3D4Medical Limited

Patent Trials and Appeals Board

Mar 18, 2021

2019004625 (P.T.A.B. Mar. 18, 2021)

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.
15/193,861 06/27/2016 Volodymyr Boichentsov 039-262 4328
1009 7590 03/18/2021
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
WILLS, DIANE M
ART UNIT PAPER NUMBER
2619
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VOLODYMYR BOICHENTSOV and IULIIA BOICHENTSOVA
____________________

Appeal 2019-004625
Application 15/193,861
Technology Center 2600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–25. (See Final Act. 1.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as 3D4Medical
Limited. (Appeal Br. 2.)
2 Our Decision refers to the Specification (“Spec.”) filed June 27, 2016, the
Final Office Action (“Final Act.”) mailed March 7, 2018, the Appeal Brief
(“Appeal Br.”) filed July 11, 2018, and the Examiner’s Answer (“Ans.”)
mailed September 21, 2018.
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CLAIMED SUBJECT MATTER
The claims are directed to “a method and apparatus for generating and
controlling a tool adapted to cut freeform shapes in three dimensional
structures processed by a software program.” (Spec. ¶¶ 1, 11.)
Claims 1 and 5, reproduced below, are illustrative of the claimed
subject matter:
1. An apparatus for editing a digital three-dimensional
structure associated with one or more two-dimensional textures
in real time, comprising:
a. a data storage adapted to store the digital three-
dimensional structure and the one or more two-dimensional
textures;
b. a data processor adapted to process the stored digital
three-dimensional structure and the one or more two-
dimensional textures and output same in a user interface, read
freeform user input in the user interface and process freeform
user input data into a cut shape of the three-dimensional
structure, generate a simplified structure based on the three-
dimensional structure, associate points of the cut shape with the
simplified structure to generate a curve, determine new points
of the curve corresponding to edges of the curve on the
simplified structure, calculate geometrical characteristics and
texture coordinates of the new points, and generate a new three
dimensional structure along the curve and join layers of the
structure; and
c. a display for displaying the user interface.

5. An apparatus according to claim 1, wherein the data
processor is further adapted to associate points by painting the
cut shape on the three-dimensional structure as a plurality of
points converted to three-dimensional space and read from an
off-screen depth buffer, defining a curve.
(Appeal Br. 12 (Claims Appendix).)

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REFERENCES
The prior art relied upon by the Examiner is:
Johannes Zimmermann, MeshSketch: Automated, Sketch-Based Editing of
Triangular Meshes (Diplomarbeit), Technische Universität Berlin, 1–48
(2007) (“Zimmermann”)

Andrew Boothroyd, Using Mesh Cutting in an Interactive Podiatric
Orthopaedic Surgery Simulator (Masters Thesis), University of
Huddersfield, 1–80 (2011) (“Boothroyd”)

Yang et al. US 2013/0135312 A1 May 30, 2013
(“Yang”)

REJECTIONS3
Claims 1–4, 12–16, and 25 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. (Final Act. 5–6.)4
Claims 1–11, 13–23, and 25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Boothroyd in view of Zimmermann. (Final Act. 7–
15.)
Claims 12 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Boothroyd in view of Zimmermann and Yang. (Final Act.
15–16.)

3 Claims 4 and 16 were rejected under 35 U.S.C. § 112(b), as being
indefinite. (Final Act. 6–7.) However, this rejection was withdrawn in the
Examiner’s Answer and is no longer pending on appeal. (Ans. 3.)
4 Dependent claims 5–11 and 17–24 are referenced at page 6 of the Final
Action as not rejected under 35 U.S.C. § 101. (See Final Act. 6.)
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ANALYSIS
35 U.S.C. § 101 Rejection
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
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dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
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that abstract idea into a patent-eligible invention.” Id.
The PTO published revised guidance on the application of § 101.
USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised
Guidance”). Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, 2018)).

Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

See Revised Guidance.
STEP 1 of the Revised Guidance
Independent claims 1, 13, and 25, as “apparatus,” “method,” and
“computer-readable medium” claims, each recite one of the enumerated
categories of statutory subject matter in 35 U.S.C. § 101—a machine,
process, and manufacture, respectively.
The issue before us is whether claims 1, 13, and 25 are directed to a
judicial exception without significantly more.

