Ex Parte Anast et alDownload PDFBoard of Patent Appeals and InterferencesFeb 22, 201011071916 (B.P.A.I. Feb. 22, 2010) Copy Citation 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. Appeal 2009-008094 Application 11/071,916 2 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. Appeal 2009-008094 Application 11/071,916 3 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 Appeal 2009-008094 Application 11/071,916 4 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.) Appeal 2009-008094 Application 11/071,916 5 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 Appeal 2009-008094 Application 11/071,916 6 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). Appeal 2009-008094 Application 11/071,916 7 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 Appeal 2009-008094 Application 11/071,916 8 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 Appeal 2009-008094 Application 11/071,916 9 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 Appeal 2009-008094 Application 11/071,916 10 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 Appeal 2009-008094 Application 11/071,916 11 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. Appeal 2009-008094 Application 11/071,916 12 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. Appeal 2009-008094 Application 11/071,916 13 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. Appeal 2009-008094 Application 11/071,916 14 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 Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 Copy with citationCopy as parenthetical citation