Ex Parte Baardse et al

Patent Trial and Appeal Board

Aug 19, 2014

12052610 (P.T.A.B. Aug. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/052,610 03/20/2008 Dick Baardse 2008P05406 US 2723
45113 7590 08/20/2014
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
MAIL DATE DELIVERY MODE
08/20/2014 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 DICK BAARDSE and MANOJ RADHAKRISHNAN
____________

Appeal 2012-005074
Application 12/052,610
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Siemens Product Lifecycle Management Software Inc.
as the real party in interest. (App. Br. 4.)
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STATEMENT OF THE CASE
Appellants’ claimed invention relates to software applications, and
more specifically, to a “fully editable operation in the context of a constraint
system.” (Spec. ¶ 2.)
Claim 1, which is illustrative of the subject matter on appeal, reads as
follows:
1. A computer-implemented method for editing offsets,
comprising:
connecting one or more input curves to a constraint
system by constraints;
offsetting output curves from said input curves by an
operation; and
creating a plurality of constraints among said input
curves and said output curves;
whereby editing said operation transforms said input
curves and said output curves in a bidirectional manner.

Claims 1–15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Perry (US 2002/0130888 A1; published Sept. 19, 2002).
(Ans. 4.)

ANALYSIS
Claims 1, 8, and 15
Appellants contend that the portions of Perry cited by the Examiner
“do[] not discuss input curves, and do[] not teach connecting one or more
input curves to a constraint system,” as recited in independent claims 1, 8,
and 15 (App. Br. 17, 36–37, 50). We disagree. During examination,
“claims . . . are to be given their broadest reasonable interpretation consistent
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with the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). Here, neither the claims nor the Specification clearly
define or limit the broad terms “curves,” “constraints,” or “constraint
system” as those terms are used in the claims. The Examiner finds Perry
teaches that constraints may be imposed on a single model or a relationship
between two or more models and that “model 200 . . . is represented by a
curve” (Ans. 6–7). Although Appellants disagree and argue that “Perry
generally discusses constrained surfaces, and never describes any constraints
between curves, input curves, or connecting input curves to a constraint
system” (App. Br. 17–18, 37, 51; Reply Br. 13), they also admit that Perry’s
“model 200” has curves, as well as surfaces and points (App. Br. 17, 37, 51;
Reply Br. 13). Indeed, it is apparent from Figure 2 of Perry that surface 204
of model 200 and “offset” surface 220 both define curves, as that term is
reasonably construed. Moreover, either surface 204 or offset surface 220
can reasonably be regarded as an “input curve,” with the other being an
“output curve,” as those terms are broadly used in the Specification and
claims. Accordingly, we find no error in the Examiner’s finding that Perry
thus discloses connecting “input curves” to a “constraint system” as recited
in each of the independent claims (see Ans. 4, 5).
Appellants assert that paragraph 65 of Perry, cited by the Examiner as
disclosing “offsetting output curves from said input curves by an operation,”
as recited in claims 1 and 8 (see Ans. 4, 5, 7), and a “data processing system
configured to . . . offset output curves from said input curves by an
operation,” as recited in claim 15 (see Ans. 5–6), “certainly contains the
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word ‘offset’, but appears to bear little other relation to the claim language
of offsetting output curves from said input curves by an operation” (App. Br.
21, 38, 52). Appellants further argue “[t]here are no output curves and no
input curves as claimed. There is no operation that offsets output curves
from input curves as claimed. And, of course, there are no ‘said input
curves’ that are also connected to a constraint system by constraints as
claimed.” (Id.; see also Reply Br. 15.) We again disagree. Paragraph 65 of
Perry teaches editing a 3D shape (i.e., an “output curve,” in the parlance of
the claims) with an input device—also referred to in paragraph 65 as a
“tool”—such as a mouse, using a “surface following” technique. Paragraph
65 explains that “[s]urface following is accomplished by iteratively moving
the tool in the direction of the gradient of the distance field of the object.”
(Perry ¶ 65). Paragraph 65 further explains that “[t]he distance moved is an
amount proportional to the distance between the tool and the surface, or
from some ‘offset’ surface 220,” providing additional support for the
Examiner’s finding that Perry discloses “offsetting output curves from . . .
input curves” (see, e.g., Ans. 7). Additionally, neither the claims nor the
Specification place any clear limits on the scope of the term “operation,” and
we find that a reasonable construction of that term would encompass Perry’s
disclosed use of a tool in the surface-following technique of paragraph 65.
Accordingly, we are not persuaded of error in the Examiner’s finding that
Perry discloses “offsetting output curves from said input curves by an
operation” (Ans. 4, 6, 7).
The Examiner finds that paragraphs 75 and 80 of Perry disclose
“creating a plurality of constraints among said input curves and said output
curves,” as recited in claims 1 and 8 (see Ans. 4, 5, 8). The Examiner also
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finds that Perry discloses a data processing system configured to “create a
plurality of constraints among said input curves and said output curves,” as
recited in claim 15. (Ans. 6.)
Appellants contend that, “[w]hile . . . paragraph [80] discusses
constraints, it doesn’t discuss constraints between output curves that are
offset from input curves by an operation, as claimed, particularly where
those input curves are also connected to a constraint system by constraints,
as claimed” (App. Br. 21, 38; Reply Br. 16). We are again not persuaded of
error. Paragraph 80 teaches that “a constraint is either imposed on a single
model, or represents a desired relationship among two or more models.” For
the reasons provided in our discussion of the “connecting” and “offsetting”
claim limitations, supra, we concur in the Examiner’s findings that Perry’s
“model 200 . . . is represented by a curve” (Ans. 6–7) and that Perry
discloses “offsetting output curves from said input curves by an operation”
(Ans. 7), as those claim terms are reasonably construed. Moreover,
Paragraph 75 of Perry teaches that adaptively sampled distance fields
(ADFs) can be used to represent the distance from the models’ surface to a
point in space, and that constraints can thus be created between the offset
surface and the original surface (i.e., “among said input curves and said
output curves,” in the parlance of claim 15):
[T]he system 100 can provide an enhanced modeling interface
because the ADFs 10 represent the distance from the models’
surface to any point in space. The tool can be constrained to
move along the offset surface 220. Thus, the system can force
the tool to remove or add material at a specified depth (internal
offset surface), or height (external offset surface) from the
original surface.