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STEP 2A, Prongs 1 and 2 of the Revised Guidance
The first Prong of Step 2A under the Revised Guidance is to
determine whether a claim recites a judicial exception including (a)
mathematical concepts; (b) certain methods of organizing human activity;
and (c) mental processes. Revised Guidance, 84 Fed. Reg. at 51–52. Here,
the Examiner determines claims 1, 13, and 25 are “directed to the abstract
idea of editing a three-dimensional layered, textured structure to generate a
cut shape and using that cut shape to cut and display a simplified structure,”
which “is similar to the basic concept of collecting, manipulating, and
displaying data,” and “similar to the basic concept of manipulating
information using mathematical relationships.” (Ans. 17–18 (citing
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332
(Fed. Cir. 2017)); Final Act. 5 (citing Gottschalk v. Benson, 409 U.S. 63
(1972)).)
We are not persuaded by the Examiner’s findings, as we are unable to
agree that the Examiner has adequately found the concept of claims 1, 13,
and 25 to be similar to other concepts (e.g., data collection and organization,
mental processes, mathematical concepts, or methods of organizing human
activity) found to be abstract ideas by our reviewing courts. Appellant’s
claim 1 (and independent claims 13 and 25 reciting similar limitations)
recites an “apparatus for editing a digital three-dimensional structure
associated with one or more two-dimensional textures in real time,” the
apparatus’ processor adapted to process the digital 3D structure and 2D
textures by reading freeform user input in a user interface and processing the
freeform input into a cut shape of the 3D structure, generating a simplified
structure based on the 3D structure, associating points of the cut shape with
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the simplified structure to generate a curve, determining new points of the
curve corresponding to edges of the curve on the simplified structure, and
calculating geometrical characteristics and texture coordinates of the new
points, to “generate a new three dimensional structure along the curve and
join layers of the structure.” (See Appeal Br. 12 (claim 1).) Here, we are
unable to determine from the Examiner’s analysis whether such technique
for editing a digital 3D structure in real time (by processing user’s freeform
input into a cut shape, generating a new 3D structure along a cut shape curve
obtained from user’s freeform, and joining layers of the structure) describes
subject matter that is a mathematical concept, a method of organizing human
activity, or a mental process (i.e., one of the three types of abstract ideas
identified by the Revised Guidance).
More particularly, claim 1 does not recite any of the methods of
organizing human activity identified in the Revised Guidance. For example,
claim 1 does not recite fundamental economic principles or practices,
commercial or legal interactions, or managing personal behavior or
relationships or interactions between people. See Revised Guidance, 84 Fed.
Reg. at 51–52. Second, claim 1 does not recite a mathematical concept, such
as a specific mathematical algorithm or formula. See Flook, 437 U.S. at
586; Diehr, 450 U.S. at 187. While limitations of claim 1 (e.g., processing
freeform user input into a cut shape of a 3D structure, associating points of
the cut shape with a simplified structure to generate a curve, determining
new points of the curve, calculating geometrical characteristics and texture
coordinates, and generating a new 3D structure along the curve) involve or
are based on mathematical formulas and calculations, the mathematical
formulas and calculations are not explicitly recited in the claim.
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Appellant’s claimed operations for editing a digital 3D structure in
real time are also not performable manually, or by pen and paper. Rather,
Appellant’s operations are performed by a computer rendering application (a
“software tool” or program, see Spec. ¶¶ 1, 11, 58) that simulates cutting
procedures (e.g., incisions) and resulting cross-sections through textured,
layered digital 3D structures (see Spec. ¶¶ 11, 43, 47, 60–61). These are
operations that exist exclusively in the realm of computers and cannot
practicably be performed in the human mind or with pen and paper, and thus
do not amount to a mental process. (See Appeal Br. 5–6.) We also disagree
with the Examiner’s finding that claim 1 is directed to an abstract idea
“similar to the basic concept of collecting, manipulating, and displaying
data.” (See Ans. 17; Final Act. 5.) Claim 1 does not merely collect,
manipulate, and display data (as the Examiner asserts), but rather relates to a
computer rendering application that simulates cutting procedures and cross-
sections through layered digital 3D structures. (See Appeal Br. 5–6; see also
Spec. ¶¶ 11, 43, 47, 58, 60–61.)
Moreover, even if Appellant’s claims 1, 13, and 25 were considered to
recite an abstract idea, we are persuaded by Appellant’s arguments that the
claims are “directed to a practical application performing real world physical
functions” by which an “existing technological process of ‘editing a digital
three-dimensional structure associated with one or more two-dimensional
textures in real time’ is improved.” (Appeal Br. 4, 6.) That is, claims 1, 13,
and 25 integrate an abstract idea into a practical application (in accordance
with the second prong of Step 2A under the Revised Guidance). As
Appellant explains, the claimed editing technique “process[es] an electronic
image, rendered from a combination of two-dimensional textures and a
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three-dimensional structure, into a new electronic image, rendered from a
combination of the two-dimensional textures and three-dimensional structure
edited according to freeform user input.” (Appeal Br. 6.) The claimed
technique for editing a digital 3D structure associated with 2D texture(s) in
real time is thus “directed toward improvements in a computer-related
technology.” (Id. at 5.) Appellant’s arguments are supported by the
Specification’s description of Appellant’s invention as directed to “a method
and apparatus for generating and controlling a tool adapted to cut freeform
shapes in three dimensional structures processed by a software program.”
(See Spec. ¶ 1.) The Specification explains that Appellant’s invention is a
computer-implemented tool that “allows users to create freeform cuts to
achieve views of underlying structures, regardless of user skill” and enables
“freeform cuts through a polygon mesh on a 3D model and the reapplication
of surrounding mesh properties to new edges in real time,” thereby
provid[ing] an intuitive user-controllable software tool to cut
freeform shapes through polygon mesh and UV maps on a 3D
model within a software program.
The apparatus . . . can be used to interact with and
manipulate the polygon mesh 306 and UV maps 307 of a 3D
model 305 directly, which is invaluable in learning environments
wherein visualization of subject-matter from multiple angles is a
standard and proven tuition technique, for instance 3D learning
plates in medical reference materials.
Accordingly, the techniques disclosed herein are
particularly useful with medical reference software tasked to
represent relationships between different anatomical structures
and wherein there is a need to cut specific shapes through
existing multi-layered structures, for instance specialized
surgical techniques detailing complex cuts.

