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`Ex. 1002
`EX. 1002
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________________________
`
`ACTIVISION BLIZZARD, INC. and RIOT GAMES, INC.
`
`Petitioners
`
`V.
`
`GAME AND TECHNOLOGY CO., LTD
`
`Patent Owner
`
`Patent No. 8,035,649
`
`Filing Date: June 28, 2005
`
`Issue Date: October 11, 2011
`
`Title: METHOD AND SYSTEM FOR RENEWING SCREEN
`
`_____________________________________________
`
`Inter Partes Review No.: To be Assigned
`
`__________________________________________________________________
`
`DECLARATION OF DAVID CRANE
`
`Activision Blizzard/Riot
`Ex. 1002
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`

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`TABLE OF CONTENTS
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`V. 
`
`OVERVIEW .................................................................................................... 1 
`I. 
`II.  MY BACKGROUND AND QUALIFICATIONS ......................................... 3 
`III.  DOCUMENTS CONSIDERED ...................................................................... 8 
`IV.  THE ‘649 PATENT ....................................................................................... 11 
`A. 
`Specification ....................................................................................... 11 
`B. 
`Claims ................................................................................................. 16 
`C. 
`Prosecution History ............................................................................ 19 
`CLAIM TERMS ............................................................................................ 28 
`A. 
`“Image Resource Data” ...................................................................... 28 
`B. 
`“Update Event .................................................................................... 29 
`C. 
`“Basic Recording Space” ................................................................... 31 
`D. 
`“Buffer” .............................................................................................. 32 
`E. 
`“Rendering/Rendered” ....................................................................... 33 
`F. 
`“Player Character” and “Non Player Character (NPC)” .................... 33 
`G. 
`“Screen Update Request” ................................................................... 34 
`H. 
`“Chatting Window Including Chatting Text” .................................... 35 
`I. 
`“Means” Limitations .......................................................................... 37 
`VI.  STATE OF THE ART AS OF JUNE 28, 2004 ............................................. 40 
`A.  OpenGL .............................................................................................. 40 
`B.  Other General Knowledge Available in the Art ................................. 44 
`VII.  SUMMARY OF THE PRIOR ART .............................................................. 62 
`A.  U.S. Pat. No. 5,841,439 ...................................................................... 62 
`
`Ex. 1002 – Page i
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`

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`B.  U.S. Pat. No. 6,147,695 ...................................................................... 64 
`C.  U.S. Pat. App. Pub. No. 2005/0137015 ............................................. 65 
`VIII.  SUMMARY CHART OF ANALYSIS OVER THE ART ........................... 67 
`IX.  OBVIOUSNESS AND MOTIVATION TO COMBINE ............................. 67 
`A.  Obviousness ........................................................................................ 67 
`B.  Motivation to Combine ...................................................................... 68 
`X.  ANALYSIS WITH RESPECT TO OBVIOUSNESS ................................... 70 
`A.  Ground 1: Claims 1-3, 7-9 & 11-16 are Obvious under 35 U.S.C. §
`103(a) by Pose in view Bowen ........................................................... 70 
`B.  Ground 2: Claims 4-6 & 10 are Obvious under 35 U.S.C. § 103(a) by
`Pose in view Bowen in view of Rogers ........................................... 122 
`XI.  CONCLUSION ........................................................................................... 159 
`
`Ex. 1002 – Page ii
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`

