Ex Parte Hung et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10692154 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHING-YU HUNG and DEEPENDRA TALLA
____________

Appeal 2009-015005
Application 10/692,154
Technology Center 2600
____________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and THOMAS S. HAHN, Administrative Patent Judges.

SAADAT, 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” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015005
Application 10/692,154

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-6, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Prosecution History
Appellants filed an Appeal Brief on September 1, 2007, to which the
Examiner responded by mailing an Answer on January 23, 2008. After the
case was docketed to the Board, an Administrative Remand (mailed April
17, 2009) returned the case back to the Examiner for considering whether
the claims contain statutory subject matter in view of a memorandum
entitled “Clarification of ‘Processes’ under 35 U.S.C. § 101,” issued on May
15, 2008, by the Deputy Commissioner for Patent Examining Policy. The
Examiner was directed to further consider the Interim Guidelines and the
Manual of Patent Examining Procedure § 2106.IV.B and the decision in In
re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc) in determining whether
Appellants’ claimed invention falls within a statutory category of invention.
The Examiner entered a new ground of rejection under 35 U.S.C.
§ 101 in an Examiner’s Answer (mailed June 3, 2009). The record does not
show that a response to this new ground of rejection was filed by Appellants.
Invention
Appellants’ invention relates to re-expressing tetrahedral interpolation
by sorting the differentials according to size (Spec. 5). Claim 1, which is
illustrative of the invention, reads as follows:
Appeal 2009-015005
Application 10/692,154

3
1. A method of tetrahedral interpolation, comprising
the steps of:
(a) receive a color space input point;
(b) compute a base point and three differentials for said
input point;
(c) compare said three differentials;
(d) compute tetrahedron vertices from the results of steps
(b) and (c), a first one of said vertices being said base
point;
(e) find output values for each of said vertices;
(f) compute an interpolated output value for said input
point as the sum of the output value of said base point
plus the inner product of said differentials in size order
with corresponding differences of said output values for
said vertices.
Rejections
Claims 1-5 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schoolcraft (U.S. Patent No. 6,466,333 B2, issued Oct. 15,
2002).

ANALYSIS
1. 35 U.S.C. § 101 Rejection
The Examiner’s Answer includes a new ground of rejection of claims
1-5 under 35 U.S.C. § 101. Our records indicate that Appellants have failed
to respond to the new ground of rejection within two months from the date
of the Answer. Accordingly, the appeal as to this rejection of claims 1-5 is
dismissed. See 37 C.F.R. § 41.39(b)(2010).
Appeal 2009-015005
Application 10/692,154

4
2. 35 U.S.C. § 102 Rejection
Appellants present arguments with respect to the limitations recited in
claim 1 (Br. 4-5) and rely on the same arguments to assert patentability of
claim 6 (Br. 5). Therefore, we select claim 1 as the representative claim,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner characterizes a rearranged version of the interpolation
equation in Table III of Schoolcraft as the claimed inner product of the
differentials and concludes that the relationship among the conditional
statement meets the claimed size order (Final Rej. 4-5). Appellants contend
that Table III of Schoolcraft shows differences of differentials, and not
differences of vortex outputs (Br. 4). Further, Appellants argue that
Schoolcraft’s computations do not include any differential size ordering
(id.). In response, the Examiner points to various portions of Schoolcraft in
support of the proposed rejections and finds that the tetrahedral interpolation
of Schoolcraft includes the claimed steps (Ans. 8-12).
We agree with the Examiner’s findings and find the Examiner’s
position to be reasonable. Specifically, we agree with the Examiner’s
finding (Ans. 8-9) that Schoolcraft teaches the claimed “comput[ing] an
interpolated output value for said input point as the sum of the output value
of said base point plus the inner product of said differentials in size order.”
We also find that Appellants’ argument that “the Examiner’s rearrangement
is just hindsight” (Br. 5) to be misplaced since the claim rejection is based
on anticipation.

Appeal 2009-015005
Application 10/692,154

5
DECISION
The appeal as to the Examiner’s 35 U.S.C. § 101 rejection of claims
1-5 is dismissed.
We affirm the Examiner’s 35 U.S.C. § 102 rejection of claims 1-6.
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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

babc

TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265