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(Perry ¶ 75.) Paragraph 82 of Perry, also cited in the Examiner’s discussion
of claim 1 (Ans. 4), teaches “constraints can be combined to form a complex
constraint system.” In view of Perry’s teachings, we are not persuaded of
error in the Examiner’s finding that Perry teaches creating a “plurality of
constraints among said input curves and said output curves” under the
required broadest reasonable interpretation analysis. Accordingly, we are
not persuaded of error in the Examiner’s finding that Perry discloses
“creating a plurality of constraints among said input curves and said output
curves” (see Ans. 4, 5, 8).
With respect to claim 15 in particular, Appellants further contend that
“[t]he Office Action refers to Perry’s paragraph 0074. . . . This passage
teaches, in its entirety: ‘[0074] Distance-Based Constraints’” (App. Br. 52).
Although Appellants are correct, it is readily apparent that the cited
“passage” is merely a heading for the text in paragraphs 75–86 of Perry, all
of which relates to “distance-based constraints.” And as discussed above,
the Examiner cites paragraph 75 in the discussion of the nearly identical
claim limitation in claim 1 (see Ans. 8). Accordingly, we are also not
persuaded of error in the Examiner’s finding that Perry discloses a data
processing system configured to “create a plurality of constraints among said
input curves and said output curves,” as recited in claim 15 (Ans. 6.)
Lastly, referring to the “whereby” clause at the end of claim 1 and an
identical clause at the end of claim 8, Appellants also allege that claims 1
and 8 “also require[] that editing the operation transforms the input curves
and the output curves in a bidirectional manner” and contend that the portion
of Perry cited by the Examiner as disclosing that limitation “bears little
relation to the claim language” (see App. Br. 21–22, 38–39). We again
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disagree, finding from a review of the claims and the Specification (see, e.g.,
Spec. ¶¶ 21–24) that the “whereby” clause in claims 1 and 8 simply
expresses the intended result of the recited “editing said operation.” As
such, that clause cannot serve as a basis for distinguishing the claims over
Perry. See Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1381
(Fed. Cir. 2003) (“A whereby clause in a method claim is not given weight
when it simply expresses the intended result of a process step positively
recited.”); Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d
1165, 1172 (Fed. Cir. 1993) (“A ‘whereby’ clause that merely states the
result of the limitations in the claim adds nothing to the patentability or
substance of the claim.”). Further, we note that claims 1 and 8 do not
positively recite any “editing said operation” as being performed as a step or
act of the method, but is instead intended to be performed. We conclude that
“editing said operation” has no antecedent basis in claims 1 and 8.
Therefore, again a question arises as to how much patentable weight, if any,
should be accorded to “whereby editing said operation.”
Accordingly, we sustain the Examiner’s rejection of claims 1, 8, and
15 under 35 U.S.C. § 102(b).
Claims 2 and 9
Claims 2 and 9 depend from claims 1 and 8, respectively, and
identically recite “wherein said plurality of constraints can have a primary
constraint and a plurality of secondary constraints.” The Examiner cites
Figure 5 of Perry as disclosing that the “plurality of constraints can have a
primary constraint and a plurality of secondary constraints” (Ans. 4).
Although it is not clear to us that Figure 5 of Perry does in fact illustrate
primary and secondary constraints, we find that the use of the word “can” in