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`1.
`
`I, David Crane, state that I am over the age of eighteen and am
`
`otherwise competent to make this declaration. I hereby declare as follows.
`
`I. OVERVIEW
`
`2.
`
`I have been retained as an expert witness on behalf of Activision
`
`Blizzard, Inc. and Riot Games, Inc. (“Petitioners”) for the above-captioned petition
`
`for inter partes review (“IPR”). I am being compensated for my time as the expert
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`witness in connection with this IPR at my customary rate of $450.00 per hour. I
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`understand that the IPR involves U.S. Patent No. 8,035,649 (“the ‘649 Patent”)
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`(Ex. 1001), filed on June 28, 2005, naming as inventor Mr. Dae Il Kim. I also
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`understand that the ‘649 Patent claims priority to a Korean Application, filed on
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`June 29, 2004. Based on the USPTO records that I have reviewed, it appears that
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`the ‘649 Patent issued on October 11, 2011, and is currently assigned to Game and
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`Technology Co., Ltd. (“GAT”).
`
`3.
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`In preparing this Declaration, I reviewed the ‘649 Patent and
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`considered each of the documents cited herein. In formulating my opinions I
`
`relied, in part, upon my experience and expertise in the relevant art. I also
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`considered the viewpoint of a person of ordinary skill in the art, as defined below,
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`as of the foreign filing date of the ‘649 Patent—i.e., June 29, 2004. It is my
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`understanding that claims 1-16 are being challenged in the above-captioned
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`Ex. 1002 – Page 1
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`petition for IPR. Accordingly, I will limit my opinion to those claims, and may
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`refer to them—collectively—as “the challenged claims.”
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`4.
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`The challenged claims of the claim of the ‘649 Patent are directed to
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`methods and systems for updating game images. (Ex. 1001 at Cls. 1, 13, and 15.)
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`The prior art discussed herein discloses the exact same methods and apparatus as
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`claimed in the ‘649 Patent. In particular, the following prior art references (and
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`combinations of prior art references) disclose every limitation of each challenged
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`claim of the ‘649 Patent: U.S. Patent No. 5,841,439, in view of U.S. Patent No.
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`6,147,695 in view of U.S. Patent Application Publication No. 2005/0137015. As
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`explained in greater detail below, it is my opinion that these prior art references
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`disclose or render obvious the challenged claims.
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`5. With respect to an obviousness determination, it is my understanding
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`that an entire reference is considered, even portions that may discourage a person
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`of ordinary skill in the art from making or using the claimed invention. It is also
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`my understanding that one way to rebut a finding of obviousness is to present
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`evidence of secondary considerations of non-obviousness, such as unexpected
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`results, commercial success, long felt but unsolved need, and failure of others to
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`achieve the claimed invention. However, the prosecution history of the ‘649
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`Patent is devoid of any secondary considerations of non-obviousness. I am further
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`not aware of any such secondary considerations, particularly when the disclosures
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`Ex. 1002 – Page 2
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`in the prior art are compared to the claims at issue, and the lack of distinction
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`between them is taken into account. Should GAT assert secondary considerations
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`of non-obviousness, I reserve the right to supplement this declaration.
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`II. MY BACKGROUND AND QUALIFICATIONS
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`6. My expertise qualifies me to do the type of analysis required in this
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`case in the field of video games, where representing a game player’s actions within
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`a game is commonly accomplished through the use of an in-game avatar. Of
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`particular relevance, in my 39-year career in video games, I have founded several
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`game companies, designed and programmed over 80 commercial game products,
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`and developed a wealth of experience and knowledge in video game programming
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`including devising methods for updating images displayed in a video game.
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`7.
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`Throughout the remainder of this Declaration, I will refer to the field
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`of video games, including the display technology and related software found in
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`video game systems, as the “relevant field” or the “relevant art.” In formulating
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`my opinions, I have relied upon my training, knowledge, and experience in the
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`relevant art.
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`8.
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`I started in the relevant art as a student at DeVry Institute of
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`Technology, Phoenix, Arizona (“DeVry”) where I earned a Bachelor of Science in
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`Electronic Engineering Technology in 1975.
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`Ex. 1002 – Page 3
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`9. My formal studies at DeVry included grounding in all areas of
