Autodesk, Inc.

Patent Trials and Appeals Board

Nov 12, 2021

2020004784 (P.T.A.B. Nov. 12, 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.
15/788,630 10/19/2017 Yan Fu 30566.506-US-C1 2114
55895 7590 11/12/2021
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6060 CENTER DRIVE, SUITE 830
LOS ANGELES, CA 90045
EXAMINER
SUN, JIANGENG
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
11/12/2021 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YAN FU
_____________

Appeal 2020-004784
Application 15/788,630
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–9, and 11–18, which constitute all the claims pending in this
application. Claims 2 and 10 are canceled. The Examiner indicates that
“Claims 19 and 20 are objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form including all
of the limitations of the base claim and any intervening claims.” Final Act.
9. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is “AutoDesk, Inc.” See Appeal Br. 1.

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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to “point cloud data, and in particular, to a method, apparatus, and article of
manufacture for extracting the level and reference grid of floor plan
information of a building from point cloud data.” Spec. ¶ 2.
Representative Claim 1
1. A computer-implemented method for extracting floor
plan information for a building interior from point cloud data,
comprising:
(a) obtaining point cloud data, of the building interior,
comprising laser scanning points of a building;
(b) estimating a principal axis direction of the point cloud data;
(c) transforming the point cloud data by adjusting the principal
axis direction,
wherein after transforming, the building stands upright;
(d) organizing the point cloud data into a three-dimensional
structure of voxels, the three-dimensional structure consisting
of an X-axis, Y-axis, and Z-axis, wherein each voxel represents
a value on a regular grid in three-dimensional space;
(e) accumulating non-empty voxels along the Z-axis to generate
a Z-axis histogram;
(f) extracting level information from the Z-axis histogram,
wherein peaks of the Z-axis histogram identify a location of
floors and ceilings of the building interior;
(g) segmenting the building interior by level and processing
each level separately;

2 We herein refer to the Final Office Action, mailed September 27, 2019
(“Final Act.”); the Appeal Brief, filed February 27, 2020 (“Appeal Br.”); the
Examiner’s Answer, mailed April 7, 2020, and the Reply Brief, filed June 8,
2020 (“Reply Br.”).
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(h) for each level:
(1) finding one or more straight walls by examining, for
each non-empty voxel, neighboring voxels, and retaining
voxels that form a vertical plane;
(2) projecting remaining voxels onto an 2D XY plane;
(3) accumulating non-empty voxels in each row of the
2D XY plane to form a Y-histogram along the Y-axis;
(4) accumulating non-empty voxels in each column of
the 2D XY plane to form a X-histogram along the X-
axis; and
(5) generating a reference grid of a floor plan based on
peaks from the X-histogram and the Y-histogram.

Claims App. 1 (disputed claim limitations emphasized).

Prior Art Patent Evidence Relied Upon by the Examiner
Name Reference Date
Ramani et al.
(“Ramani”) US 2006/0114252 A1 June 1, 2006

Prior Art Non-Patent Evidence Relied Upon by the Examiner
Name Reference Date
Okorn et al. (“Okorn”)
Toward Automated
Modeling of Floor
Plans
2010
Schnabel et al.
(“Schnabel”)
Efficient RANSAC for
Point-Cloud Shape
Detection 1–12
1981
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Adan et al. (“Adan”)
Automatic Method for
Building Indoor
Boundary Models from
Dense Point Clouds
Collected by Laser
Scanners, Sensors
16099–16115
Nov. 22, 2012

Rejections3
Rejection Claims
Rejected
35 U.S.C.
§ References/Basis
A 1, 7–9, 15,
16 103 Okorn, Ramani
B 3, 11 103 Okorn, Ramani, Adan
C 4–6,
12–14
103 Okorn, Ramani, Schnabel

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are forfeited
or waived.4 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv) (2019). Throughout this

3 The Examiner withdrew the rejection under 35 U.S.C. § 112(a) for claims
17 and 18 in the Answer at page 3. Therefore, this rejection is not before us
on appeal and claims 17 and 18 are not rejected on any other grounds.