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claims 2 and 9 renders the inclusion of “a primary constraint and a plurality
of secondary constraints” optional. Accordingly, claims 2 and 9 do not
narrow the scope of claims 1 and 8, respectively, and are, therefore, not
independently patentable. See In re Johnston, 435 F.3d 1381, 1384 (Fed.
Cir. 2006) (“optional elements do not narrow the claim because they can
always be omitted”).
Accordingly, we sustain the Examiner’s rejection of claims 2 and 9
under 35 U.S.C. § 102(b) for the reasons already stated for claims 1 and 8,
supra.
Claims 3 and 10
Claims 3 and 10 depend from claims 1 and 8, respectively, and
identically recite “wherein said operation offsets said output curves by a
value.” The Examiner cites paragraph 75 of Perry as disclosing this
limitation (Ans. 5). Appellants contend that “[t]he final Office Action
appears to rely on the reference to a specified depth (internal offset surface),
or height (external offset surface) from the original surface. While this
describes an offset in a machine tool operation, it does not meet the claim
limitations. The Office Action’s reliance on this paragraph also requires that
the machine tool operation is the claimed ‘said operation.’” (App. Br. 28–
29, 42.)
We are not persuaded of error. As a preliminary matter, we find no
disclosure of “machine tools” in Perry. Although Perry’s Background of the
Invention section briefly mentions the traditional use of clay models by
animation artists (see, e.g., ¶¶ 3–4), the remainder of Perry—including the
cited paragraph 75—is directed to methods for editing graphics objects in
computerized modeling systems. Moreover, as explained in our discussion
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of claims 1 and 8, supra, Paragraph 75 of Perry teaches that adaptively
sampled distance fields (ADFs) can be used to represent the distance from
the models’ surface to a point in space, and that constraints can thus be
created between the offset surface and the original surface. Paragraph 75
additionally teaches “[t]he tool can be constrained to move along the offset
surface 220. Thus, the system can force the tool to remove or add material
at a specified depth (internal offset surface), or height (external offset
surface) from the original surface.” The claims and the Specification do not
define the term “value,” but both the “depth” of an internal offset surface
and the “height” of an external offset surface are “values” as that term is
reasonably construed. Therefore, we see no error in the Examiner’s finding
that Perry teaches that the “operation” recited in claims 1 and 8 “offsets said
output curves by a value,” as recited in claims 3 and 10.
Accordingly, we sustain the Examiner’s rejection of claims 3 and 10
under 35 U.S.C. § 102(b).
Claims 4 and 11
Claims 4 and 11 depend from claims 1 and 8, respectively, and
identically recite “wherein said constraints can be applied manually.” The
Examiner cites paragraph 85 of Perry as disclosing this limitation (Ans. 5).
Paragraph 85 teaches, among other things, that “[t]he model, tool, and
constraints are manipulated on a display device with an input device 503,
e.g., a mouse.” Neither the claims nor the Specification defines “applied
manually,” but we find that manipulation of constraints with an input device
such as a mouse would constitute manual manipulation under a reasonable
construction. Therefore, we are not persuaded of error in the Examiner’s
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finding that Perry teaches that “said constraints can be applied manually,” as
recited in claims 4 and 11.
Accordingly, we sustain the Examiner’s rejection of claims 4 and 11
under 35 U.S.C. § 102(b).

