Ex Parte Impas et al

Board of Patent Appeals and Interferences

Jun 11, 2009

10872639 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROMUALDO T. IMPAS, CECIL JUANARENA, GILMAN
WONG, JOSEPH MATTHEWS III,
and J. ANDREW GOOSSEN
____________________

Appeal 2008-004884
Application 10/872,639
Technology Center 2100
____________________

Decided:1 June 12, 2009
____________________

Before JEAN R. HOMERE, THU A. DANG, and CAROLYN D.
THOMAS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal from the Examiner’s final rejection of claims 23,
26, 53, 56, 62-67, and 69-72 under 35 U.S.C. § 134(a) (2002). Claims 1-22,

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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24, 25, 27-52, 54, 55, 57-61, and 68 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b)(2002).
We affirm.

I. STATEMENT OF THE CASE
A. INVENTION
According to Appellants, the invention relates to a computer system
which provides an image ancillary to a cursor image (Spec. 1, ll. 8-11).

B. ILLUSTRATIVE CLAIM
Claim 23 is exemplary and is reproduced below:
23. A computer system, comprising:

a user input device providing a user input signal indicative of user
inputs;

a display device; and

a controller, coupled to the user input device and the display device,
configured to receive the user input signal, display a cursor image on the
display device based on the user input signal, and display an ancillary image
based on at least one characteristic of the cursor image, the controller being
configured to display the ancillary image to move based on movement of the
cursor image on the display device; and

the controller being configured to display the ancillary image as an
image formed by light impinging on a surface after passing through the
cursor image.

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C. REJECTIONS
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Martin US 5,655,066 Aug. 5, 1997
Mukoyama US 2005/0035979 A1 Feb. 17, 2005
(filed May 13, 2004)

Claims 23, 26, 53, 56, 62-67, and 69-72 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of the
Mukoyama in view of Martin.

II. ISSUE
Have Appellants shown that the Examiner erred in finding that the
combination of Mukoyama and Martin teaches or would have suggested the
recited “the controller being configured to display the ancillary image as an
image formed by light impinging on a surface after passing through the
cursor image” (Claim 23)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Mukoyama
1. Mukoyama discloses a CPU 101 which establishes a light source
(black light) for shining black illumination light downward onto the
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upper part of a character associated so that a shadow is imparted,
wherein only that area on the ground illuminated by the black light
from the light source is displayed dark and is displayed as a shadow
beneath the character (p. 11, [0170]-[0171]; Fig. 33).
2. Mukoyama maps texture data consisting of dots having different
densities or hues to polygons (p. 7, [0114]; Figs. 8A-B), wherein bit
map data are created so that density variation (brightness variation) is
produced (p. 9, [0140]).
3. The center of the shadow object is positioned on a line joining the
point of view and the character center (p. 10, [0162]; Fig. 27).

Martin
4. Martin teaches a cursor image with a shadow (col. 6, ll. 35-36; Fig.
6A).
5. Martin discloses that conventional techniques may be used for
displaying the shadow corresponding to the cursor image (col. 6, ll.
36-37).
6. If the cursor moves, the cursor and its corresponding shadow are
displayed at the new cursor position (col. 11, ll. 17-22; Fig. 15).

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IV. PRINCIPLES OF LAW
35 U.S.C. § 103
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
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obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (citing KSR, 550 U.S. at 416). The Federal
Circuit relied in part on the fact that Leapfrog had presented no evidence that
the inclusion of a reader in the combined device was “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. at 1162 (citing KSR, 550 U.S. at 418-19).

V. ANALYSIS
Claims 23 and 62-64
Appellants provide the same arguments with respect to the rejection of
claims 23 and 62-64. Therefore, we select independent claim 23 as being
representative of these claims. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Mukoyama does not teach or suggest “an
ancillary image displayed as an image formed by light impinging on a
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surface after passing through a cursor image” because the character having a
displayed shadow is “opaque” (App. Br. 7).
In the Answer, the Examiner directs the Appellants’ attention to
Mukoyama, which the Examiner finds as disclosing:
an image processing unit or method thereof configured so that
an object deployed in virtual space and a shadow therefor can
be displayed, being configured so that a light source for shining
an illuminating light for the purpose of displaying the shadow
can be established in an area of a reference plane established in
the virtual space wherein the shadow of the object is to be
displayed…

