Ex Parte Anast et al

Board of Patent Appeals and Interferences

Feb 22, 2010

11071916 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN MATTHEW ANAST, BRUCE WILLIAM LAVASH,
MATTHEW JOSEPH MACURA, NOBLE LESTER RYE II, and
MICHAEL LEWIS RUBIN
____________

Appeal 2009-008094
Application 11/071,9161
Technology Center 2100
____________

Decided: February 23, 2010
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 4, 2005. The real party in interest is The Procter
& Gamble Company.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-23, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was scheduled for
January 7, 2010, but Appellants waived the hearing. We will decide the
appeal based upon the arguments made in the Briefs and the Answer.
We affirm.

A. INVENTION
Appellants invented a system and method for providing three-
dimensional computer-aided modeling and design of garments to be worn on
a body. (Spec. 1, ll. 9-10.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-23. Claims 1, 13, and 16 are
independent claims. Claims 1 is illustrative:
1. In a computer system, a virtual model capable of
simulating physical deformation of at least a portion of a body, said
model comprising at least two computer-generated volumes that
together define an external surface and an interfacial surface, one of
said computer-generated volumes being a deformable volume and one
of said computer-generated volumes being a prescribed motion
volume, at least a portion of said interfacial surface having a
prescribed motion associated therewith.

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C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Edelsbrunner US 6,377,865 B1 Apr. 23, 2002
Woltman US 6,810,300 B1 Oct. 26, 2004

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-12 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter;
(2) Claims 1-15 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Woltman; and
(3) Claims 16-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Woltman in view of Edelsbrunner.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Woltman
1a. Woltman discloses that “[s]tarting from the triangular-based
volume mesh (see FIG. 4) of the torso and a triangular-based volume mesh
of internal components such as a pelvis 57 and femurs 58 as illustrated in
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FIG. 5, triangular-based volume meshes are created to complete the volume
between the components that will be filled with solid elements.” (Col. 8, ll.
44-50.)
1b. Woltman discloses:
The sub-models and the interaction defined by the interaction
model are then combined to create a virtual use model
simulating the use of the virtual product sub-model by the
virtual wearer sub-model. The use model determines the
forces, deformations and stresses causes by movement and
interaction between the virtual wearer sub-model and the virtual
product sub-model using numerical method analysis.
(Abstract.)

Specification
2a. The Specification discloses that “deformable volume” is defined
as a volume in which, when the simulation is performed, physical behavior,
e.g., stress, deformation and motion, are computed. (Spec., 6:12-14.)
2b. The Specification discloses that “prescribed motion volume” is
defined as a volume in which the deformations and motions are dictated by
input to the simulation, and are not computational outputs of the simulation.
The prescribed motion volume is used to ensure realistic garment fit and
positioning, but otherwise can have little impact on the physics-based
analysis of body fit and comfort for the garment under evaluation. (Spec.,
6:14-19.)
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III. PRINCIPLES OF LAW
35 U.S.C. § 101
“‘[F]unctional descriptive material’ consists of data structures and
computer programs which impart functionality when employed as a
computer component.” MANUAL OF PATENT EXAMINING
PROCEDURE § 2106.01 (rev. 6, Sept. 2007)(“MPEP”). Functional and
non-functional descriptive material, however, are both nonstatutory when
claimed as descriptive material per se. Id.; see also In re Warmerdam, 33
F.3d 1354, 1360 (Fed. Cir. 1994).
Whether a method appropriately includes particular machines to
qualify as a section 101 process may not always be a straightforward
inquiry. As Comiskey recognized, “the mere use of the machine to collect
data necessary for application of the mental process may not make the claim
patentable subject matter.” In re Comiskey, 499 F.3d 1365, 1380 (Fed. Cir.
2007)(citing In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989)). In other
words, nominal or token recitations of structure in a method claim should
not convert an otherwise ineligible claim into an eligible one. For the same
reason, claims reciting incidental physical transformations also may not pass
muster under section 101. To permit such a practice would exalt form over
substance.
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).
IV. ANALYSIS
Grouping of Claims
In the Appeal Brief,
Regarding the rejection under 35 U.S.C. §101, Appellants argue
claims 1-12 as a group (App. Br. 3-4). For claims 2-12, Appellants repeat
the same argument made for claim 1. We will, therefore, treat claims 2-12
as standing or falling with claim 1.
Regarding the rejections under 35 U.S.C. §§ 102/103, Appellants
essentially argue claims 1-23 as a group (App. Br. 4-6). For claims 2-23,
Appellants repeat the same argument made for claim 1. We will, therefore,
treat claims 2-23 as standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