(Spec. ¶¶ 11, 43, 58–60.)
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Thus, Appellant’s claims 1, 13, and 25 integrate a visual manipulation
technique for editing digital 3D structures, into a process rooted in computer
technology. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257–58 (Fed. Cir. 2014) (holding patent-eligible a claim that “address[es] a
business challenge (retaining website visitors)” by enabling visitors “to
purchase products from the third-party merchant without actually entering
that merchant’s website,” thus providing a “claimed solution . . . necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks”); see also Core Wireless
Licensing, S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362–63
(Fed. Cir. 2018) (patent-eligible claims directed to “an improved user
interface for electronic devices,” and “a specific manner of displaying a
limited set of information to the user” that improves “[t]he speed of a user’s
navigation through various views and windows”); McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314–16 (Fed. Cir. 2016) (claims
reciting an “improvement in computer animation” using “a combined order
of specific rules that renders information into a specific format that is then
used and applied to create desired results: a sequence of synchronized,
animated characters,” are “directed to a patentable, technological
improvement over the existing, manual 3-D animation techniques”).
Because claims 1, 13, and 25 integrate a judicial exception (if any)
into a practical application, we find claims 1, 13, and 25, and their dependent
claims 2–4, 12, and 14–16, are not directed to a judicial exception (abstract
idea), rather, they are directed to patent-eligible subject matter under § 101.
Accordingly, we do not address Step 2B of the Revised Guidance
(corresponding to step two of the Alice/Mayo test).
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For these reasons, we do not sustain the Examiner’s rejection of
claims 1–4, 12–16, and 25 as directed to ineligible subject matter under
35 U.S.C. § 101.