(Answer 7, emphasis in Answer).
Thus, we determine in this Appeal whether Appellants have shown
that the Examiner erred in finding that the combination of Mukoyama and
Martin teaches or would have suggested the recited “the controller being
configured to display the ancillary image as an image formed by light
impinging on a surface after passing through the cursor image” (Claim 23).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184. Though Appellants argue that the claimed
cursor image is not “opaque,” such argument is not commensurate with the
language of claim 23. In particular, Appellants’ claim 23 does not place any
limitation on what the term “ancillary image” means, includes, or represents
other than that it is an image “formed by light impinging on a surface after
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passing through the cursor image.” In fact, claim 23 does not place any
limitation on “impinging on a surface” or “passing through the cursor
image.” Thus, we will not limit the “ancillary image” of claim 23 to an
image that is not “opaque” as Appellants argue.
Martin discloses a cursor image with a shadow (FF 4). Mukoyama
discloses imparting a shadow image using a light source which shines light
downward onto the upper part of the character associated therewith, wherein
the area on the ground beneath the character illuminated by the light from
the light source is displayed as the shadow image (FF 1). In particular, the
ground in Mukoyama is illuminated by the light to form the shadow image,
wherein the shadow image is formed beneath the character associated
therewith (id.).
We find that an artisan would have understood that such illumination
of the ground to form the shadow image to be light impinging upon on the
ground, and that the shadow image formed beneath the character to be a
shadow image formed after passing through the character. Thus, we agree
with the Examiner that the combined teachings of Mukoyama and Martin
would have suggested a cursor image with a shadow image, wherein the
shadow image is formed by “light impinging on a surface after passing
through the cursor image,” as required by claim 23.
The Appellants also argue that “[t]he Examiner provides no
explanation as to how or why it would be obvious to combine the cited
references” (App. Br. 8). However, the Examiner finds that “[t]he
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combination of the references would yield an expectable result to form ‘an
ancillary image displayed as an image formed by light impinging on a
surface after passing through a cursor image,” and thus, “[t]he motivation
would have been for a benefit of provide [sic] a translucent image” (Ans. 8-
9).
We agree with the Examiner, and find that the subject matter sought
to be patented by Appellants as a whole would have been obvious to the
artisan as we consider the facts of the case and the common sense of those
skilled in the art. See Leapfrog, 485 F.3d at 1161.
Mukoyama discloses forming a shadow image by impinging light
onto the ground surface (FF 1). Martin discloses a cursor image having a
shadow image (FF 4) formed by any conventional method (FF 5).
Appellants have presented no evidence that adding the teachings of Martin
of a cursor image having a shadow image formed by any conventional
method to the teachings of Mukoyama of the conventional method of
forming a shadow image by impinging light on a ground surface was
uniquely challenging or difficult for one of ordinary skill in the art" (see
Leapfrog, 485 F.3d at 1162), nor have Appellants presented evidence that
these "represented an unobvious step over the prior art" (id.). Rather,
Appellants’ invention is simply an arrangement of the well-known teachings
of forming a shadow image using any conventional method with the well-
known teaching of forming a shadow image by impinging light onto a
ground surface. The combined teachings of the references represent merely
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a combination of familiar elements according to known methods and do no
more than yield predictable results. See KSR, 127 S. Ct. at 1739.
As to claims 62-64, the Examiner finds that the combination of
Mukoyama and Martin teaches and would have strongly suggested the
claimed limitations (Answer 5-6), and provides clarification in the
corresponding “Response to Argument” section (Answer 10-11). Appellants
provide no convincing argument to dispute the Examiner’s findings, but
rather merely repeat the claim language without showing where the
Examiner has erred.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in finding that the combined teachings of Mukoyama and
Martin include all of the limitations recited in claims 23 and 62-64.

Claims 26 and 65-67
As to claim 26, Appellants repeat the arguments that Mukoyama does
not teach or suggest “an ancillary image displayed as an image formed by
light impinging on a surface after passing through a cursor image” (App. Br.
9), and that that “[t]he Examiner provides no explanation as to how or why it
would be obvious to combine the cited references” (App. Br. 10). As
discussed above with respect to claim 23, we agree with the Examiner that
the combined teachings of Mukoyama and Martin would have suggested a
cursor image with a shadow image, wherein the shadow image is formed by
“light impinging on a surface after passing through the cursor image,” as
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required in claim 26, and that the combination of the references would yield
an expectable result.
As to claims 65-67, the Examiner finds that the combination of
Mukoyama and Martin teaches and would have strongly suggested the
claimed limitations (Answer 5-6), and provides clarification in the
corresponding “Response to Argument” section (Answer 10-11). Again,
Appellants provide no convincing argument to dispute the Examiner’s
findings, but rather merely repeat the claim language without showing where
the Examiner has erred.
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in finding that the combined teachings of Mukoyama and
Martin include all of the limitations recited in claims 26 and 65-67.

