Ex Parte Gardiner et al

Board of Patent Appeals and Interferences

Oct 21, 2009

10969313 (B.P.A.I. Oct. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte HAROLD DEE GARDINER and RUSSELL JOSEPH URRY
_____________

Appeal 2009-001597
Application 10/969,313
Technology Center 2600
______________

Decided: October 22, 2009
_______________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and THOMAS S. HAHN,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001597
Application 10/969,313
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 22.
We affirm.
INVENTION
The invention is directed toward a method of generating volumetric
obscurants in a computer generated graphical image, e.g. generating fog,
smoke, or clouds in a computer generated image. See pages 2, 3 in
Appellants’ Specification. Claim 1 is reproduced below:
1. A method for rendering a volumetric obscurant in a computer
generated graphical image, comprising the steps of: defining a
polygon template as a volumetric obscurant comprising pixels and
sub-pixels;
spreading the sub-pixels in depth for pixels in the polygon
template to create a thickness for the volumetric obscurant; and
modulating a density of the sub-pixels to vary the distances
between the sub-pixels for the volumetric obscurant to create a
realistic image of a volumetric obscurant having a variable front
surface, a variable rear surface, and a variable interior density.

REFERENCE

Rick D. Bess & Brian T. Soderberg, “Battlefield Smoke – A New
Dimension in Networked Simulation,” BBN Sys. and Technologies Div.,
256-261 (1991).

Venceslas Biri et al., “Real-Time Animation of Realistic Fog,” Eurograhics
Workshop on Rendering, June 2002.

James D. Foley et al., “Second Edition in C Computer Graphics Principles
and Practice,” 642-646 (Addison-Wesley 1996).

2

Appeal 2009-001597
Application 10/969,313

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 22 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
The Examiner has rejected claims 1, 2, 5, 6, 9 through 17, and 19
through 22 under 35 U.S.C. § 103(a) as being unpatentable over Bess in
view of Biri.
The Examiner has rejected claims 3, 4, 7, and 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Bess in view of Biri and Foley.

ISSUES
Rejection under 35 U.S.C. § 101
Appellants argue on page 27 and 28 of the Appeal Brief1 and pages 4
through 8 of the Reply Brief that the Examiner’s rejection of claims 1
through 22 under 35 U.S.C. § 101 is in error. Appellants assert that the
Examiner has misconstrued the claims as consisting solely of mathematical
operations, and the claims recite converting a polygon into a volumetric
obscurant. Brief 27. Appellants conclude that the claims set forth a
practical application of the mathematical operations to create a realistic
image of a volumetric obscurant. Brief 27, Reply Brief 5-8.
Thus, Appellants’ contentions with respect to the rejection based upon
35 U.S.C. § 101 present us with the issue: have Appellants shown that the
Examiner erred in determining that claims 1 through 22 are directed to non-
3

Appeal 2009-001597
Application 10/969,313
statutory subject matter as they recite a mathematical operation without a
practical application?

Rejection of claims 1 through 22 under 35 U.S.C. § 103(a)
As discussed infra, our decision concerning the rejection of claims 1
through 22 is dispositive of the appeal. Accordingly, we do not reach the
issues raised with respect to the Examiner’s rejections of claims 1 through
22 under 35 U.S.C. § 103(a).

PRINCIPLES OF LAW
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc); see also Gottschalk v. Benson,
409 U.S. 63, 70 (1972). Further, while a claim may be drawn to a machine,
within the meaning of 35 U.S.C. § 101, the analysis to determine patent-
eligibility is not complete. See In re Ferguson, 558 F.3d 1359, 1363 (Fed.
Cir. 2009); see also Ex parte Gutta, No. 2008-4366, 2009 WL 2563524
(BPAI 2009) (per curiam).

