . . is
addressed by a color pointer developed from the first and second
look-up control bits R1, R2 R3 in addition to the first look-up data
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bits d1-d6. In this mechanization, there is only one process, the
PAINT DOT process” (col. 22, ll. 47-54).
3. Mueller discloses a text mode in which “the color processor 32
may operate . . . in a PAINT DOT process to address the
previously-loaded color pointers therein, whereby the selected
color pointers are read out” (col. 19, ll. 7-13).
4. Mueller discloses a “color processor is operative in the first or text
mode, or in the second or paint mode” (col. 16, ll. 66-67).
5. Mueller discloses that “I/O data bus 22 delivers color command
signals to be variously stored in a TEXT mode color address
controller 81 or in an art hardware circuit 79” (col. 17, ll. 3-5).
6. Mueller discloses that “previously-stored color pointers of the
foreground and background are read out through selectively
actuated drivers” (col. 20, ll. 51-53).
7. The ’759 patent discloses that “[c]olor mode 0 of the present
terminal independent color memory is adapted for use in digital
image display systems employing a direct color selection process
either from permanent or semi-permanent color memory” (col. 6,
ll. 48-52).
8. The ’759 patent discloses “a specific color value selection method:
a direct selection of data values for the primary colors—red, green
and blue” (col. 1, ll. 20-22).
9. The ’759 patent discloses “a technique for specifying both a
foreground and a background color by indexing a permanent read-
only color memory” (col. 1, ll. 24-27).
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PRINCIPLES OF LAW
Expired patent claim interpretation
In a reexamination proceeding involving claims of an expired patent,
claim construction pursuant to the principle set forth by the court in Phillips
v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (words of a claim
“are generally given their ordinary and customary meaning” as understood
by a person of ordinary skill in the art in question at the time of the
invention) should be applied since the expired claims are not subject to
amendment.
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
ANALYSIS
Issue 1
Appellant argues that Mueller does not teach the claimed first mode of
access. Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to issue 1 on the basis of claim 1. See 37 C.F.R. §
41.37(c)(1)(vii).
The Examiner finds that Appellant’s arguments regarding the first
mode of access limitation are moot because “the phrase ‘direct color
specification’ does not appear in either claim 1 or the specification”
(Ans. 10). Nonetheless, claim 1 recites “a first mode of access wherein an
in-use foreground color is directly specified as a color data value” (emphasis
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added). Moreover, the ’759 patent discloses a color mode 0 that employs a
direct color selection process (FF 7). Such processes use the direct selection
of data values for the primary colors red, green, and blue (FF 8). These
processes contrast with techniques for specifying colors by indexing a color
memory (FF 9).
The Examiner relies on Mueller’s PAINT DOT process teachings to
illustrate the claimed first mode of access limitation (Ans. 4, 11). However,
the PAINT DOT process uses color pointers (FF 2, 3), which identify colors
of a palette by which characters of an image are to be colored (FF 1). These
teachings show that Mueller’s PAINT DOT process indexes (uses color
pointers) a color memory (which identify colors of a palette). The Examiner
does not show how Mueller relates to direct color specification techniques
that do not rely on indexing a color memory. Therefore, the Examiner does
not show that Mueller teaches a first mode of access wherein an in-use
foreground color is directly specified as a color data value.
The Examiner finds that “it is within the scope of the invention to
invoke just one single mode” (Ans. 11) (emphasis omitted). If this were
true, then if Mueller taught one of the other claimed access modes, then
Mueller might still anticipate the claimed invention. However, we do not
agree with the Examiner that only one mode is required. The claims require
“processing means responsive to a predetermined command and data
sequence, the predetermined command and data sequence selecting one of a
plurality of modes of access to color data values, the modes comprising . . . ”
(claim 1). Since the system of claim 1 selects from a plurality of modes that
includes each of three modes, it follows that claim 1 requires the presence of
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each of the three modes from which to select. Even assuming one of the
modes is ultimately selected, claim 1 recites that the “plurality of modes”
comprises each of the three nodes which requires that at least each of the
three nodes be available for selection. As set forth above, the Examiner has
not demonstrated that Mueller discloses the claimed “first mode” (i.e., a
mode in which a color “is directly specified as a color data value”).
For at least these reasons, we conclude that the Examiner erred in
rejecting claims 1-3 under 35 U.S.C. § 102(e).
Issue 2
Appellant argues that Mueller does not teach the claimed first, second,
and third commands as recited in claim 4. Appellant submits that “[a]s can
be seen, the cited passages of Mueller fail to disclose the claimed features
with sufficient specificity and consequently fail to anticipate said features”
(App. Br. 20). Appellant submits that Mueller does not teach the claim
recitations, but Appellant fails to explain the differences between the claim
limitations and the teachings of Mueller (App. Br. 18-21).
Mueller teaches a color processor operative in text and paint modes
(FF 4). Mueller teaches an I/O data bus that delivers color command signals
for storage in a TEXT mode color address controller (FF 5). Mueller also
teaches reading out previously-stored color pointers (FF 6). Therefore,
Mueller teaches reading a first command for selecting a mode of access to
the color memory, and responsive to data following the first command,
selecting the mode of access to a color memory (a color processor operative
in text and paint modes); reading a second command for setting color data
values in the color memory and, responsive to data following the second
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command, setting the color data values in the color memory (an I/O data bus
that delivers color command signals); and reading a third command for
accessing color data values in the color memory (and reading out previously-
stored color pointers).
Appellant also argues that “Appellant initially shows error in the
rejection of claim 4 for reasons given above with respect to claim 1” (App.
Br. 19). However, claim 4 is an independent claim that recites a method. It
does not depend on the digital image display system of claim 1. The claim
limitations are substantially different. For example, while claim 1 recites
three specific modes of access, claim 4 merely recites a generic “mode of
access to the color memory.” Appellant fails to identify which arguments
regarding claim 1 are relevant to showing error in the Examiner’s rejection
of claim 4. Therefore, Appellant does not raise any additional issues with
respect to claim 4.
For at least these reasons, we find no evidence persuasive of error in
the Examiner 35 U.S.C. § 102(e) rejection of claim 4.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we find that the
Examiner erred in finding that Mueller teaches a first mode of access
wherein an in-use foreground color is directly specified as a color data value.
Furthermore, we find no evidence of error in the Examiner’s finding
that Mueller teaches the claimed first, second, and third commands.
DECISION
We reverse the Examiner’s decision rejecting claims 1-3 under 35
U.S.C. § 102(e).
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We affirm the Examiner’s decision rejecting claim 4 under 35 U.S.C.
§ 102(e).
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART

saw

For Patent Owner:

Lucent Technologies, Inc.
600 Mountain Avenue
P. O. Box 636
Murray Hill NJ 07974

For Third Party Requester:

Kenneth L. Cage
McDermott Will & Emery LLP
600 13th Street N.W.
Washington, DC 20005-3096