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`electronic circuitry, including analog and digital circuits, as well as computer
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`programming. I built my first computer—an unbeatable Tic-Tac-Toe computer—
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`at the age of 14, and graduated high school with the ability to program IBM
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`mainframe computers in 3 languages. While in college, I was the lead hardware
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`designer and project leader on a fully digital Tic-Tac-Toe playing custom hardware
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`project. This design featured 72 discrete integrated circuits and an innovative
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`display using polarized light to separate light output into Xs and Os. In the same
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`timeframe, I designed the first programmable electronic drum machine, and a
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`digital clock that never needed setting, designed to receive a time standard over the
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`AC power line.
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`10.
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`In 1977, I began my career in the video game industry when I joined
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`Atari Inc. (“Atari”), where I designed and developed games that generated
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`approximately $15 million in sales revenues for the company. In 1979, I co-
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`founded Activision, Inc. (“Activision”), the first third-party developer and
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`publisher of video game cartridges. Activision grew to over $300 million in value
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`in three years.
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`11. During my tenure at Activision, I designed and programmed many hit
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`games with unit sales over 500,000. One such example is the game Pitfall!™
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`which sold over 3,500,000 copies and generated over $50 million in wholesale
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`Ex. 1002 – Page 4
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`revenues. At Activision, I performed or oversaw all of Activision’s research on
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`game consoles, and designed and built a custom development computer system for
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`each console. I personally handled all functional design, circuit design, system
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`engineering, printed circuit board layout and manufacturing specification, and
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`soldered and wired the development system prototype before handing the design
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`off for replication. From Activision’s inception in 1979, until I left the company in
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`1987, I served as the company’s primary technologist in the operation of the game
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`consoles for which we published games.
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`12.
`
`It should be noted that the Activision trade name remains in use by
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`Activision Blizzard, Inc. I have no current personal, professional, or financial
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`affiliation with Activision Blizzard, Inc. or Blizzard Entertainment, Inc., nor have I
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`had any such affiliation for almost 30 years.
`
`13. After leaving Activision in 1987, I founded a series of small game
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`publishing companies, performing the same two main functions: first, becoming
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`the company’s primary hardware technologist on a particular game console, then,
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`designing and programming award-winning games. Throughout this process, I
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`have developed particular expertise in over 20 video game consoles or systems,
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`including the Atari 2600, Atari 5200, Atari 7800, Atari 400, Atari 800, Magnavox
`
`Odyssey II, Mattel Intellivision, Colecovision, Apple II, MS-DOS, Windows,
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`Commodore C64, Commodore C128, Nintendo NES, Nintendo SNES, Nintendo
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`Ex. 1002 – Page 5
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`Game Boy, Nintendo DS, Sega Master System, Sega Genesis, Sega CD, Sony
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`Playstation, Nokia Series 60 feature phones, LG VX4400, LG VX6000, Apple
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`iPhone, Apple iPod touch, and Apple iPad. My “publications” in the field have
`
`taken the form of commercial products. In my 39 years of experience in video
`
`games, I have designed and programmed over 80 commercial game products
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`generating over $400 million in revenues. I have developed games on a large
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`percentage of video game systems invented, from the early days of Atari and
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`Magnavox through to present-day systems such as the Microsoft Xbox Platform. I
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`have acquired extensive experience in designing and developing video games
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`including designing and developing the display of video game imagery. I am also
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`named as the inventor on U.S. Pat. No. 4,644,495 for an improved Video Memory
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`System configured to increase the capability of a computer system to execute
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`complex video displays.
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`14.
`
`In addition
`
`to gaining expertise
`
`through educational
`
`training,
`
`professional experiences, and research experiences described above, I have kept
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`abreast of the relevant field. I am a regular speaker and/or panelist at video game
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`industry
`
`trade events such as
`
`the D.I.C.E. Summit (Design, Innovate,
`
`Communicate & Entertain), and GDC (Game Developers Conference) indicating
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`that my peers feel that I am an expert in these areas as well. I have spoken at
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`gatherings of game business executives (such as at the Pepperdine University
`
`Ex. 1002 – Page 6
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`