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Non-Statutory Subject Matter Rejection
Claims 1-12
Appellants contend that “Claim 1 recites that the virtual model is ‘[i]n
a computer system,’ thereby providing the virtual model as being on some
computer-readable medium in a computer system, as that is the manner in
which functional descriptive material is stored or placed in a computer
system.” (App. Br. 3.)
The Examiner found that “[i]ncluding the phrase ‘In a computer
system’ does not overcome the fact that what is actually claimed is a virtual
model. The virtual model does not describe any tangible structure that is a
part of the claimed ‘computer system’, it describes functional descriptive
material of what the model (data structure) contains.” (Ans. 17-18.)

Issue: Have Appellants shown that the Examiner erred in finding that
claim 1 does not describe any tangible structure?

In essence, the Examiner found that having a model “in a computer
system” does not in itself necessarily provide for a data structure being
recorded on a computer-readable medium (Ans. 18). We agree.
In other words, we find that merely including the phrase “in a
computer system” does not overcome the fact that what is actually being
claimed is a virtual model, e.g., a data structure per se. There is no
indication in claim 1 that the data structure is recorded on a computer
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readable medium or that the model imparts functionality to any particular
computer component. At most the phrase “in a computer system” signifies a
nominal recitation of structure. However, nominal or token recitations of
structure in a claim do not convert an otherwise ineligible claim into an
eligible claim.
As such, Appellants have not shown that the Examiner erred in
rejecting representative claim 1 under 35 U.S.C. § 101 because the data
structure is not recorded on a computer readable medium and fails to impart
functionality to a computer component.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of nonstatutory subject matter for representative claim 1.
Therefore, we affirm the Examiner’s § 101 rejection of independent claim 1
and of claims 2-12, which fall therewith.

The Anticipation Rejection
Claims 1-15
We next consider the Examiner’s rejection of the claims under
35 U.S.C. § 102(e) as being anticipated by Woltman.

Appellants contend that Woltman “does not teach three volumes, two
of which constitute the human body.” (App. Br. 4.) Appellants further
contend that “the virtual product sub-model and the environment sub-model
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cannot be the prescribed motion volume that is part of the body, as claimed.”
(App. Br. 5.)
The Examiner found that “Figure 4 of Woltman is the deformable
volume as claimed and Figure 5 of Woltman is the prescribed motion
volume as claimed, both are volumes representing a portion of the body.”
(Ans. 19.)

Issue: Have Appellants shown that the Examiner erred in finding that
Woltman discloses at least two computer-generated volumes, one being a
deformable volume and one being a prescribed motion volume?

Although Appellants contend that the portion cited supra in the
Examiner’s answer was not cited in the Final Office Action (see Reply Br.
1), Appellants had an opportunity to rebut such findings in the Reply Brief,
but failed to do so. This failure constitutes a waiver. Therefore, we endorse
and adopt the Examiner’s findings in the Answer.
Specifically, the Examiner has shown and we agree that Woltman
discloses at least two volumes representing the body, i.e., a volume mesh
representing the torso and a volume mesh representing internal components
(FF 1a), which are consistent with the claimed deformable volume and a
prescribed motion volume. For example, Appellants’ Specification defines
“deformable volume” as a volume in which physical behavior is computed
(FF 2a), and “prescribed motion volume” is defined as a volume in which
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deformations and motions are dictated by input (FF 2b). Similarly,
Woltman’s models considers the deformations and stresses caused by
movement and interaction between the wearer and the product (FF 1b).
Appellants have provided no evidence or convincing argument to
rebut the Examiner’s findings pertaining thereto. Thus, we adopt the
Examiner’s findings and therefore sustain the rejection of claims 1-15 under
35 U.S.C. § 102(e).

