Ex Parte Marison et al

Patent Trial and Appeal Board

Jul 31, 2017

13539877 (P.T.A.B. Jul. 31, 2017)

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.
13/539,877 07/02/2012 Scott Robert Marison 336192.01 2784
69316 7590 08/02/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
LEE, KWANG B
ART UNIT PAPER NUMBER
2617
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT ROBERT MARISON, JEAN-PIERRE
JOSEPH DUPLESSIS, JUSTIN TOSHIYUKI GOSHI, and
EMMANUEL JOHN ATHANS
Appeal 2017-002667
Application 13/539,877
Technology Center 2600
Before JAMES R. HUGHES, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which constitute all the claims
pending in this application. Final Act. 1—2; App. Br. I.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We refer to Appellants’ Specification (“Spec.”) filed July 2, 2012, Appeal
Brief (“App. Br.”) filed Aug. 19, 2016, and Reply Brief (“Reply Br.”) filed
Dec. 16, 2016. We also refer to the Examiner’s Answer (“Ans.”) mailed
Dec. 2, 2016, and Final Office Action (Final Rejection) (“Final Act.”)
mailed Aug. 12, 2016.
Appeal 2017-002667
Application 13/539,877
Appellants ’ Invention
The invention at issue on appeal concerns computer-readable storage
media, systems, and methods (processes) for visualizing alpha channel
transparency values when compositing image layers such that portions of
one or more layers may have a varying level of transparency and where the
transparency information resides in an alpha channel. The method displays
a partially transparent image rendered over and alpha blended with a
background pattern, alters the appearance of the background pattern, and
animates the background to provide the appearance of background
movement to assist in the visual inspection of alpha channel values and
detect alpha channel defects. Spec. Tflf 1—10; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer-readable storage medium configured
with data and with instructions that when executed by at least
one processor causes the processor(s) to perform a method to
assist visual inspection of alpha channel values, the method
comprising the steps of:
displaying on a device screen a partially transparent
image rendered over and alpha blended with a background
pattern, the background pattern having a visual appearance
which is designed for detecting alpha channel defects as
opposed to being a real-world image;
automatically altering the visual appearance of the
background pattern;
redisplaying on the screen the partially transparent image
rendered over and alpha blended with the altered background
pattern; and
2
Appeal 2017-002667
Application 13/539,877
animating the background by repeating the altering and
redisplaying steps, thereby providing an appearance of
background movement.
Rejections on Appeal
1. The Examiner rejects claims 1—4 and 15—17 under 35 U.S.C.
§ 103(a) as being unpatentable over Chow et al. (US 2008/0165200 Al,
published July 10, 2008) (“Chow”) and Schaem (US 8,081,821 Bl, issued
Dec. 20, 2011).
2. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Chow, Schaem, and Holten et al. (US 2014/0139546 Al,
published May 22, 2014 (filed Dec. 2, 2013, claiming benefit of US
13/102,648, filed May 6, 2011)) (“Holten”).
3. The Examiner rejects claims 6—12, 14, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Chow, Schaem, and Chauvier
et al. (US 2013/0215226 Al, published Aug. 22, 2013 (PCT/IB11/54180
filed Sept. 22, 2011) (“Chauvier”).
4. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Chow, Schaem, Chauvier, and Kateley et al. (US
8,364,141 Bl, issued Jan. 29, 2013 (filed Jan. 17, 2012) (“Kateley”).
5. The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as
being unpatentable over Chow, Schaem, Chauvier, and Holten.
ISSUE
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner’s rejection properly combine the prior art Chow and
Schaem references?
3
Appeal 2017-002667
Application 13/539,877
ANALYSIS
The Examiner rejects independent claim 1 as being obvious in view of
Chow and Schaem. See Final Act. 2—5; Ans. 3—5. The remaining claims 2—
20 are rejected as obvious over Chow and Schaem and additional prior art
references. See Final Act. 5—20. Appellants contend, inter alia, that Chow
and Schaem are not analogous art. App. Br. 11—15; Reply Br. 1.
Specifically, Appellants contend Schaem is non-analogous to Chow and the
instant application because Schaem is not in the same field of endeavor and
is not reasonably pertinent to the particular problem addressed by the instant
application. App. Br. 11—13. Appellants also contend the Examiner does
not rebut Appellants’ non-analogous art contentions. Reply Br. 1
We agree with Appellants that the Examiner fails to address, much
less rebut, Appellants’ non-analogous art contentions. Reply Br. 1; see App.
Br. 11—13; cf. Final Act. 5 (rationale for combination); Ans. 3—5 (no mention
of non-analogous art contentions).
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A
reference is considered analogous prior art: (1) if the reference is from the
same field of endeavor as the claimed subject matter, regardless of the
problem addressed, or (2) if “the reference still is reasonably pertinent to the
particular problem with which the inventor is involved,” even though the
reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d
at 1325. The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
4
Appeal 2017-002667
Application 13/539,877
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. See Bigio, 381 F.3d at 1325—27. A
reference is “reasonably pertinent” if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem. See Clay, 966 F.2d at 659.
The Examiner must show that the prior art references in question are
in the same field of endeavor (see Bigio, 381 F.3d at 1325), or that person of
ordinary skill in the relevant art, seeking to solve the same problem as the
inventor, would reasonably be expected or motivated to look to the
references (see In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Here,
the Examiner has not made any findings with respect to the applicable field
of endeavor, the problem addressed by the application, or whether the
references are reasonably pertinent thereto. Accordingly, we agree with
Appellants that the Examiner has failed to rebut Appellants non-analogous
art contentions.
Consequently, we are constrained by the record before us to find that
the Examiner failed to provide a prima facie obviousness rejection with
respect to Chow and Schaem. All of claims 1—20 are rejected as obvious
over at least a combination of Chow and Schaem, as well as additional prior
art references. Therefore, we reverse the Examiner’s obviousness rejections
of independent claims 1 and 15 and dependent claims 2—7 and 16—20, which
are dependent on claims 1 and 15. We also reverse the Examiner’s
obviousness rejections of independent claim 8 and dependent claims 9—14,
which depend on claim 8.
5
Appeal 2017-002667
Application 13/539,877
CONCLUSION
Appellants have shown the Examiner erred in rejecting claims 1—20
under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejections of claims 1—20.
REVERSED
6