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`Graziadio School of Business and Management), and I am featured annually at the
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`Classic Gaming Expo. I have been profiled in national press publications
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`including Forbes Magazine and Newsweek, and I have been interviewed by such
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`diverse publications as television’s 20/20 News Magazine and the G4 Television
`
`Network. Furthermore, I have collaborated with, or have communicated with,
`
`many of the programmers, developers, and researchers in the field of video game
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`display technology. Accordingly, I believe I am qualified to provide an opinion as
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`to what a person of ordinary skill in the art would have understood, known, or
`
`concluded as of August 2004 when the foreign application that matured into the
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`‘649 Patent was filed.
`
`15.
`
`I have received many other awards for my work and career. For
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`example, I received one of the Academy of Interactive Arts and Sciences lifetime
`
`honors: The Pioneer Award, celebrating my foundational and continuing work in
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`the creation and development of the video game business. This singular honor,
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`presented to me in 2010 was the inaugural award in a new category. I was the first
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`to receive this award out of everyone who had ever worked in the video game
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`industry throughout its entire history. Additional awards include Game Designer
`
`of the Year (twice), the prestigious 2003 Game Developer Choice Award for
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`contribution to the field, and the Lifetime Achievement Award in Video Games
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`Ex. 1002 – Page 7
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`

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`from Classic Gaming Expo. In addition to these personal honors, many of the
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`individual games that I have developed have also received numerous awards.
`
`16. A copy of my current curriculum vitae is provided as Appendix A
`
`hereto. It provides a comprehensive description of my academic and employment
`
`history, including a list of video game product publications for at least the last 39
`
`years, and a list of all other cases in which, during the previous 4 years, I have
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`testified as an expert at trial or by deposition.
`
`III. DOCUMENTS CONSIDERED
`
`17.
`
`In formulating my opinion, I considered the following documents:
`
`Document
`
`Exhibit No.
`
`U.S. Patent No. 8,035,649
`
`Excerpt of ‘649 Patent File History, Preliminary Amendment (Dec.
`27, 2006)
`
`Excerpt of ‘649 Patent File History, Office Action (Aug. 25, 2009)
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under 37
`C.F.R. § 1.111 (Nov. 18, 2009)
`
`Excerpt of ‘649 Patent File History, Office Action (Feb. 1, 2010)
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under 37
`C.F.R. § 1.116 (Mar. 30, 2010)
`
`Excerpt of ‘649 Patent File History, Advisory Action (Apr. 14, 2010)
`
`Excerpt of ‘649 Patent File History, Reply and Request for Continued
`
`1001
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
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`1009
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`Ex. 1002 – Page 8
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`

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`Document
`Examination under 37 C.F.R. § 1.114 (Apr. 30, 2010)
`
`Exhibit No.
`
`Excerpt of ‘649 Patent File History, Office Action (June 22, 2010)
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under 37
`C.F.R. § 1.111 (Sept. 17, 2010)
`
`Excerpt of ‘649 Patent File History, Office Action (Dec. 13, 2010)
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under 37
`C.F.R. § 1.116 (Feb. 21, 2011)
`
`Excerpt of ‘649 Patent File History, Examiner Interview Summary
`(Mar. 9, 2011)
`
`Excerpt of ‘649 Patent File History, Notice of Appeal from the
`Examiner to the Board of Patent Appeals and Interferences (Mar. 14,
`2011)
`
`Excerpt of ‘649 Patent File History, Pre-Appeal Brief Request for
`Review (Mar. 14, 2011)
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
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`Excerpt of ‘649 Patent File History, Advisory Action (Mar. 16, 2011)
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`1017
`
`Excerpt of ‘649 Patent File History, Notice of Panel Decision from
`Pre-Appeal Brief Review (Mar. 25, 2011)
`
`Excerpt of ‘649 Patent File History, Reply and Request for Continued
`Examination under 37 C.F.R. § 1.114 (Apr. 12, 2011)
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`Excerpt of ‘649 Patent File History, Examiner-Initiated Interview
`Summary (June 6, 2011)
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`Excerpt of ‘649 Patent File History, Notice of Allowance (June 13,
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`1018
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`1019
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`1020
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`1021
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`Ex. 1002 – Page 9
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`

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`Document
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`Exhibit No.
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`2011)
`
`Excerpt of ‘649 Patent File History, Post Allowance Communication
`(Sept. 8, 2011)
`
`U.S. Patent No. 5,841,439
`
`U.S. Patent No. 6,147,695
`
`U.S. Patent Application Publication No. 2005/0137015
`
`1022
`
`1023
`
`1024
`
`1025
`
`OpenGL Reference Manual, Second Edition
`
`I understand that a person of ordinary skill in the art (“POSITA”) is
`
`1027
`
`18.
`
`one who is presumed to be aware of all pertinent art, thinks along conventional
`
`wisdom in the art, and is a person of ordinary creativity. Based on my experience
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`as a researcher, developer, educator, author, and consultant in the area of video
`
`games and related technology, it is my opinion that persons of ordinary skill in the
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`art during the time frame of the priority date of the ‘649 Patent (2004), would
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`possess: (1) at least a four-year Bachelor of Science degree OR at least 5 years of
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`professional experience as a video game designer/developer; and (2) a working
`
`understanding of computer programming, either through education or experience
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`of the equivalent thereof.
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`Ex. 1002 – Page 10
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`

