Ex Parte Marion et al

Board of Patent Appeals and Interferences

Oct 28, 2009

10443674 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NEAL RICHARD MARION, GEORGE FRANCIS RAMSAY III,
and JAMES STANLEY TESAURO
____________________

Appeal 2009-000585
Application 10/443,674
Technology Center 2100
____________________

Decided: October 28, 2009
____________________

Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal the Examiner’s rejection of claims 1, 2, 4-16, and
18-20 under 35 U.S.C. § 134(a) (2008). Claims 3 and 17 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appellants’ Invention
Appellants invented an apparatus, system, and method for displaying
and controlling a hardware crosshair cursor in a data processing system
display. In one embodiment, a hardware graphics adapter includes the
hardware crosshair cursor function, and a set of hardware registers storing a
set of coordinates defining the display region for displaying the cursor.
(Spec. 1, ll. 7-12; 1, l. 16 to 3, l. 10; 10, l. 9 to 11, l. 13.)1

Claims
Independent claims 1 and 7 further illustrate the invention. They read
as follows:
1. A method in a data processing system for
managing a hardware crosshair cursor function in a
hardware graphics adapter, the method comprising:
defining a region on a display using a set of
coordinates;
storing the set of coordinates in a set of hardware
registers within the hardware graphics adapter containing
the hardware crosshair cursor function; and

1 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“App.
Br.”) filed June 18, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed September 21, 2007.
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displaying a hardware-generated crosshair cursor
only within the region by using the set of coordinates
stored in the set of hardware registers with the hardware
crosshair cursor function.

7. An application embodied in a tangible
computer readable medium as computer instructions,
wherein the application comprises:
a first set of instructions for defining a region
using coordinates; and
a second set of instructions, responsive to
execution of the first set of instructions, for sending the
coordinates to a hardware crosshair cursor function,
wherein the coordinates are used by the hardware
crosshair cursor function to display a hardware crosshair
cursor only within the region.

Reference
The Examiner relies on the following reference as evidence of
unpatentability:

Cochlovius US 6,898,523 B2 May 24, 2005
(Filed Nov. 12, 2002)

Rejections
The Examiner rejects claims 1, 2, 4-9, 15, 16, and 18-20 under
35 U.S.C. § 102(e) as anticipated by Cochlovius.
The Examiner rejects claims 10-14 under 35 U.S.C. § 102(e) as
anticipated by Cochlovius, and alternatively under 35 U.S.C. § 103(a) as
obvious in view of Cochlovius.

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Appellants’ Contentions
Appellants contend that the claimed subject matter is not anticipated,
nor rendered obvious by the Cochlovius reference because Cochlovius does
not disclose, teach, or suggest the limitations of: (1) a hardware graphics
adapter containing the hardware crosshair cursor function and storing a set
of display coordinates in a set of hardware registers within the adapter (App.
Br. 10-12); (2) sending coordinates defining a display region to a hardware
crosshair cursor function (App. Br. 16); (3) a random access memory digital
to analog converter (RAMDAC) (App. Br. 17, 19-21); or (4) a RAMDAC
containing the hardware crosshair cursor function and storing a set of display
coordinates in a set of hardware registers (App. Br. 21.) Appellants also
assert that the final rejection of claims 10-14 was premature and should be
withdrawn. (App. Br. 17.)2

Examiner’s Findings and Conclusions
The Examiner finds that each of the claims is properly rejected. (Ans.
3-8.)

2 The criteria for finality are set out in the Manual of Patent
Examining Procedure – MPEP § 706.07(a). An applicant may request
reconsideration and withdrawal of finality under MPEP § 706.07(d), and
petition the Director from an adverse decision under 37 C.F.R. § 1.181. The
Examiner’s decision to make an office action final is discretionary.
Decisions within the Examiner’s discretion are reviewed only by way of
petition, not appeal. Cf., In re Berger, 279 F.3d 975, 984-85 (Fed. Cir.
2002) (Examiner’s refusal to enter amendment after final may be the subject
of a petition, but may not be reviewed by the Board). Because the
Examiner’s decision to make the office action final is a petitionable, rather
an appealable matter, this issue is not before us and we express no opinion as
to its propriety.
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ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the issues before us are as follows.
1. Did Appellants establish that the Examiner erred in finding
Cochlovius discloses a hardware graphics adapter containing a hardware
crosshair cursor function and storing a set of display coordinates in a set of
hardware registers within the adapter?
2. Did Appellants establish that the Examiner erred in finding
Cochlovius discloses sending coordinates defining a display region to a
hardware crosshair cursor function?
3. Did Appellants establish that the Examiner erred in finding
Cochlovius discloses a random access memory digital to analog converter
(RAMDAC)?
4. Did Appellants establish that the Examiner erred in finding
Cochlovius teaches or suggests RAMDAC containing a hardware crosshair
cursor function and storing a set of display coordinates in a set of hardware
registers?