4 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(some internal citation omitted):
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opinion, we give the claim limitations the broadest reasonable interpretation
(“BRI”) consistent with the Specification. See In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). We highlight and address specific findings and
arguments for emphasis in our analysis below.
Claim Grouping
Appellant argues the follow groups of claims separately:

Group Claims
argued
Rejection See Appeal
Brief
Representative
Claim
I 1, 9 A Appeal Br.
9–13
1
II 3, 11 B Appeal Br.
15–16
3
III 4, 12 C Appeal Br.
16
4
IV 5, 13 C Appeal Br.
17
5
V 6, 14 C Appeal Br.
17–18
6

It is well established that “[w]aiver is different from
forfeiture.” United States v. Olano, 507 U.S. 725, 733 . . .
(1993).[] “Whereas forfeiture is the failure to make the timely
assertion of a right, waiver is the ‘intentional relinquishment or
abandonment of a known right.’” Id. (quoting Johnson v. Zerbst,
304 U.S. 458, 464 . . . (1938)) (additional citations omitted). The
two scenarios can have different consequences for challenges
raised on appeal, id. at 733–34 . . . , and for that reason, it is worth
attending to which label is the right one in a particular case.
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VI 8, 16 A Appeal Br.
14–15
8

Appellant expressly indicates that “Claims 7 and 15 Are Not
Separately Argued.” Appeal Br. 14. See 37 C.F.R. § 41.37(c)(1)(iv)
(“Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.”); see also Google Tech.
Holdings, 980 F.3d at 862.

Group I, Independent Claims 1 and 9 under Rejection A
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Okorn and Ramani teaches or suggests the disputed
representative claim 1 limitations (b), (c), and (f):
(b) estimating a principal axis direction of the point cloud data;
(c) transforming the point cloud data by adjusting the principal
axis direction,
. . .
(f) extracting level information from the Z-axis histogram,
wherein peaks of the Z-axis histogram identify a location of
floors and ceilings of the building interior.
Claim 1 (emphasis added).
Appellant asserts that these limitations (b), (c), and (f), are not taught
by the cited Okorn and Ramani references. See Appeal Br. 10. Appellant
then points to support in the Specification at paragraphs 26, 53, 7, and 8, as
reproduced on pages 10–12 of the Appeal Brief.
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However, our reviewing court has repeatedly “cautioned against
limiting the claimed invention to preferred embodiments or specific
examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)).
Nevertheless, Appellant urges that “Ramani completely fails to teach,
describe, or suggest, adjusting a principal axis direction or that a building
will be upright after a rotation.” Appeal Br. 12.
In particular, Appellant contends:
Instead, the cited text of Ramani merely describes statistics-
based 2D shape distribution that is invariant to the rotation of
3D models (see [0086]). Such language fails to even recognize
the problems associated with the orientation of a building and
standing a building upright by transforming a principal axis
direction. In fact, Ramani’s invention description does not even
consider buildings or similar large architectural buildings that
need to be placed in an upright position as part of a process to
identify floors/ceilings of a level of a building interior. There is
simply no recognition of the problem that the present claims
specifically and explicitly address.
Appeal Br. 12 (emphases added).
However, our reviewing court guides it is irrelevant that the prior art
and the present invention may have different purposes. See Nat’l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from
another.”). It is sufficient that references suggest doing what Appellant did,
although the Appellant’s particular purpose was different from that of the
references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re
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Gershon, 372 F.2d 535, 539 (CCPA 1967)). For a prima facie case of
obviousness to be established, the reference need not recognize the same
problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996). The Supreme Court provides controlling authority that is
applicable here: “[N]either the particular motivation nor the avowed purpose
of the [Appellant] controls” when performing an obviousness analysis. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Here, regarding limitation (b) of claim 1 (“estimating a principal axis
direction of the point cloud data” (emphasis added)), we find Ramani
describes a method of “posing or orienting a model or a 3D shape” from
“various representations of such shapes or models[] such as . . . point
clouds.” Ramani ¶ 50 (emphasis added). Therefore, we find the Examiner’s
reading of limitation (b) on Ramani at paragraph 52 is supported by a
preponderance of the evidence, because Ramani describes a method of
finding a “bounding box” using a maximum normal distribution (“MND”)
such that “the greatest of the distributions of normals to polygons of a 3D
shape[] is used as one of the principal axes.” Id. ¶ 52 (emphasis added).
Regarding limitation (c) of claim 1 (“transforming the point cloud
data by adjusting the principal axis direction” (emphasis added)), we find
paragraph 85 of Ramani describes in pertinent part: “Drawings and models
in a CAD system typically have axis systems predefined by a user, and if no
such axes exist then the disclosed methods can be used to define the axes.
For example, a point cloud may have an arbitrary axis system that can be
rotated to provide new axes using the techniques described.” Emphasis
added. We find such rotation (i.e., adjusting) of the axis system teaches or
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suggest the claimed “transforming [of] the point cloud data by adjusting the
principal axis direction.” Claim 1 (emphasis added).
We next turn to disputed limitation (f) of claim 1:
(f) extracting level information from the Z-axis histogram,
wherein peaks of the Z-axis histogram identify a location of
floors and ceilings of the building interior.
The Examiner finds limitation (f) is taught or suggested by Okorn’s
Figure 2. See Final Act. 4. We reproduce Figure 2 of Okorn below:

