Ex Parte Strugar

Patent Trial and Appeal Board

Jul 31, 2017

14107226 (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.
14/107,226 12/16/2013 Filip Strugar ITL.3101US (P61177) 7077
47795 7590 08/02/2017
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
YOUSSEF, MENATOLLAH M
ART UNIT PAPER NUMBER
2665
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):
tphpto@tphm.com
Inteldocs_docketing @ cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FILIP STRUGAR
(Applicants: Filip Strugar and Intel Corporation)
Appeal 2017-001075
Application 14/107,2261
Technology Center 2600
Before JOSEPH L. DIXON, LARRY J. HUME, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—7, 9, 12—18, 20, 21, and 23—30. Appellant has
canceled claims 8, 10, 11, 19, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Intel Corp. App. Br. 3.
Appeal 2017-001075
Application 14/107,226
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate[]
generally to graphics processing." Spec. 12.
Exemplary Claims
Claims 1 and 21, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method comprising:
performing anti-aliasing in a hardware processor by
identifying a symmetrical long edge shape having at least three
edges and performing color transfer on said edge shape having
at least three edges without breaking the shape into less than
three edges.
21. The media of claim 20
[12. One or more non-transitory computer readable
media storing instructions executed by a processor to perform a
sequence comprising:
performing anti-aliasing in a hardware processor by
identifying a symmetrical long edge shape having at least three
edges and performing color transfer on said edge shape having
at least three edges without breaking the shape into less than
three edges]
[20. The media of claim 12, said sequence including
applying color transfer to match the shape color coverage by
modifying a base pixel in the center of the shape using linear
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
June 21, 2016); Reply Brief ("Reply Br.," filed Oct. 18, 2016); Examiner's
Answer ("Ans.," mailed Sept. 13, 2016); Final Office Action ("Final Act.,"
mailed Jan. 29, 2016); and the original Specification ("Spec.," filed
Dec. 16, 2013).
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Application 14/107,226
interpolation between the base pixel and at least one
neighboring pixel],
said sequence including detecting the long symmetrical
edge based on the existence or absence of edges.
Rejections on Appeal3
Rl. Claims 1—7, 9, 12—18, 20, 21, and 23—30 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement. Final Act. 3; see also
Ans. 2.
R2. Claim 21 stands rejected under 35 U.S.C. § 112(b) or pre-AIA
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Final Act. 4; see also Ans. 2.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 6—8), we decide the appeal
of written description Rejection Rl of claims 1—7, 9, 12—18, 20, 21,
3 In the event of further prosecution, we invite the Examiner's attention to
claim 1 to determine whether this claim meets the definiteness requirements
of 35 U.S.C. § 112(b). It is unclear whether one or both of the recited
"identifying a symmetrical long edge shape having at least three edges" and
"performing color transfer on said edge shape having at least three edges"
steps are subject to the negative limitation "without breaking the shape into
less than three edges." "[I]f a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim . . . indefinite." Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential).
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Application 14/107,226
and 23—30 on the basis of representative claim 1. We decide separately
argued indefiniteness Rejection R2 of claim 21, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1—7, 9,
12—18, 20, 21, and 23—30 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings, reasons, and legal
conclusions set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. However, we highlight and address
specific findings and arguments regarding claims 1 and 21 for emphasis as
follows.
1. $ 112(a) Written Description Rejection R1 of Claims 1—7, 9, 12—18,
20. 21. and 23-30
Issue 1
Appellant argues (App. Br. 6—7; Reply Br. 1—3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 112(a) as lacking written description
support is in error. These contentions present us with the following issue:
Did the Examiner err in finding the negative limitation in the recited
performing step lacks written description support, i.e., there is no originally-
filed support for the performing step being carried out "without breaking the
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shape into less than three edges," as recited in claim 1, and as similarly
recited in each of independent claims 12 and 23?
Analysis
Appellant contends "[t]he color transfer is well-known, it is the idea