FINDINGS OF FACT (FF)
Cochlovius Reference
1. Cochlovius describes a vehicle navigation system with a
display providing a map and a movable crosshair. The moveable crosshair
allows the user to select a portion of the displayed (smaller-scale) map to
display in a larger (magnified) scale. The selected larger scale map portion
may either be displayed separately or superimposed on the smaller scale
map. The smaller scale map and selected larger scale map portion may also
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be moved synchronously (scrolled) in any direction in the display. A screen
control unit stores data (map data) in its memory for the smaller-scale and
larger-scale maps, and includes a graphic control unit that generates the
display images using the map data. (Col. 1, l. 30 to col. 2, l. 14; col. 2, l. 45
to col. 3, l. 38; Figs. 1-5.)
2. Cochlovius describes that its movable pointing device
(crosshair) is controlled by the operating unit, and that the operating unit
includes a “crosshair control mechanism.” (Col. 2, ll. 50-53; col. 3, ll. 29-
38.) Cochlovius’ operating unit is separate and distinct from the screen
control unit. (Col. 2, ll. 45-57; Fig. 1.)
3. Cochlovius does not provide a detailed description of its screen
control unit including the main memory and screen memory, does not
describe the memory structures, nor does Cochlovius mention memory or
registers included within its graphics control unit.

PRINCIPLES OF LAW
Burden on Appeal
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
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Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375
(Fed. Cir. 2005) (citation omitted).

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007) (hereinafter “KSR”); Graham v. John Deere Co., 383 U.S. 1, 13
(1966) (hereinafter “Graham”). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art. Graham, 383 U.S. at
17-18. See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415-16. The Court explained:
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.

ANALYSIS
Issue 1: Rejection of claims 1, 2, 4-6, 15, 16, and 18-20 under
35 U.S.C. § 102(e)
Cochlovius describes a vehicle navigation system display that
includes a map and a movable pointing device (crosshair). The moveable
crosshair may be scrolled in any direction within the display, and a user may
select a portion of the displayed smaller-scale map to magnify (display in a
larger scale). Cochlovius’ screen control unit stores in its memory (main
memory and screen memory) map data for the smaller-scale and larger-scale
maps. The screen control unit also includes a graphic control unit that
generates the display images using the map data. (FF 1.) We find that an
artisan would have understood Cochlovius to disclose a system and method
for controlling a movable crosshair, defining a display region utilizing a set
of coordinates (map data), storing the coordinates in memory, and displaying
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the crosshair only within the display region defined by the coordinates as
recited in independent claims 1 and 15.
Appellants, however, contend that Cochlovius does not disclose a
hardware graphics adapter that contains a hardware crosshair cursor
function, or storing a set of display coordinates in a set of hardware registers
within the hardware graphics adapter. (App. Br. 10-12.)
The Examiner maintains that Cochlovius discloses theses features:
The crosshairs cursor of Cochlovius on the map must be
stored/registered/processed in the computer 114 (hardware),
which receives input commands (including the location and
control mechanism of the crosshairs cursor) from the operation
unit 112 in order for the crosshairs cursor and map
destinations/locations to be viewed/located on the map with the
selected location.
(Ans. 6; see also Ans. 3, 7.) Accordingly, we decide the question of
whether Cochlovius discloses a hardware graphics adapter containing a
hardware crosshair cursor function and storing a set of display coordinates in
a set of hardware registers within the adapter.
After reviewing the record on appeal, we construe Appellants’ recited
“hardware graphics adapter” as a dedicated electronic device (adapter),
interconnected with a computer system, that interprets instructions sent by
the CPU, and processes them via a dedicated graphics processor and
memory to produce graphical image data. (Spec. 10, ll. 9-27.) We find
Cochlovius discloses controlling a movable crosshair, defining a display
region utilizing a set of coordinates, storing the coordinates in memory, and
displaying the crosshair within the display region defined by the coordinates.
However, the claims in question recite that the hardware graphics adapter
contains a hardware crosshair cursor function and storing a set of display
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coordinates in a set of hardware registers within the adapter. We find that
Cochlovius’ crosshair function (control mechanism) is separate from and not
contained in the graphics unit. (FF 1, 2.) Cochlovius’ movable crosshair is
controlled by an operating unit that includes a “crosshair control
mechanism,” and that is separate and distinct from the screen control unit.
(FF 1, 2.) We agree with Appellants that Cochlovius does not disclose a
hardware graphics adapter containing a hardware crosshair cursor function –
a limitation recited in independent claims 1 and 15.
We also find that Cochlovius does not provide a detailed description
of its screen control unit, its main memory and screen memory contained in
the screen control unit. Cochlovius does not describe the structures of these
memories, and does not even mention memory or registers included within
its graphics control unit. (FF 3.) Thus, we agree with Appellants that
Cochlovius does not disclose a hardware graphics adapter storing a set of
display coordinates in a set of hardware registers within the adapter – a
limitation recited in independent claims 1 and 15. Claims 2, 4-6, 16, and 18-
20 are dependent upon independent claims 1 and 15, respectively.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s anticipation rejection of independent claims 1 and 15, and
dependent claims 2, 4-6, 16, and 18-20. Accordingly, we will not sustain the
Examiner’s rejection of the claims.