As noted in the description of Figure 2, a “height histogram is a
projection of the 3D data onto the vertical axis.” Okorn describes that the
“large maxima at the top and bottom correspond to the ceiling and floor
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heights” and that “[v]ariations in data density at other heights are indicative
of the degree of clutter at each elevation.” Id.
We find the depiction of floor and ceiling height information as a
function of “peak” or high voxel counts in Okorn’s height histogram (Figure
2) teaches or suggests disputed limitation (f) of claim 1:
(f) extracting level information from the Z-axis histogram,
wherein peaks of the Z-axis histogram identify a location of
floors and ceilings of the building interior.
Claim 1 (emphasis added).
With respect to the obviousness of the claims before us on appeal, we
emphasize that “the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). See also Manual
of Patent Examining Procedure § 2123 (9th Ed., Rev 10.2019 (June 2020)).
Accordingly, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness for
representative independent claim 1. Grouped independent claim 9 (not
argued separately) falls with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s Rejection A of
independent claims 1 and 9 over the collective teachings and suggestions of
Okorn and Ramani.
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Group II, Claims 3 and 11 under Rejection B
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Okorn, Ramani, and Adan teaches or suggests the
disputed representative claim 3 limitation:
3. The computer-implemented method of claim 1 further
comprising refining the extracted level information by plane
sweeping to detect a density variation inside of a voxel
dimension range.
Appellant reproduces the Examiner’s findings regarding Adan, at
pages 16102 and 16103. See Appeal Br. 15. Appellant again points to
support found in the Specification at paragraphs 70–72. Id.
Appellant contends:
there is simply no mention in Adan of the ability to use plane
sweeping to detect a density variation inside of a voxel
dimension range. In fact, the Adan is conspicuously silent with
respect to any relevant plane sweep operation. Instead, Adan's
series of operations are neither equivalent to nor do they
remotely allude to sweeping operation being conducted with
planes or otherwise.
Appeal Br. 15.
But we find the background section “2. Related Work” description in
Okorn evidences that “plane sweeping” was a technique that was known in
the art:
A wide variety of methods have been proposed for
detecting and modeling planar surfaces in 3D laser scan
data. Example approaches include bottom-up region
growing using surface normals [3], brute-force plane-sweep
search [1, 5], hypothesize and test using the random sample
consensus (RANSAC) algorithm [8], Hough transforms
[10], and probabilistic methods based on the expectation
maximization (EM) algorithm [11].
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Okorn “2. Related Work” section, right column, paragraph 2 (emphasis
added).
Okorn additionally describes:
Our approach takes as input a 3D point cloud, which is obtained
from laser scanners positioned at multiple locations in the
facility. We use a histogram of height data to detect floor
and ceiling data. We then project the remaining points onto
a 2D ground plane and create a histogram of point density,
from which line segments corresponding to walls are
extracted using a Hough transform.
Okorn Abstract (emphasis added, some italics omitted).