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`IV. THE ‘649 PATENT
`
`A.
`Specification
`19. According to the information on the face of the patent itself, the ‘649
`
`Patent was filed under the Patent Cooperation Treaty (PCT) on June 28, 2005, and
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`issued October 11, 2011. (Ex. 1001 at Cover.) The ‘649 Patent claims priority to a
`
`Foreign Application filed June 29, 2004. (Id.) The sole inventor of the ‘649 Patent
`
`was Dae Il Kim, and the original assignee was NHN Corporation.
`
`20. The ‘649 Patent is directed toward a screen update method and
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`systems, in which two images are generated at different frame rates and then
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`composited to create one image displayed on a screen. During the generation of
`
`these images, one image is rendered while the other is not. Further, the rendered
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`image is stored in a memory location separate from that of the non-rendered image.
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`21. The ‘649 Patent refers to the rendered image as the first image and the
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`non-rendered image as the second image. (Id. at 3:12-25.) The ‘649 Patent further
`
`refers to the data used to update these images as image resource data. (Id. at 3:42-
`
`47.)
`
`22. Figure 2 of the ‘649 Patent illustrates an exemplary “screen update
`
`method” according to an embodiment of the present invention:
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`Ex. 1002 – Page 11
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`
`
`(Id. at Fig. 2.)
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`23. Figure 3 of the ‘649 Patent illustrates an example of a first image.
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`According to the ‘649 Patent, “[t]he first image indicates an image displayed in
`
`three-dimensions in the game, such as a player character 301, Non-Player
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`Character (NPC) 302, and a dynamic scene 303.” (Id. at 5:12-14.)
`
`Ex. 1002 – Page 12
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`

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`
`
`(Id. at Fig. 3.)
`
`24. Describing the “first image,” the ‘649 Patent states that, “[a] first
`
`image is generated at a predetermined first frame rate, which is generated via
`
`loading predetermined image resource data and rendering the image resource
`
`data.” (Id. at 3:12-14.) The ‘649 Patent continues, stating that, “[n]amely, the first
`
`image is a 3-D image generated via general real-time rendering.” (Id. at 3:14-16.)
`
`25. According to the ‘649 Patent, “[t]he second image indicates an image
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`changed according to moving a mouse pointer by the gamer, inputting a
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`conversation (chat text) of a chat window 401, inputting a gamer interface of an
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`item selecting window 403, or input associated with an inventory window 402 that
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`Ex. 1002 – Page 13
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`

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`shows condition information of an item of the gamer to run the game.” (Id. at
`
`6:47-52.) Figure 4 of the ‘649 Patent illustrates an example of a second image:
`
`
`
`(Id. at Fig. 4.)
`
`26. Describing the “second image,” the ‘649 Patent states that, “[a]
`
`second image is generated at a predetermined second frame rate, which can be
`
`generated in a relatively shorter time than the first image.” (Id. at 3:19-21.) The
`
`‘649 Patent continues, stating that, “[f]or example, the second image includes an
`
`image for displaying the content of a chat on a screen according to the input of a
`
`chat text, performed by a user, or displaying a mouse point on a screen according
`
`to the movement of a mouse, performed by the user.” (Id. at 3:21-25.)
`
`27. The technical goal of the alleged invention is a screen update method
`
`and system where “respective processes to be processed for embodying a full
`Ex. 1002 – Page 14
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`

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`image are divided for each updated speed and independently processed, thereby
`
`preventing the update speed of the full image from being reduced together with a
`
`slowest process.” (Id. at 2:22-27.)
`
`28. To achieve this goal, the ‘649 Patent describes identifying, loading,
`
`and rendering the first image’s image resource data to create the updated first
`
`image. (Id. at Cl. 1.) The second image, however is “generated without rendering”
`
`and its image resource data is “not loaded” in the same memory location as the
`
`image resource data of the first image—leading to “the generation of the second
`
`image being substantially independent from the generation of the first image.”
`
`(Id.) Describing “rendering,” the ‘649 Patent provides that:
`
`Hereinafter, the rendering used in the present invention will be
`schematically described. The rendering is one of methods of
`generating an image. For example, the rendering may be used for
`generating an actual graphic
`image by realizing a
`three-
`dimensional texture such as the variance in colors and density. (Id.
`at 9:57-62.)
`
`29. The rendered first image (according to a first frame rate) is
`
`composited with the non-rendered second image (according to a second frame rate)
`
`to update “at least a portion of the display device to display the composite image.”
`
`(Id. at Cl. 1.)
`
`Ex. 1002 – Page 15
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`