35 U.S.C. § 103 Rejection of Claims 1–4, 13–16, and 25
Appellant has 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). We review the appealed obviousness rejection of claims 1, 13, and
25 for error based upon the issues identified by Appellant and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections.”)). After considering the evidence presented in this Appeal and
each of Appellant’s arguments, we are not persuaded that Appellant
identifies reversible error. Thus, we affirm the Examiner’s § 103 rejection
of claims 1, 13, and 25 for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
With respect to independent claim 1, Appellant contends the
combination of Boothroyd and Zimmermann does not teach a data processor
adapted to “read freeform user input in the user interface and process
freeform user input data into a cut shape of the three-dimensional
structure,” as claimed. (Appeal Br. 8.) In particular, Appellant argues “the
Examiner admits this requirement [of claim 1] is missing from Boothroyd,
and [] cannot be found in Zimmerman[n],” as “Zimmerman[n] . . . fails to
contemplate the use of freeform user input processed into a cut shape of the
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three-dimensional structure.” (Id.) Appellant further argues that—in
contrast to “[t]he process of the present invention [that] uniquely analyzes
triangles, determines all points and multiple intersections, then forms
polygons from them”—“Boothroyd and Zimmerman[n] contain generic
teachings” of, e.g., “a biplane subtraction [in Boothroyd], which is
technically distinct from the claimed technique and typical of the generic
approach to these processes.” (Id.) Appellant additionally contends the
Examiner’s combination of Boothroyd and Zimmermann lacks articulated
reasoning and relies on a “mere conclusory statement” that “the results of
the combination [of Boothroyd and Zimmermann] were predictable.” (Id. at
8–9.)
We are not persuaded by Appellant’s arguments. At the outset, we
note Appellant has submitted arguments that are not supported by
corresponding language in claim 1. For example, claim 1 does not recite or
require analyzing triangles, determining all points and multiple
intersections, and then forming polygons from them (as Appellant argues,
see Appeal Br. 8); it is thus irrelevant that Boothroyd and Zimmermann
“contain generic teachings” that do not “uniquely analyze[] triangles,
determine[] all points and multiple intersections, then form[] polygons from
them.” (See id.)
We are also not persuaded by Appellant’s argument that the rejection
is deficient because Zimmermann “fails to contemplate the use of freeform
user input processed into a cut shape of the three-dimensional structure.”
(See Appeal Br. 8 (emphases added).) Appellant’s argument does not
address the Examiner’s findings as to the combined teachings of Boothroyd
and Zimmermann. The Examiner’s rejection does not rely on Zimmermann
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for processing freeform user input into a cut shape of a 3D structure; rather,
the rejection combines Zimmermann’s use of freeform user input to deform
a rendered 3D shape, with Boothroyd’s bone-cutting simulation that uses a
virtual saw blade controlled by user’s input device (e.g., a mouse, joystick,
or Phantom Omni haptic device). (Ans. 20 (citing Boothroyd §§ 6.2–6.4 and
6.6, Figs. 6.2, 6.3, 6.4; Zimmermann 19, 21, §§ 3–4); Final Act. 8–9 (citing
Boothroyd §§ 4.4.1–4.4.2, Figs. 4.2 and 4.3; Zimmermann §§ 3–4).)
Appellant’s arguments have not substantively addressed the Examiner’s
specific findings regarding Boothroyd and Zimmermann.
We also do not agree with Appellant’s argument that the Examiner’s
combination of Boothroyd and Zimmermann lacks articulated reasoning.
(See Appeal Br. 8–9.) The Examiner has articulated sufficient reasoning for
combining the teachings of Boothroyd and Zimmermann. (See Final Act. 9;
Ans. 21.) In particular, the Examiner reasons a skilled artisan would
recognize that freeform input could be used in Boothroyd’s bone-cutting
simulation (e.g., instead of Boothroyd’s mouse- or joystick-enabled user
input), as Zimmermann discloses that freeform user input can be used to
change rendered 3D shapes. (See id.) More particularly, the Examiner
reasons a skilled artisan would employ Zimmermann’s use of freeform input
in Boothroyd because:
Boothroyd contains a “base” process of simulated cutting with a
knife blade on a textured mesh of a medical object based on user
input. Zimmerman[n] contains a “comparable” process of
associating a freeform-input sketch line with points on a 3D
HalfEdge mesh object . . . . Zimmerman[n]’s known
“improvement” could have been applied in the same way to the
“base” process of Boothroyd and the results would have been
predictable and resulted in providing a more natural way for the
user to specify a way to specify a change to a three-dimensional
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object . . . . Furthermore, both Boothroyd and Zimmerman[n] use
and disclose similar system functionality (i.e. three-dimensional
editing which are also in a related field of endeavor) so that the
combination is more easily implemented.