Regarding the claim 3 language “to detect a density variation inside
of a voxel dimension range” (emphasis added), we note that “[a]n intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often. . .
appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987), a statement of intended use or purpose can appear elsewhere in a
claim. Id.
And Appellant has not substantively traversed the Examiner’s specific
findings regarding Adan. See Final Act. 6–7. Accordingly, on this record,
and based upon a preponderance of the evidence, we are not persuaded of
error regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness for representative dependent claim 3. Grouped
claim 11 (not argued separately) falls with representative claim 3. See
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37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s
Rejection B of dependent claims 3 and 11.

Group III, Claims 4 and 12 under Rejection C
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Okorn, Ramani, and Schnabel teaches or suggests the
disputed representative claim 4 limitations:
4. The computer-implemented method of claim 1 further
comprising: for each level, removing points representing
horizontal objects by removing points that cover an area greater
than a region threshold.

Appellant again cites to the Specification for support (at paragraph 74)
and contends:
the cited text of Schnabel fails to describe, teach, or
suggest, explicitly or implicitly, any type of
evaluation/comparison of points to a region threshold and
removing point representing horizontal objects. Instead,
Schnabel merely looks at shape candidates and compares the
number of candidate shapes to drawn candidates as part of a
sampling strategy (see Schnabel Section 3).
Appeal Br. 16 (emphasis added).
We note claim 4 is silent regarding the argued “evaluation/comparison
of points to a region threshold.” 5 Id. We also note that Schnabel teaches

5 We emphasize that patentability is based upon the claims. “It is the claims
that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of Am., 775
F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). A basic canon of claim
construction is that one may not read a limitation into a claim from the
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removing points in the pseudo-code depicted in Algorithm 1 that is
described as extracting “shapes in the point cloud P,” under section
“3. Overview,” and as shown at the top of the right column. Moreover,
“horizontal objects” are not defined in the claim, nor do we find that
“removing points that cover an area greater than a region threshold” (claim
4) would result in anything more than a predictable result.
Our controlling case law recognizes that a “predictable use of prior art
elements according to their established functions” would have been obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Further, in KSR,
550 U.S. at 418, the Court stated that, when considering obviousness, “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
When there is a design need or market pressure to solve a problem and there
are a finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options within his or her technical
grasp. See id. at 418.
The controlling authority of KSR is applicable here. Therefore, on
this record, and based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for representative dependent claim
4. Grouped claim 12 (not argued separately) falls with representative claim

written description. Renishaw plc v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1248 (Fed. Cir. 1998).

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4. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s
Rejection C of dependent claims 4 and 12.

Group IV, Claims 5 and 13 under Rejection C
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Okorn, Ramani, and Schnabel teaches or suggests the
disputed representative claim 5 limitations:
5. The computer-implemented method of claim 4 further
comprising:

re-computing the Z-axis histogram after the points
representing horizontal objects have been removed; and

filtering out points corresponding to histogram values in
the Z-axis histogram above a maximum value.

Appellant contends that “[i]n rejecting claims 5 and 13, the final
Office Action incorrectly reads Schnabel. In particular, the Office Action
provides ‘P is probability, reads on histogram’. However, Schnabel
explicitly provides that P [i]s the point-cloud (see first sentence of Schnabel
section 3).” Appeal Br. 17.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection: “clearly [the] P in P(|m|,|C|) is probabilities, and there is
no misinterpretation.” Ans. 7.

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We reproduce below the pseudo-code algorithm 1 from the section
“3. Overview” of Schnabel:

Reproduced above is Schnabel’s
pseudo-code Algorithm 1 that describes how
shapes are extracted from the point cloud P
We note the corresponding descriptive text in the left column of
Schnabel’s section “3. Overview” clearly indicates that the “P” font or
symbol relied upon by the Examiner refers to “probability,” and not to a
“point cloud,” which is referenced by a different symbol that also resembles
an uppercase “P” letter:
The best candidate is only accepted if, given the size |m| (in
number of points) of the candidate and the number of drawn
candidates |C|, the probability P(|m|,|C|) that no better candidate
was overlooked during sampling is high enough (see sec. 4.2.1).