Claims 53 and 69
As to independent claim 53, Appellants contend that “[t]here is
absolutely no teaching or suggestion [in Mukoyama] of the position of the
shadow S changing relative to the character C depending upon where the
character is located on a computer screen” (App. Br. 11) and repeat the
argument that there is no motivation for combining the Mukoyama and
Martin references (App. Br. 12).
As to the Appellants’ argument that there is no motivation to combine
the applied references, as discussed above regarding claim 23, we agree with
the Examiner and find that Appellants’ invention is simply an arrangement
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of the well-known teachings of forming a shadow image using any
convention method with the well-known teaching of forming a shadow
image by impinging light onto a ground surface. That is, the combined
teachings of the references represent merely a combination of familiar
elements according to known methods and do no more than yield predictable
results.
As to Appellants’ argument that Mukoyama does not disclose the
limitations of claim 53, Appellants appear to be arguing Mukoyama alone
fails to disclose or suggest the claim limitations. However, the Examiner
has rejected the claims based on the combination of the references, and
nonobviousness cannot be shown by attacking the references individually.
See In re Merck, 800 F.2d at 1097.
In Mukoyama, the center of the shadow object is positioned on a line
joining the point of view and the character center (FF 3). Martin discloses
that, if the cursor moves, the cursor and corresponding shadow are displayed
at the new cursor position (FF 6).
We find that an artisan would have understood Martin’s new cursor
position, where the cursor and the shadow are displayed, to be the position
of the shadow relative to the cursor which is varied depending on where the
cursor is located. Thus, we agree with the Examiner that the combined
teachings of Mukoyama and Martin would have suggested a shadow with a
center positioned according to the cursor center, wherein “the position of the
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shadow relative to the cursor varies depending upon where the cursor is
located on the computer screen,” as required by claim 53.
Accordingly, we conclude that the Appellants have not shown that the
Examiner erred in rejecting claims 53 and 69 falling with claim 53 under
35 U.S.C. § 103(a).

Claims 56 and 70-72
As to independent claim 56, Appellants contend that “there is
absolutely no teaching or suggestion of anything similar to the performance
of [adjusting a pixel value]” (App. Br. 12) and repeat the argument that there
is no motivation for combining the Mukoyama and Martin references (App.
Br. 13).
As to the Appellants’ argument that there is no motivation to combine
the applied references, as discussed above regarding claims 23 and 53, we
agree with the Examiner and find that Appellants’ invention that the
combined teachings of the references represent merely a combination of
familiar elements according to known methods and do no more than yield
predictable results.
In Mukoyama, bit map data are created so that density variation
(brightness variation) is produced (FF 2). We find that an artisan would
have understood the density and brightness variation to be adjusting of pixel
values. Thus, we agree with the Examiner that the combined teachings of
Mukoyama and Martin would have suggested “adjusting a pixel value
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associated with either the first or second collection of information,” as
required by claim 56.
As to claims 70-72, the Examiner finds that the combination of
Mukoyama and Martin teaches and would have strongly suggested the
claimed limitations (Answer 6), and provides clarification in the
corresponding “Response to Argument” section (Answer 10-11). Again,
Appellants provide no convincing argument to dispute the Examiner’s
findings, but rather merely repeat the claim language without showing where
the Examiner has erred.
Accordingly, we conclude that the Appellants have not shown that the
Examiner erred in rejecting claims 56 and 70-72 under 35 U.S.C. § 103(a).

VI. CONCLUSIONS
(1) Appellants have not shown that the Examiner erred in finding that
claims 23, 26, 53, 56, 62-67, and 69-72 are unpatentable over the teachings
of Mukoyama in view of Martin.
(2) Claims 23, 26, 53, 56, 62-67, and 69-72 are not patentable.

VII. DECISION
We affirm the Examiner's decision rejecting claims 23, 26, 53, 56, 62-
67, and 69-72 under 35 U.S.C. § 103(a).

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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

rwk

WESTMAN CHAMPLIN (MICROSOFT CORPORATION)
SUITE 1400
900 SECOND AVENUE SOUTH
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