(Ans. 21 (citing Zimmermann 5–6).) Appellant’s argument—that the
Examiner’s rejection “failed to provide a proper reason for combining the
teachings [of the references]” and relies on a “conclusory statement” (see
Appeal Br. 8–9)—does not substantively address the entirety of the
Examiner’s reasoning for combining the references.
Consequently, Appellant’s arguments do not show error in the
Examiner’s factual findings or conclusion of obviousness of independent
claim 1. We therefore sustain the Examiner’s § 103 rejection of independent
claim 1, and dependent claims 2–4 not separately argued. We also sustain
the Examiner’s § 103 rejection of independent claims 13 and 25 (reciting
limitations similar to claim 1 and argued for substantially the same reasons),
and dependent claims 14–16 not separately argued. (See Appeal Br. 8–9, 14
(claim 13 (“reading freeform user input in the user interface and process
freeform user input data into a cut shape of the three-dimensional
structure”)), 15 (claim 25 (“read freeform user input in the user interface and
process freeform user input data into a cut shape of the three-dimensional
structure”)).)

35 U.S.C. § 103 Rejections of Claims 5–11 and 17–24
The Examiner finds the combination of Boothroyd and Zimmermann
teaches the limitation of claim 5. In particular, the Examiner finds (i)
“[Boothroyd’s] p. 57, Section 6.3, first paragraph, where a bone texture is
applied to all meshes after cutting, and Fig. 6.4, where, with the cut in
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progress, one can see the bone texture inside the cut” teaches the claimed
data processor “adapted to associate points by painting the cut shape on
the three-dimensional structure.” (Ans. 21–22.) The Examiner next
finds:
[Zimmermann’s] Chapter 3, “Interface”, where the user can
sketch over a 3D object in order to operate on it; and Fig. 4.3 and
p. 24, last paragraph, where a depth map of the 3D image is used
to help determine the silhouette’s vertex locations on the 3D
object intended by the user; the depth map maps to the off-screen
depth buffer, and the curve maps to the determined edge points
of the elephant’s ear

teaches a data processor “adapted to associate points with the drawn line
on the three-dimensional structure as a plurality of points converted to
three dimensional space and read from an off-screen depth buffer,
defining a curve.” (Ans. 22; see also Final Act. 10.)
Appellant argues “[t]he Examiner’s rejection of this claim on
obviousness grounds fails to account for all words of the claim, such as the
terms ‘painting’ and ‘defining a curve,’” and the cited art does not teach or
suggest “painting the cut shape on the three-dimensional structure as a
plurality of points converted to three-dimensional space and read from an
off-screen depth buffer, defining a curve,” as recited in claim 5. (Appeal
Br. 9–10.)
We agree with Appellant. The cited portions of Boothroyd do not
teach a “data processor . . . adapted to associate points by painting the cut
shape on the three-dimensional structure” (as recited in claim 5). Rather,
page 57 and section 6.3 of Boothroyd disclose a reference foot model loaded
into an application, and Figure 6.4 of Boothroyd describes a particle effect
simulating “particles appearing and disappearing whilst flowing away from
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the blade” with “the number of particles generated . . . proportional to the
number of vertices being separated by the saw.” (See Boothroyd 57, 60–61,
§ 6.3, Fig. 6.4.)
In addition, the cited portions of Zimmermann (e.g., chapter 3, page
24, and Figure 4.3) do not teach associating points of a drawn line with a
3D-derived structure, as a plurality of points converted to three-dimensional
space and read from an off-screen depth buffer, defining a curve, as required
by claim 5. Zimmermann allows a user to draw a freeform (“user-sketch” or
“target polyline,” see Zimmermann 26) to which a shape of an original
structure (e.g., shape of an elephant’s ear, or shape of an anatomical part,
see id. at 24, 33, Figs. 4.3 and 5.1) is morphed (by, e.g., re-shaping the
original structure to fit the freeform, see id. at 27–29, 33, Fig. 5.1).
Zimmermann’s depth map referenced by the Examiner (see Ans. 22,
Zimmermann 24, Fig. 4.3) pertains to the silhouette (i.e., Zimmermann’s
original structure, such as the elephant illustrated in Figure 4.3, see
Zimmermann 19, 24, 26, 28–29, Abstract, Fig. 4.3), this depth map being
used to identify a continuous path of the original structure (e.g., identify an
outline of the elephant’s ear, see Zimmermann 24, Fig. 4.3). Thus,
Zimmermann’s depth map does not teach a depth buffer associated with
(and describing) the user’s freeform input—as required by claim 5. In
addition, Zimmermann does not associate its original structure with points of
a freeform placed on the original structure as points converted to three-
dimensional space and read from an off-screen depth buffer—as recited in
claim 5. (See Appeal Br. 12 (claim 5).)
As the Examiner has not identified sufficient evidence to support the
obviousness rejection of claim 5, we do not sustain the Examiner’s
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obviousness rejection of claim 5 and claims 6–11 dependent therefrom.
Claim 17 recites limitations similar to those of claim 5, and the Examiner’s
rejection of claim 17 relies upon similar findings based upon Boothroyd and
Zimmermann. (See Final Act. 13; Ans. 21–22.) Accordingly, we do not
sustain the Examiner’s obviousness rejection of claim 17 and claims 18–24
dependent therefrom.