Accordingly, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness for
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representative dependent claim 5. Grouped claim 13 (not argued separately)
falls with representative claim 5. See 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s Rejection C of
dependent claims 5 and 13.

Group V, Claims 6 and 14 under Rejection C
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Okorn, Ramani, and Schnabel teaches or suggests the
disputed representative claim 6 limitations:
6. The computer-implemented method of claim 1 wherein a
point xi in the Z-axis histogram is identified as a peak if:

i) xi is greater than or equal to the mean m of neighboring
points around xi ,

ii) an absolute value of xi minus m is greater than or equal to
the standard deviation s of the neighboring points around
the peak xi multiplied by a value h predefined by the
user;

iii) s is greater than or equal to a standard deviation threshold
τs; and

iv) xi is greater than or equal to an area threshold a.

Regarding dependent claims 6 and 14, Appellant contends:
In rejecting these claims, the Office Action
acknowledges the lack of teaching and without clearly
identifying official notice, the Action buries official notice in
the Action and asserts that items (i) and (ii) are statistical
methods of Chebyshev that are well-known in the art.
Appellant notes that while two criteria are used in the
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Chebyshev, the claims do not merely rely on the two criteria
but add two additional criteria and it is the combination of all of
the criteria that are used to uniquely identify a peak.

In rejecting the third additional criteria, the Action
acknowledges the references fail to teach the criteria, and
instead states that a user can adjust the standard deviation to get
a meaningful statistical result and it would therefore be
obvious. Appellant submits that such an assertion relies on the
Examiner’s own personal conjecture and there is no support in
the cited art for such conjecture. Further, such an assertion
relies on impermissible hindsight only available in view of the
present specification.

With respect to the fourth criteria, the Action
acknowledges Okorn fails to teach such a criteria and instead
relies on Schnabel’s teaching of stopping further processing
once a minimum size shape has been identified. Appellant
submits that Schnabel merely describes the ability to remove
points from a point cloud based on a probability of a minimum
size shape, Such a teaching does relate to nor does it describe
the identification of a peak in a histogram based on compliance
with all 4 listed claimed criteria. In this regard, the Action is
attempting to combine disjointed elements from various
different references in an unintended manner and further in a
manner that would not result in the claimed invention. There is
simply no motivation or practical manner in which to combine
the elements in the manner suggested in the Office Action.
Further, even if combined, Schanbel [sic] would still not
identify the peak of the z-histogram and neither would the other
references.
Appeal Br. 18 (emphasis added).
We have reviewed the Examiner’s response in the Answer (id. at 7–
8), including the Examiner’s reliance upon Official Notice for method steps
i) and ii). See Final Act. 8.
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We note that Appellant acknowledges that the first two steps i) and ii)
are known in the art: “Appellant notes that while two criteria are used in the
Chebyshev, the claims do not merely rely on the two criteria but add two
additional criteria and it is the combination of all of the criteria that are used
to uniquely identify a peak.” Appeal Br. 18 (first full paragraph) (emphasis
added).
A statement by an applicant in the Specification or made during
prosecution identifying the work of another as “prior art” is an admission
which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C. 102.
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed.
Cir. 1988). See also 37 C.F.R. § 1.104(c)( 3)(“In rejecting claims the
examiner may rely upon admissions by the applicant, or the patent owner in
a reexamination proceeding, as to any matter affecting patentability and,
insofar as rejections in applications are concerned, may also rely upon facts
within his or her knowledge pursuant to paragraph (d)(2) of this section.”)
However, regarding claim 6 method steps iii) and iv), we find we
must resort to some degree of speculation to ascertain how the Examiner has
mapped these disputed third and fourth limitations. But, we cannot affirm a
rejection based upon speculation. Our reviewing court provides guidance
that we find is applicable here: “A rejection . . . must rest on a factual basis .
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
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. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id.
Accordingly, on this record, and based upon a preponderance of the
evidence, we are persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness for dependent
claim 6, and also for dependent claim 14, which recites identical language to
the claim 6 method steps iii) and iv). Thus claim 14 stands with claim 6.
Accordingly, we are constrained on this record to reverse the Examiner’s
Rejection C of dependent claims 6 and 14.