New Arguments in Reply Brief
We find that the Reply Brief attempts to present arguments for the
first time regarding the claimed “interfacial surface.” However, this
situation causes us to ponder the question of whether arguments that could
have been presented in the principal Brief on Appeal, but were not, may be
presented in the Reply Brief in the absence of a showing of good cause. We
conclude that the regulations set out in 37 C.F.R. § 41, Practice Before the
Board of Patent Appeals and Interferences, do not require the Board to
consider such belated arguments.
Appellants raised new arguments against the rejection in the Reply
Brief (Reply Br. 2), yet, did not explain what “good cause” there might be to
consider these new arguments regarding the “interfacial surface.” On this
regard, Appellants’ new arguments are deemed belated.
The purpose of the principal Brief on Appeal is to show that the
Examiner erred in rejecting the claims. The formal requirements of the
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Appeal Brief are set out in Board Rule 372, which, inter alia, sets the formal
requirements for the nature of the argument:
Argument. The contentions of appellant with respect to
each ground of rejection presented for review in paragraph
(c)(1)(vi) of this section, and the basis therefore, with citations
of the statutes, regulations, authorities, and parts of the record
relied on. Any arguments or authorities not included in the
brief or a reply brief filed pursuant to § 41.41 [providing for a
Reply Brief] will be refused consideration by the Board, unless
good cause is shown (emphasis added).
37 C.F.R. § 41.37(c)(1)(vii) (2007). 3 This section requires Appellants to put
forward a complete argument. Any bases for asserting error, whether factual
or legal, which are not raised in the principal Brief are waived.
Giving cognizance to belated arguments in a Reply Brief would vitiate
the force of the requirement in Board Rule § 41.37(c)(1)(vii) that “[a]ny
arguments or authorities not included in the brief . . . will be refused
consideration by the Board, unless good cause is shown.” The reference in
that section to the “reply brief filed pursuant to § 41.41” does not create a
right for the Appellant to raise an argument in the Reply Brief that could
have been raised in the principal Brief but was not. Rather, that reference
merely puts Appellants on notice that arguments that could be made in the
Reply Brief, but are not, are waived.

2 “In proceedings before the Board, a party may cite ‘§ 41.x’ as ‘Board
Rule x’.” 69 Fed. Reg. 49960, 49961 (Aug. 12, 2004) (Notice of Final Rule
Making).
3 See also 69 Fed. Reg. at 50010.
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In any event, the Appellants can have a full and fair opportunity to
raise additional issues and to provide additional evidence by way of refiling
the application under an appropriate provision of 37 C.F.R. § 1.53, or by
seeking continued prosecution under § 1.114. It is in no way unfair to
require Applicants for patents, including Appellants to the Board, to present
their best arguments in a timely fashion. Belated arguments, if addressed,
impose costs on the Agency (specifically on the Examiner, the Technical
Center Directors, and the Board), which in turn impose costs on the public
(most directly, on other Applicants and Appellants, who must wait longer for
consideration of their applications and appeals; and indirectly, on the general
public, which must wait longer for the benefits provided by a healthy and
vigorous patent system). Properly interpreted, the Rules do not require the
Board to take up a belated argument that has not been addressed by the
Examiner, absent a showing of good cause.
Thus, because we shall not consider such belated arguments,
Appellants have not persuaded us of error in the Examiner’s conclusion of
anticipation for representative claim 1 under Woltman. Therefore, we affirm
the Examiner’s § 102 rejection of representative claim 1 and of claims 2-15,
which fall therewith.

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The Obviousness Rejection
Claims 16-23
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).
Here, we find that Appellants essentially rely upon the same
arguments presented supra regarding the 102(e) rejection, which we have
found unpersuasive.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness for independent claim 16. Therefore, we affirm
the Examiner’s § 103 rejection of independent claim 16 and of claims 17-23,
which fall therewith.

V. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-23.
Thus, claims 1-23 are not patentable.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-23.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

rwk

THE PROCTER & GAMBLE COMPANY
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