35 U.S.C. § 103 Rejection of Claim 12
With respect to claim 12, Appellant contends “a proper reason with a
rational underpinning for combining the reference teachings is lacking,” as
the rejection relies on a “mere conclusory statement” that “the combination
results are ‘predictable.’” (Appeal Br. 10–11.)
Appellant’s argument is unpersuasive, as it does not substantively
address the entirety of the Examiner’s provided reasons to combine Yang
with Boothroyd and Zimmermann. More particularly, the Examiner finds it
would have been obvious to a skilled artisan to use digital 3D structures and
2D textures (as taught by Boothroyd and Zimmermann) as “learning plates
in a medical reference” (as recited in claim 12), because Yang teaches such
data can be used in “surgical planning and training” and other medical
“training simulations.” (See Yang ¶¶ 2–4, 6, 48, Abstract, Fig. 1; Ans. 24
(citing Yang ¶¶ 2–4); Final Act. 15 (citing Yang ¶ 48, Abstract, Fig. 1).)
More particularly, Yang describes medical training that uses “an image of an
anatomical object [rendered] on a display of a mobile computing device,”
the image including “[t]hree-dimensional anatomical object data . . .
represented and stored using a mesh representation,” or a “3D anatomical
object . . . represented directly as volumetric data” and “2D slices in the data
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volume.” (See Yang ¶ 48, Abstract.) The Examiner reasons a skilled artisan
would combine the cited art because Boothroyd, Zimmermann, and Yang
are “in a related field of endeavor” and disclose similar functionality to
display simulated structures, whereby
Yang contains a “comparable” process [(with respect to
processes disclosed in Boothroyd and Zimmermann)] of the use
of meshes for displaying anatomical objects for medical
simulation and training . . . . Yang’s known “improvement”
could have been applied . . . to the “base” process of Boothroyd
in view of Zimmerman[n] and the results would have been
predictable and resulted in a useful tool for medical training in
such a way that provides a natural interaction with the simulated
anatomical structure (Yang, [0002]–[0004]).

(Ans. 23–24.) We agree with the Examiner’s reasoned rationale to combine
the teachings of Yang with those of Boothroyd and Zimmermann, and
conclude there is sufficient support for the finding of obviousness.
Therefore, we sustain the Examiner’s obviousness rejection of claim 12.

CONCLUSIONS
The Examiner erred in rejecting claims 1–4, 12–16, and 25 under
35 U.S.C. § 101.
The Examiner erred in rejecting claims 5–11 and 17–24 based upon
obviousness under 35 U.S.C. § 103.
The Examiner did not err in rejecting claims 1–4, 12–16, and 25 based
upon obviousness under 35 U.S.C. § 103.

DECISION
For the above reasons, we REVERSE (1) the Examiner’s patent
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eligibility rejection of claims 1–4, 12–16, and 25 under 35 U.S.C. § 101, and
(2) the Examiner’s obviousness rejections of claims 5–11 and 17–24 under
35 U.S.C. § 103, and we AFFIRM the Examiner’s obviousness rejections of
claims 1–4, 12–16, and 25 under 35 U.S.C. § 103.

In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 12–16, 25 101 Eligibility 1–4, 12–16,
25
1–11, 13–23, 25 103 Boothroyd,
Zimmermann
1–4, 13–16,
25
5–11, 17–23
12, 24 103 Boothroyd,
Zimmermann,
Yang
12 24
Overall Outcome 1–4, 12–16,
25
5–11, 17–24

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 IN PART