Group VI, Claims 8 and 16 under Rejection A
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding that
the combination of Okorn and Ramani teaches or suggests the disputed
representative claim 8 limitations:
8. The computer-implemented method of claim 1 further
comprising refining the extracted reference grid information by
line sweeping.
The Examiner finds that claim 8 is taught or suggested by Okorn (at
section 3.3) which the Examiner finds “incrementally detect[s] lines by first
finding the strongest peak, estimating the corresponding line segment, and
then removing the underlying data.” Final Act. 6.
Appellant urges that “Okron’s [sic] removal of underlying data does
not actually refine grid information by line sweeping but instead merely
looks at line strength itself. In contrast, the term ‘line sweeping’ as used in
the claims is a specific practice/term that is explicitly defined/described in
the originally filed specification [0082].” Appeal Br. 14.
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We turn to the pertinent portion of paragraph 82 of the Specification.
Instead of a definition per se, we find only a description of a non-limiting,
exemplary embodiment:
In one embodiment, two parallel sweep lines are moved in
successive positions along the Y-axis of the point cloud data in
a peak voxel. The two parallel sweep lines are separated by an
interval value in the Y-axis direction. The total number of laser
scanning points within the interval value of the two parallel
sweep lines is calculated for each position along the Y-axis. The
position along the Y-axis with the greatest total number of laser
scanning points is also selected as a refined wall location on the
reference grid.
Spec. ¶ 82 (emphasis added).
We decline to read argued limitations from the Specification into the
claims. “A particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004). Thus, “each claim does not necessarily cover every feature
disclosed in the specification. When the claim addresses only some of the
features disclosed in the specification, it is improper to limit the claim to
other, unclaimed features.” Ventana Med. Sys., Inc. v. Biogenex Labs., Inc.,
473 F.3d 1173, 1181 (Fed. Cir. 2006).
This controlling legal authority is applicable here. Accordingly, on
this record, and based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for representative dependent claim
8. Grouped claim 16 (not argued separately) falls with representative claim
8. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s
Rejection A of dependent claims 8 and 16.
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Claims 7 and 15 under Rejection A
As noted above, dependent claims 7 and 15 are not argued separately.
See Appeal Br. 14. Therefore, claim 7 falls with independent claim 1 under
Rejection A, and claim 15 falls with independent claim 9 under Rejection A.
Arguments not made are waived or forfeited. See 37 C.F.R. §
41.37(c)(1)(iv); see also Google Tech. Holdings, 980 F.3d at 862.
To the extent that the scope of any claims on appeal is being
construed broader by the Examiner or the Board than the interpretation
imputed by Appellant’s arguments in the Briefs, we emphasize that, because
“applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation
omitted).

CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1, 3–5, 7–9, and 11–13, 15, and 16 under 35 U.S.C. § 103 over the collective
teachings and suggestions of the cited references.
Appellant has persuaded us that the Examiner erred in rejecting claims
6 and 14 under 35 U.S.C. § 103 over the collective teachings and
suggestions of the cited references.
After the Examiner withdrew the rejection under 35 U.S.C. § 112(a)
of claims 17 and 18 in the Answer (id. at 3), we note that claims 17 and 18
are not rejected under any other ground of rejection. As also discussed
above, the Examiner indicates that “[c]laims 19 and 20 are objected to as
being dependent upon a rejected base claim, but would be allowable if
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rewritten in independent form including all of the limitations of the base
claim and any intervening claims.” Final Act. 9. As also noted above,
claims 2 and 10 are canceled.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7–9, 15,
16 103 Okorn, Ramani
1, 7–9,
15, 16
3, 11 103 Okorn, Ramani, Adan 3, 11
4–6, 12–14 103 Okorn, Ramani, Schnabel
4–5,
12, 13 6, 14
Overall
Outcome
1, 3–5,
7–9,
11–13,
15, 16
6, 14

TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).

AFFIRMED IN PART