ANALYSIS
Rejection of claims 1 through 22 under 35 U.S.C. § 101
Appellants’ arguments have not persuaded us that the Examiner erred
in determining that independent claims 1 and 20 are directed to non-statutory

1 Throughout the opinion we refer to the Brief dated September 5, 2007, and
Reply Brief dated February 7, 2008.
4

Appeal 2009-001597
Application 10/969,313
subject matter. Initially, we note that Appellants do not dispute the
Examiner’s finding that the claims recite a mathematical operation (an
algorithm), but rather Appellants focus on whether the claims recite a
practical application of the mathematical operation. Brief 28, Reply Brief 5-
8. Nevertheless, the test for process claims is whether the claim is tied to a
specific machine or that the claimed process transforms an article to a
different state or thing. Bilski, 545 F.3d at 961.
Claims 1 and 20 do not recite that the mathematical operation is
limited to a machine, let alone a particular machine. “[A] machine is a
concrete thing, consisting of parts, or of certain devices and combination of
devices. This includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce a
certain effect or result.” In re Ferguson, 558 F.3d at 1364 (Fed. Cir. 2009)
(quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (internal
quotation marks omitted), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir.
2008), and cert. denied, 129 S. Ct. 70 (2008)). Claim 1 recites a method for
rendering a volumetric obscurant in a computer-generated graphical image
such that the volumetric obscurant is to create a realistic image. Thus, the
claimed method is directed to applying the algorithm to an image and is
therefore not tied to a particular machine (e.g., a special-purpose computer).
Similarly, we do not consider the claimed process as transforming an
article to a different state or thing. Appellants argue that the independent
claims recite transforming a stamp polygon. Brief 27. As claimed, this
transformation is to create a volumetric obscurant, which Appellants argue
has uses in simulations such as creating the visual effect of an airplane flying
through a cloud. Reply Brief 5. These arguments, however, have not
persuaded us that the claim is drawn to transforming an article to a different
5

Appeal 2009-001597
Application 10/969,313
state or thing. The polygon is discussed on pages 1 and 2 of Appellants’
Specification as defining an area in which to simulate realistic-looking
obscurant elements (e.g. clouds) in an image. Thus, neither the polygon nor
the obscurant represents a physical item; rather, the polygon is an abstraction
to define a region of an image. The obscurant is also an abstraction as it is
not based upon a physical item, but rather is part of a simulation, i.e. it is not
based on the actual existence of a cloud in a captured image. Thus, (1) the
steps of spreading sub-pixels recited in claims 1 and 20, and (2) the step of
modulating the density of the sub-pixels recited in claim 1 do not transform
any physical object. The image is not a physical object and the data, which
is part of a simulation, does not represent a physical object. Accordingly,
we conclude that claims 1 and 20 do not transform such an object or data
representing such an object.
We note that the transformation of data into a visual depiction may be
sufficient to establish that the claimed invention recites patent eligible
subject matter under 35 U.S.C. § 101 “[s]o long as the claimed process is
limited to a practical application of a fundamental principle to transform
specific data, and the claim is limited to a visual depiction that represents
specific physical objects or substances.” Bilski, 545 F.3d at 963. As
discussed supra, the underlying data recited in independent claims 1 and 20,
and disclosed in Appellants’ Specification, do not represent physical objects
but rather an abstraction (a simulation).
Accordingly, we sustain the Examiner’s rejection of claims 1 through
22 under 35 U.S.C. § 101 as independent claims 1 and 20 are not tied to a
particular machine, or nor do they transform an article to a particular state or
thing.

6

Appeal 2009-001597
Application 10/969,313
Rejections of claims 1 through 22 under 35 U.S.C. § 103(a)
As to the prior art rejections of claims 1 through 22, our decision is
dispositive with respect to patentability since claims 1 through 22 on appeal
do not recite patent-eligible subject matter under § 101. We therefore need
not reach the question of whether claims 1 through 22 would have been
obvious under § 103. See Diamond v. Diehr, 450 U.S. 175, 188; In re
Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2008) (declining to reach
obviousness rejection on appeal after concluding many claims were non-
statutory under § 101); Bilski, 545 F.3d at 951 n.1 (noting that § 101 is a
threshold requirement and that the Examiner may reject claims solely on that
basis); In re Rice, 132 F.2d 140, 141 (CCPA 1942) (finding it unnecessary to
reach rejection based on prior art after concluding claims were directed to
nonstatutory subject matter). See also In re Steele, 305 F.2d 859, 862
(CCPA 1962) (supporting not presenting an art rejection when considerable
speculation into the scope of the claim is required).

ORDER
The decision of the Examiner to reject claims 1 through 22 under 35
U.S.C. § 101 as being directed to non-statutory subject matter is 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).

7

Appeal 2009-001597
Application 10/969,313
AFFIRMED

ELD

THORPE, NORTH & WESTERN, LLP.
P.O. BOX 1219
SANDY, UT 84091-1219
8