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`B. Claims
`30. The ‘649 Patent contains 16 claims, including three independent
`
`claims—claims 1, 13, and 15—and 13 dependent claims. All of these claims are
`
`directed towards either a method or system for updating game images displayed on
`
`a display device. For example, the limitations of independent method claim 1 are
`
`directed to the steps of “updating images” where a first image is generated by
`
`“sequentially rendering the loaded image resource data” and a “second image is
`
`generated without being rendered.” (Id.) Additionally, claim 1 includes the
`
`limitation that “the generation of the second image” be “substantially independent
`
`from the generation of the first image such that the image resource data of the
`
`second image is not loaded in the buffer space.” (Id.) The remaining independent
`
`claims—claims 13 and 15—are essentially claim 1 rewritten in system claim
`
`format. (Id. at Cls. 13 & 15.) Further, claim 12, which depends from independent
`
`claim 1, is merely “a non-transitory computer reasonable storage medium encoded
`
`with a program for executing the method recited in claim 1.” (Id. at Cl. 12.)
`
`31. Accordingly, all three independent claims contain a form of the
`
`following limitations:
`
` Generating a first image at a first frame rate by sequentially
`rendering image resource data of the first image;
`
`Ex. 1002 – Page 16
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`

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` Generating a second image at a second frame rate without
`rendering and without loading image resource data of the
`second image into a buffer space; and
`
` Compositing the first image and second image.
`
`32. Dependent claims 2, 14, and 16 are all similar in that all three require
`
`that “the first frame rate is less than the second frame rate.” (Id. at Cls. 2, 14 &
`
`16.) Claim 2 depends from independent claim 1, and claim 14 depends from
`
`independent claim 13. Claim 16 depends from independent claim 15.
`
`33. Claims 3 and 8 are similar in that both call for the generation of an
`
`image as long as the associated update event lasts. (Id. at Cls. 3 & 8.) Claim 3—
`
`which depends from independent claim 1—specifically requires “the step of
`
`generating the first image is repeated while the update event for the first image
`
`lasts.” (Id. at Cl. 3.) Claim 8—which depends from independent claim 1—
`
`specifically requires “the step of generating the second image is repeated while the
`
`update event for the second image lasts.” (Id. at Cl. 8.)
`
`34. Claims 5 and 9 are similar in that both call for generation of an update
`
`event based on a user input. (Id. at Cls. 5 & 9.) Claim 5—which depends from
`
`independent claim 1—specifically requires “generating the update event for the
`
`first image by a screen update request of one of changing the operation of a three-
`
`dimensional image or a user input, wherein the screen update request comprises
`
`moving a position or action of the first image.” (Id. at Cl. 5.) Claim 9—which
`Ex. 1002 – Page 17
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`

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`depends from independent claim 1—specifically requires “wherein a user input
`
`initiates the update event for the second image.” (Id. at Cl. 9.)
`
`35. Claims 4 and 10 are similar in that both call for specific embodiments
`
`of images. (Id. at Cls. 4 & 10.) Claim 4, which depends from independent claim
`
`1, specifically requires “the first image is an image including a three dimensional
`
`object for displaying one of a player character, a Non-Player Character (NPC), and
`
`a dynamic scene in a three dimensional network game.” (Id. at Cl. 4.) Claim 10,
`
`which depends from independent claim 1, specifically requires “the second image
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`is an image for displaying user interface input associated with one of a mouse
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`point, a chatting window including chatting text, and an item selecting window
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`including item state information.” (Id. at Cl. 10.)
`
`36. Claim 6, which depends from independent claim 1, also requires “the
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`three dimensional network game comprises a Massively Multi-player Online Role
`
`Playing Game (MMORPG) comprising a plurality of users simultaneously
`
`participating via online in a broadband game area.” (Id. at Cl. 6.)
`
`37. Claim 7, which depends from independent claim 1, further requires
`
`“the step of compositing the first image with the second image includes a step of
`
`generating the entire image by overlapping the first with the second image.” (Id. at
`
`Cl. 7.)
`
`Ex. 1002 – Page 18
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`

