Ex Parte Lippincott

Board of Patent Appeals and Interferences

Jun 13, 2012

10850095 (B.P.A.I. Jun. 13, 2012)

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.
10/850,095 05/20/2004 Louis A. Lippincott ITL.1712US (P18839) 8408
21906 7590 06/13/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
FENNEMA, ROBERT E
ART UNIT PAPER NUMBER
2183
MAIL DATE DELIVERY MODE
06/13/2012 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 LOUIS A. LIPPINCOTT

Appeal 2010-000325
Application 10/850,095
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000325
Application 10/850,095

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 24-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a system, method and apparatus
which include a memory, a number of low-level processors, and a control
processor where the memory may store indicator data, other data described
by the indicator data and instructions. See Abstract of the Disclosure.

Claim 24 is illustrative, with key disputed limitations emphasized:
24. A system for decoding video information, comprising:

a memory to store frames of video information, type
information that describes the frames of video information, and
instructions for decoding the frames of video information;

a plurality of processors each including an instruction
memory to store certain instructions for decoding frames of
video information, each processor of said plurality of
processors being arranged to execute the certain instructions
stored in the instruction memory to decode a frame of the video
information;

a control processor to determine a subset of the
instructions needed to process a particular frame of the video
information from the type information that describes the
particular frame and to cause the subset of the instructions to
be stored in the instruction memory of at least one of the
plurality of processors for execution thereby.

The Examiner relies on the following as evidence of unpatentability:
Gove US 5,522,083 May 28, 1996
Appeal 2010-000325
Application 10/850,095

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The Rejections
1. The Examiner rejected claims 24 and 26-33 under 35 U.S.C.
§102(b) as anticipated by Gove. Ans. 4-7.1
2. The Examiner rejected claims 25, 34 and 35 under 35 U.S.C.
§103(a) as unpatentable over Gove in view of In re Rose, 105
USPQ 237 (CCPA 1955). Ans. 8-9.

ISSUES
Based upon our review of the record, and the arguments proffered by
the Appellant, we find the following issues dispositive of the claims on
appeal:
1. Under §102, has the Examiner erred in rejecting claims 24 and
26-33 by finding that Gove disclosed a system having a memory
for storing frames of video information, a plurality of processors
which each include an instruction memory for storing instructions
for decoding a frame of video information, and a control processor
for determining a subset of instructions needed to process a
particular frame of video information?
2. Under §103, has the Examiner erred in rejecting claims 25, 34 and
35 by finding that Gove taught or suggested a system having a
memory for storing frames of video information, a plurality of
processors which each include an instruction memory for storing
instructions for decoding a frame of video information, and a

1 Throughout this opinion, we refer to the Appeal Brief filed January 26,
2009; the Examiner’s Answer mailed July 21, 2009, and the Reply Brief
filed September 16, 2009.
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Application 10/850,095

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control processor for determining a subset of instructions needed to
process a particular frame of video information having a specified
number of processors or a particular memory size?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Gove discloses a multiprocessor image and graphics system having
multiple individual processors all having communications links to
several memories. See Gove, Abstract.
2. Gove discloses frame controllers 170 which serve to communicate
frames of video data. Gove, Col. 6, ll. 47-54.
3. Gove discloses a central processor which controls the type of data
and the manner in which the data is obtained. Gove. Col. 13, ll. 38-
54.
ANALYSIS
The § 102 Rejections
Appellant argues that claim 24 describes a “how a system decodes
video, including a plurality of processors, ‘each processor of said plurality of
processors being arranged to execute the certain instructions stored in the
instruction memory to decode a frame of the video information,’ and a
control processor to determine ‘a subset of instructions needed to process a
particular frame of the video information from the type information that
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Application 10/850,095

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describes the particular frame and to cause a subset of instructions to be
stored in the instruction memory of at least one of the plurality of
processors for execution thereby.’” Appellant argues that Gove not only fails
to disclose “decoding” but also fails to disclose “specific details of that
decoding system.” App. Br. 10.
The Examiner finds that claim 24, in its most basic form, merely
discloses a memory for storing frames of video information, a plurality of
processors, each having an instruction memory holding instructions for
decoding frames and a control processor to determine what instructions are
needed to decide a frame and to cause those instructions to be stored in an
instruction memory. Ans. 10-11.
The Examiner finds that Gove discloses each of these basic features,
namely:
a memory (Column 1, Lines 12-14) to store frames of video
information (Column 6, Lines 46-54), type information that
describes the frames of video information (Column 6, Lines 47-
51 disclose video information being stored, Column 13, Lines
43-49 also indicate there is a data type indication with the data),
and instructions for decoding the frames of video information
(Column 13, Lines 43-49);

a plurality of processors each including an instruction memory
to store certain instructions (Column 3, Lines 12-14) for
decoding frames of video information (Column 13, Lines 43-
49), each processor being arranged to execute the certain
instructions stored in the instruction memory to decode a frame
of the video information (Column 13, Lines 49-55);

a control processor to determine a subset of the instructions
needed to process a particular frame of the video information
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from the type information that describes the particular frame
and to cause the subset of the instructions to be stored in the
instruction memory of at least one of the plurality of processors
for execution thereby (Column 13, Lines 43-49).

Ans. 4-5.

We find Appellant’s argument that the Gove reference fails to teach
“any kind of decoding” or “determining a subset of instructions” to be
unpersuasive. App. Br. 11. Claim 24 merely requires memory for storing
instructions for decoding and a processor for executing instructions.
It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new
property or use of a previously known composition, even when that property
and use are unobvious from prior art, can not impart patentability to claims
to the known composition.”); In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997).
The determination of whether an intended use clause is a limitation in
a claim depends on the specific facts of the case. In re Hoffer v. Microsoft
Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005), the court held that when a
“‘whereby’ clause states a condition that is material to patentability, it
cannot be ignored in order to change the substance of the invention.” Id.
However, the court noted (quoting Minton v. Nat ’l Ass ’n of Securities
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)) that a “whereby clause
in a method claim is not given weight when it simply expresses the intended
result of a process step positively recited.’” Id.
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The “intended use” of a machine is not germane to the issue of
patentability of the machine itself. In re Casey, 370 F.2d 576, 580 (CCPA
1967). There is an extensive body of precedent on the question of whether a
statement in a claim of purpose or intended use constitutes a limitation for
purposes of patentability. See generally Kropa v. Robie, 187 F.2d 150, 155-
59 (CCPA 1951) and the authority cited therein, and cases compiled in 2
Chisum, Patents § 8.06[1][d] (2006). Such statements often, although not
necessarily, appear in the claims preamble. In re Stencel, 828 F.2d 751, 754
(Fed. Cir. 1987). However, the structure must be capable of performing the
intended use.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 24 and claims 26-33, not separately argued with
particularity.

The § 103 Rejections
Appellant has not submitted separate arguments with respect to the
rejection of claims 25 and 34-35 under §103 as unpatentable over Gove in
view of In re Rose. For the reasons set forth above, we affirm the
Examiner’s rejection of those claims as unpatentable under §103.

CONCLUSION
The Examiner did not err in rejecting claims 24-35 under § 102 and
§ 103.
ORDER
The Examiner’s decision rejecting claims 24-35 is affirmed.
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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

Vsh