Issue 2: Rejection of claims 7-9 under 35 U.S.C. § 102(e)
Independent claim 7 does not include the limitations directed to the
hardware graphics adapter. Instead, claim 7 recites an application (computer
program) with (sets of) instructions, the first set of instructions defining a
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region (display region) utilizing coordinates, and the second set of
instructions (responsive to execution of the first set of instructions) sending
the coordinates to a crosshair function (routine), wherein the coordinates are
used to display the crosshair within the region.
Appellants contend that Cochlovius merely discloses displaying a
crosshair, and does not disclose sending coordinates to a hardware crosshair
cursor function. (App. Br. 16.) However, as explained with respect to
claims 1 and 15 previously, we find that Cochlovius discloses a method for
controlling a movable crosshair, defining a display region utilizing a set of
coordinates (map data), and storing the coordinates in memory, and an
operating unit including a “crosshair control mechanism” (crosshair
function) sending data (coordinates) to the screen control unit that displays
the crosshair within the display region defined by the coordinates as recited
in independent claim 7. (FF 1, 2.) Claims 8 and 9 are dependent upon
independent claim 7.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s anticipation rejection of claims 7-9. Accordingly, we will
affirm the Examiner’s rejection of these claims.

Issues 3 & 4: Rejection of claims 10-14 under 35 U.S.C. § 102(e) &
35 U.S.C. § 103(a)
Independent claim 10 recites random access memory digital to analog
converter (RAMDAC) with a set of registers storing coordinates (data)
defining a region (display region), and a hardware crosshair cursor function
utilizing the coordinates to display the crosshair within the region.
Appellants contend that Cochlovius does not disclose a RAMDAC,
nor does Cochlovius teach or suggest a RAMDAC containing a hardware
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crosshair cursor function and storing a set of display coordinates in a set of
hardware registers. (App. Br. 17, 19-21.)
We note that the Examiner expressly concedes that Cochlovius does
not disclose a RAMDAC. (Ans. 5.) However, a RAMDAC is recited only
in the preamble of claim 10, it does not appear in any of the limitations in
the body of the claim. We conclude that the recited term adds nothing of
structural significance to the features recited in the body of the claim, and
does not patentably distinguish the claimed article. Rather, it adds only a
statement of the intended use for the claimed article. See IMS Technology,
Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“If the
preamble adds no limitations to those in the body of the claim, the preamble
is not itself a claim limitation and is irrelevant to proper construction of the
claim.”).3

3 As is explained by the Federal Circuit in Apple Computer: “Language in a
claim preamble, however, acts as a claim limitation only when such
language serves to give meaning to a claim and properly define the
invention, not when the preamble merely states a purpose or intended use of
the invention.” Apple Computer, Inc. v. Articulate Systems, Inc., 234 F.3d
14, 20 (Fed. Cir. 2000) (quoting In re Paulsen, 30 F.3d 1475, 1479 (Fed.
Cir. 1994) (citations omitted)). As is further explained by the Federal
Circuit in Catalina Marketing:
In general, a preamble limits the invention if it recites essential
structure or steps, or if it is necessary to give life, meaning, and
vitality to the claim. Conversely, a preamble is not limiting
where a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or
intended use for the invention.
Catalina Marketing International v. Coolsavings.Com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999); Rowe v. Dror, 112 F.3d 473, 478
(Fed. Cir. 1997) (citations omitted)).
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Nonetheless, as explained with respect to claims 1 and 15 previously,
we find that Cochlovius does not disclose and further find Cochlovius does
not teach or suggest a hardware crosshair cursor function or a set of registers
storing coordinates defining a region as recited in claim 10. Claims 11-14
are dependent upon independent claim 10.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s anticipation and obviousness rejections of claims 10-14.
Accordingly, we will sustain the Examiner’s rejection of these claims.

CONCLUSION OF LAW
On the record before us, we find that Appellants have established that
the Examiner erred in finding Cochlovius discloses, teaches, or suggests: (1)
a hardware graphics adapter containing a hardware crosshair cursor function
and storing a set of display coordinates in a set of hardware registers within
the adapter; and (2) a RAMDAC containing a hardware crosshair cursor
function and storing a set of display coordinates in a set of hardware
registers.
On the record before us, we find that Appellants have not established
that the Examiner erred in finding Cochlovius discloses: (3) sending
coordinates defining a display region to a hardware crosshair cursor
function; and (4) a RAMDAC.

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DECISION
We affirm the Examiner’s rejection of claims 7-9 under 35 U.S.C.
§ 102(e).
We reverse the Examiner’s rejection of claims 1, 2, 4-6, 10-16, and
18-20 under 35 U.S.C. § 102(e).
We reverse the Examiner’s rejection of claims 10-14 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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