Ex Parte 8,145,578 B2 et al

Patent Trial and Appeal Board

Feb 26, 2016

96000005 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
961000,005 12/26/2012 8,145,578 B2
500 7590 02/26/2016
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
290115.401RE 7209
EXAMINER
BASEHOAR, ADAM L
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
02/26/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EAGLE VIEW TECHNOLOGIES, INC.,
Patent Owner and Appellant
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
Technology Center 3900
Before STEPHEN C. SIU, ERIC B. CHEN, and ANDREW J. DILLON,
Administrative Patent Judges. 1
DILLON, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
This proceeding arose out of a request by Eagle View Technologies,
Inc. ("Patent Owner") for supplemental examination of U.S. Patent No.
8, 145,578 B2 ("the '578 patent") to Chris Pershing and Dave Carlson,
1 Administrative Patent Judge Jennifer L. McKeown sat on the panel during
the oral hearing of February 17, 2016 and has since recused herself.
Consequently Administrative Patent Judge Stephen C. Siu is substituting for
Judge McKeown.
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
entitled Aerial Roof Estimation System and Method, issued March 27, 2012,
and assigned to Eagle View Technologies, Inc.
Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the
Examiner's rejection of claims 1---66. We have jurisdiction under 35 U.S.C.
§ 6(b ). Patent Owner indicates that this matter is related to Supplemental
Examination Control No. 961000,004 (filed October 3, 2012). App. Br. 5.
A hearing was held on February 17, 2016. A transcript of that hearing
will be added to the record in due course.
The disclosed invention relates generally to systems and methods for
estimating construction projects, and more particularly, to such systems and
methods that allow estimates involving roofs on buildings to be created
remotely. Spec 1:11-14.
Independent claim 1 reads as follows:
1. A system for remotely determining measurements of a
roof, comprising:
a computer including an input means, a display means
and a non-transitory memory; and
a roof estimation software program that includes a
calibration module stored in the non-transitory memory
and operable to cause a processor of the computer to:
receive location information of a building in a
selected region;
2
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
receive image files having data representing a
plurality of distinct roof sections of a roof of said
building, at least one of the image files having image
scale information provided with respect to an image
of that file;
determine, measurements of the roof including size,
dimensions, and pitch of the plurality of distinct roof
sections of the roof of said building based solely on
the received image files; and
output a report having the determined measurements
therein.
REJECTIONS
1. The Examiner rejects claims 1---66 under 35 U.S.C. § 112, first
paragraph, as failing to describe an enabling disclosure of the
claimed "calibration module" or the step of "calibrating." Ans. 3.
2. The Examiner rejects claims 14, 15, 23, 24, 29, 30, 32--46, and 60-
66 under 35 U.S.C. § 112, first paragraph, as failing to provide an
enabling disclosure of the claimed "reconstructing a three-
dimensional geometry." Id.
3. The Examiner rejects claim 59 under 35 U.S.C. § 112, second
paragraph, as containing vague and indefinite claim language. Id.
ANALYSIS
We have reviewed the Examiner's rejections in light of Patent
3
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
Owner's contentions in the Appeal Brief (App. Br. 1-95) that the Examiner
has erred. We have also reviewed the findings and reasons set forth by the
Examiner in ( 1) the action from which this appeal is taken (Final Rej. 2-26),
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Patent Owner's Appeal Brief (Ans. 2-31 ). We highlight and
amplify certain teachings and suggestions of the references as follows.
§ 112 First Paragraph Rejections
Initially, the Examiner has considered the so-called "Wands Factors,"
which include, but are not limited to:
Ans. 5-10.
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure.
Weighing the results of the Wands Factors analysis, the Examiner
finds that there is a high level of skill in this art (Factor D), and the art is
predictable (Factor E); however, the Examiner finds that the analysis of the
remaining Wands Factors "suggest[s] that the '578 Patent fails to provide a
detailed disclosure that would enable a person of ordinary skill in the
relevant arts to make and use the claimed invention." Id. at 10.
4
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
With respect to claims 1---66, the Examiner finds that the claimed
"calibration module" or the claimed step of "calibrating" are not sufficiently
described in the Specification of the '578 patent as to enable one ordinarily
skilled in the art to practice the invention without resort to undue
experimentation. Id. at 3.
Regarding claims 14, 15, 23, 24, 29, 30, 32--46, and 60---66, the
Examiner finds that the claimed step of "constructing a three-dimensional
geometry of the roof based solely on the received image files" was not
sufficiently described in the Specification of the '578 patent as to enable one
ordinarily skilled in the art to practice the invention without resort to undue
experimentation. Id. at 11.
The Examiner also finds presumed support for the rejections under
35 U.S.C. § 112, first paragraph in the use of the phrase "some proprietary
algorithms" within the Specification, at column 6, lines 4--20. Ans. 11-12.
The Examiner takes the position that reference "to 'proprietary' algorithms
in a patent specification without providing an enabling description of those
algorithms cannot provide the 'full and clear disclosure of the invention'
required by 35 U.S.C. § 112, first paragraph." Id. at 12.
In response to the Examiner's findings, Patent Owner submitted three
Declarations in support of the position that the Specification of the '578
patent enables the claimed invention. App. Br. Attachments 3-5, 7-9.