of handling the shape without breaking it into chunks that is the invention
here." Reply Br. 2. Appellant proffers Specification paragraphs 22
through 24 as explaining of how Z-edge shapes are handled, and then
summarizes by alleging "the key to the invention is how you define and
specify the Z-shape [which] is explained in the specification as demonstrated
above." Reply Br. 3.
We note originally-filed support for the contested negative limitation,
i.e., "performing . . . without breaking the shape into less than three edges" is
not directly addressed by Appellant's arguments in either of the Appeal or
Reply Briefs, and we find no original disclosure providing such support.
Regarding the question of how much, if any, patentable weight should
be given to the negative limitation at issue, we find Appellant's cited support
in the Specification (App. Br. 4 (citing Spec. 130; Fig. 6)), does not identify
any "description of] a reason to exclude the relevant limitation." Santarus,
Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). "Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material." Santarus,
Inc., 694 F.3d at 1351. Further, "[t]he mere absence of a positive recitation
is not basis for an exclusion." MPEP § 2173.05(i).
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Accordingly, based upon the findings above, and on this record, we
are not persuaded of error in the Examiner's finding that independent
claims 1, 12, and 23 lack written description support under 35 U.S.C.
§ 112(a). Therefore, we sustain the Examiner's written description rejection
of independent claim 1, and grouped claims 2—7, 9, 12—18, 20, 21,
and 23—30 which fall therewith. See Claim Grouping, supra.
2. $ 112(b) Definiteness Rejection R2 of Claim 21
Issue 2
Appellant argues (App. Br. 8; Reply Br. 4) the Examiner's rejection of
claim 21 under 35 U.S.C. § 112(b) as being indefinite is in error. These
contentions present us with the following issue:
Did the Examiner err in concluding the recitation of a sequence of
steps that includes "detecting the long symmetrical edge based on the
existence or absence of edges," as recited in claim 21, is indefinite?
Analysis
Appellant contends:
[Y]ou go along horizontal edges G on both sides looking for a
vertical edge. If there is not one, you have a long symmetrical
edge .... There is no reason why the presence or absence of
edges (e.g. vertical edges) cannot clearly be a determinant of
whether there is a long symmetrical edge.
App. Br. 8 (citing Spec. 123). Appellant further argues:
The claim says that you detect a long symmetrical edge based
on the existence or absence of edges. "Detecting" necessarily
involves detecting when you have the long edge and detecting
when you do not have the long edge. The claim says that you
detect the existence or absence of edges to detect whether you
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have that particular shape. It does not say that you have the
shape whether you have edges or not. You simply detect the
edges that exist or not and then make the determination based
on that analysis of edges.
There is nothing indefinite about this claim and the
Examiner fails to meet a reasonable burden of proof of
demonstrating to the contrary.
Reply Br. 4.
We first point out claim 21 recites, in pertinent part, "detecting the
long symmetrical edge based on the existence or absence of edges," and
Appellant's arguments, e.g., "looking for a vertical edge" (App. Br. 8) "fail
from the outset because . . . they are not based on limitations appearing in
the claims." See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Moreover, the Examiner finds, and we agree,
[t]he claim is indefinite because this provides two scenarios.
Scenario A, the detection is based on an edge being present and
Scenario B, detection is based on no edge being present. In
other words, if the edges exist or absent, the detection occurs,
which in turn makes the claim indefinite.
Ans. 12.
We agree with the Examiner's conclusion of indefmiteness because
"[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim . . .
indefinite." Miyazaki, 89 USPQ2d at 1211.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's legal conclusion of indefmiteness, and
we sustain the Examiner's indefmiteness rejection of dependent claim 21.
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1—4) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to written description
Rejection R1 of claims 1—7, 9, 12—18, 20, 21, and 23—30 under 35 U.S.C.
§ 112(a), and we sustain the rejection.
(2) The Examiner did not err with respect to indefiniteness
Rejection R2 of claim 21 under 35 U.S.C. § 112(b), and we sustain the
rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—7, 9, 12—18, 20,
21, and 23-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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