`

`38. Claim 11, which depends from independent claim 1, further requires
`
`“when only the update event for the first image occurs, only the first image is
`
`updated and the full image is updated at the first frame rate, when only the update
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`event for the second image occurs, only the second image is updated and the full
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`image is updated at the second frame rate, and when the first image and the second
`
`image are simultaneously updated, the full image includes a first area updated at
`
`the first frame rate and a second area updated at the second frame rate.” (Id. at Cl.
`
`11.)
`
`C.
`Prosecution History
`39. The prosecution history of the challenged claims of the ‘649 Patent is
`
`particularly relevant to the validity of the challenged claims.
`
`40. Prior to examination, the Applicant filed a preliminary amendment.
`
`The Amendment included amendments to claims 1-8 and added new claims 9-12.
`
`(Ex. 1003 at 5-9.) The Examiner initially rejected amended claims 1-12 as being
`
`obvious under 35 U.S.C. § 103(a) by U.S. Pat. App. No. 2005/0184993
`
`(“Ludwin”) in view of U.S. Pat. App. No. 2003/0080971 (“Hochmuth”). (Ex.
`
`1004 at 4-8.) The Examiner found that Ludwin in view of Hochmuth disclosed all
`
`of the limitations of all of the claims. (Id.)
`
`41.
`
`In response, the Applicant proposed amending claims 1, 4, 7, and 11
`
`to overcome objections regarding informalities and grammatical errors. (Ex. 1005
`
`Ex. 1002 – Page 19
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`

`

`at 10.) The Applicant stated that the claims distinguished the invention of the ‘649
`
`Patent over the prior art. (Id. at 12-14.)
`
`42.
`
`In particular, the Applicant explained as follows:
`
`“However, Ludwin does not disclose identifying image resource
`data associated with an update event for a first image from a basic
`recording space when the update event for the first image occurs as
`recited in claim 1. The Office Action acknowledges that Ludwin
`does not explicitly teach identifying such image resource data
`associated with an update event for a first image from a basic
`recording space when the update event for the first image occurs
`(Office Action, page 4). While Applicant does not rely on
`disputing the obviousness rejection by addressing the cited
`references individually, Applicant respectfully points out the
`deficiencies in the disclosures relied upon by the Office Action.
`Here, Ludwin does not disclose identifying the image resource data
`associated with an update event. If the image resource data is not
`identified by Ludwin, then it follows that Ludwin does not disclose
`loading such image resource data that has not been identified in a
`buffer space.
`
`The Office Action attempts to remedy the deficiencies of Ludwin
`by stating on page 4 that, while Ludwin does not explicitly teach
`identifying image data associated with the update event when the
`update event occurs, Hochmuth does. The Office Action states:
`“However, Hochmuth teaches exactly the same (fig. 3, [0035]-
`[0038]). The Office Action indicates that identifying image data of
`
`Ex. 1002 – Page 20
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`

`

`claim 1 is the same as reading graphics data when there is a change
`in graphics data or step 98 in the flowchart of Figure 3 of
`Hochmuth (Office Action, page 4). The Office Action also
`indicates that the update event of claim 1 is the same as an update
`request or lapse of a predetermined time period or step 92 in the
`flow chart shown in Figure 3 of Hochmuth (Id.) Applicant
`respectfully disagrees.”
`
`By way of review, Hochmuth discloses a system and method for
`communicating graphics
`image data over a communication
`network (paragraph [0002]). A graphics adapter disclosed by
`Hochmuth comprises a frame buffer to store graphics image data,
`and a network interface to receive the graphics image data and to
`format the image data into a plurality of packets for transmission
`over
`the communication network (paragraph [0008]). The
`flowchart 90 shown in Figure 3 of Hochmuth describes the
`operation of the graphics adapter 20 disclosed by Hochmuth
`(paragraph [0035]; Fig. 3). Step 92 of Hochmuth teaches the
`graphics adapter waits for either the lapse of a predetermined
`period of time or the receipt of an update request. Such an
`update request may be received from a source device 12 or a
`destination device 14 (Id.)
`
`Hochmuth discloses that in step 98, graphics image data from the
`frame buffer 50 is read by the compression unit 26 (paragraph
`[0038]; Fig. 3). However, nothing in the cited references whether
`taken alone or in combination discloses identifying image
`resource data associated with an update event for a first image
`
`Ex. 1002 – Page 21
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`

`

`from a basic recording space when the update event for the first
`image occurs, as recited in claim 1. Thus, claim 1 is non-obvious
`over the cited combination of Ludwin in view of Hochmuth.” (Id.
`at 13-14 (emphasis added).)
`
`43.
`
`In an Office Action dated February 1, 2010, the Examiner rejected
`
`amended claims 1-12 as rendered obvious under 35 U.S.C. § 103(a) by Ludwin in
`
`view of Hochmuth. (Ex. 1006 at 5.) The Examiner disagreed with the Applicant’s
`
`arguments regarding Ludwin in view of Hochmuth. (Id. at 3.)
`
`44. To overcome the February 1, 2010 rejections, the Applicant presented
`
`arguments regarding how the amended claims overco