Specifically, Patent Owner argues that the Yeung Declarations, as an
example of the submitted Declarations, disclose that Mr. Yeung, a person of
5
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
ordinary skill in the art, upon reference to the '578 patent, and information
well known to those of ordinary skill in the art, was able to practice the
claimed invention without resort to undue experimentation. App. Br. 39--49.
The Examiner finds that Mr. Yeung, as set forth in his Declaration,
supplemented the teaching of the '578 patent "with a bibliography" and, for
example, chose a set of eight reference points despite the teaching in the
'578 patent of "a set of reference points." Ans. 26-27.
"To be enabling under§ 112, a patent must contain a description that
enables one skilled in the art to make and use the claimed invention." Atlas
Powder Co. v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed.
Cir. 1984) (citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960 (Fed. Cir.
1983)). "That some experimentation is necessary does not preclude
enablement; the amount of experimentation, however, must not be unduly
extensive." Id. (citing W.L. Gore & Associates, Inc. v. Garlock, Inc.,
721F.2d1540, 1557 (Fed. Cir. 1983); In re Angstadt, 537 F.2d 498, 503
(CCPA 1976)).
We find that Mr. Yeung' s use of eight reference points, versus a "set
of reference points" and his use of reference texts available to those of
ordinary skill in the art, do not detract from his demonstration that the
Specification of the '578 patent contains sufficient enabling disclosure to
allow one of ordinary skill in the art to practice the claimed invention.
Consequently, we find the Examiner erred in rejecting claims 1---66
under 35 U.S.C. § 112, first paragraph.
6
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
§ 112 Second Paragraph Rejection
The Examiner rejects claim 59 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention. In
particular, the Examiner finds that the phrase "the pitch value" within claim
59 lacks proper antecedent basis. Final Act. 23-24.
Patent Owner does not dispute the Examiner's rejection of claim 59,
merely noting that an amendment which was thought to correct the issue had
been submitted, but was not entered. Furthermore, Appellant argues that
even without the proposed amendment, claim 59 is not vague or indefinite,
when interpreted in light of the Specification.
There exists a "need, in most cases, for claim terms to have proper
antecedent bases[.]" Baldwin Graphic Sys. v. Siebert, Inc., 512 F.3d 1338,
1343 (Fed. Cir. 2008).
The lack of clarity could arise where a claim refers to "said
lever" or "the lever," where the claim contains no earlier
recitation or limitation of a lever and where it would be unclear
as to what element the limitation was making reference.
Similarly, if two different levers are recited earlier in the claim,
the recitation of "said lever" in the same or subsequent claim
would be unclear where it is uncertain which of the two levers
was intended.
Id. (citing MPEP § 2173.05(e) with approval).
We therefore find that the Examiner did not err in rejecting claim 59
under 35 U.S.C. § 112, second paragraph.
7
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
New Ground of Rejection
Under 37 C.F.R. § 41.50(b), ifthe Board has knowledge of any
grounds not involved in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons for so
holding.
states
Specifically, at column 6, lines 4--20 of the '578 patent, Patent Owner
A set of reference points are identified in each of the
images. The service's measurement software then uses these
reference points and some proprietary algorithms to co-register
the images and reconstruct the three dimensional geometry of
the object identified by the reference points. There are a variety
of photo-grammetric algorithms that can be utilized to perform
this reconstruction. One such algorithm used by the service
uses photographs taken from two or more view points to
'trangulate' points of interest on the object in 3D space.
Thus, Patent Owner describes an unspecified set of "proprietary
algorithms" as the method by which the invention is practiced, and then
refers to a "variety" of other algorithms which might be utilized. This gives
rise to a presumption, in our minds, that Patent Owner withheld the "best
mode" for practicing the invention.
The best mode requirement is a safeguard against the desire on the
part of some people to obtain patent protection without making a full
disclosure as required by the statute. The requirement does not permit
inventors to disclose only what they know to be their second-best
8
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
embodiment, while retaining the best for themselves. In re Nelson, 280 F.2d
172 (CCP A 1960).
Consequently we reject claims 1---66 with regard to the claimed
"calibration module," the claimed step of "calibrating," and the claimed step
of "constructing a three-dimensional geometry of the roof based solely on
the received image files" under 35 U.S.C. § 112, first paragraph, for failing
to set forth "the best mode contemplated by the inventor of carrying out his
invention."
NEW GROUND OF REJECTION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) which provides that "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
Correspondingly, no portion of the decision is final for purposes of judicial
review.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41. 50(b }---( f). The decision may become final upon conclusion of
proceedings on remand before the Examiner. 37 C.F.R. § 41.50(e).
37 C.F.R. § 41.50(b) also provides that the Patent Owner, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
9
Appeal2016-000247
Reexamination Control 96/000,005
Patent 8, 145,578 B2
( 1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the Examiner. Such a response must
be either an amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under§ 41.52 by the Board upon the same record.
AFFIRMED-IN-PART;
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
10