Claims 5 and 12
Claims 5 and 12 depend from claims 1 and 8, respectively, and
identically recite “wherein a user can modify parameters of said operation.”
The Examiner again cites paragraph 85 of Perry as disclosing this limitation
(Ans. 5). Appellants contend:
This paragraph teaches that an input device (and thereby,
by implication, a user) can manipulate the model, tool, and
constraints. None of these are parameters of ‘the operation’ as
claimed.
The parent claim requires that editing “said operation”
transforms said input curves and said output curves in a
bidirectional manner. The specification further describes that
the “bidirectional manner” means that “the input curves affect
the output curves and the output curves affect the input curves.”
See Specification, page 10, lines 22-24.
Nothing in Perry teaches that a user can modify
parameters of any operation that operation offsets output curves
from input curves and also transforms curves in a bidirectional
manner, as claimed.

(App. Br. 31–32, 45.) We are again not persuaded of error. Neither the
claims nor the Specification place any clear limits on the scope of the terms
“modify,” “parameters,” or “operation.” As explained in our discussion of
claims 1 and 8, supra, we find that a reasonable construction of the term
“operation” would encompass, for example, Perry’s disclosed use of a tool
in the surface-following technique of paragraph 65. We likewise find that a
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reasonable construction of “modify[ing] parameters of said operation”
would encompass the manipulation of a tool with an input device—by
implication, by a user—as Perry describes in paragraph 85. Therefore, we
see no error in the Examiner’s finding that Perry teaches that “a user can
modify parameters of said operation,” as recited in claims 5 and 12.
Accordingly, we sustain the Examiner’s rejection of claims 5 and 12
under 35 U.S.C. § 102(b).
Claims 6, 7, 13, and 14
Claims 6 and 13 depend from claims 1 and 8, respectively, and
identically recite “wherein said offsetting creates an offset constraint.”
Claims 7 and 14 depend from claims 6 and 13, respectively, and identically
recite “wherein an external operation on said curves interacts through said
offset constraint.” The Examiner cites paragraphs 75–77 of Perry as
disclosing the limitations of claims 6 and 13, and paragraph 75 as disclosing
the limitations of claims 7 and 14. Appellants argue that “[n]othing in any
of these paragraphs, or anything else in Perry, teaches that offsetting output
curves from the input curves by an operation creates an offset constraint, as
claimed” (App. Br. 34, 47) and “[f]urther, nothing in . . . paragraph [75] or
any other part of Perry further teaches that an external operation on the
curves interacts through that created offset constraint, as claimed” (App. Br.
35, 48). We are not persuaded of error. As discussed above, paragraph 75
of Perry teaches that “[t]he tool can be constrained to move along the offset
surface 220. Thus, the system can force the tool to remove or add material
at a specified depth (internal offset surface), or height (external offset
surface) from the original surface.” Neither the claims nor the Specification
provide any clear limits on the meaning of the phrases “offset constraint” or
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“external operation” in the context of the claims.2 Under our broadest
reasonable interpretation analysis, however, we find that the movement of
the tool in the context of paragraph 75 may reasonably be considered an
“external operation on said curves.” More particularly, because paragraph
75 teaches that the tool can be “constrained to move along the offset surface
220,” it may reasonably be concluded that such external operation “interacts
through [an] offset constraint” that has in turn been created by “said
offsetting.” In view of Specification’s sparse disclosure of these claim
elements, we are not persuaded in error in the Examiner’s findings.
Accordingly, we also sustain the Examiner’s rejection of claims 6, 7,
13, and 14 under 35 U.S.C. § 102(b).

2 Apart from “Summary” paragraphs 6 and 7, which merely copy the claim
language verbatim, the Specification contains only a single reference to
“external operations,” which reads as follows: “External operations on the
input curves 210 or output curves 220 interact through an offset constraint
305 with the objects generally shown in 310. The interaction means that the
fully editable operation 300 can be edited by not only the user but also other
operations, described in more detail below.” (Spec. ¶ 24.) Notably, the
quoted sentences are the last two sentences of the Specification before the
“Conclusion,” and there are, accordingly, no “other operations, described in
more detail below.”
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DECISION3
The rejection of claims 1–15 under 35 U.S.C. § 102(b) as being
anticipated by Perry is affirmed.
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).

AFFIRMED

cam

3 In the event of further prosecution, the Examiner should review the claims
for compliance with 35 U.S.C. § 101 in view of Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347 (2014), and “Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al.” (June 25, 2014) available at
http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf. The
Examiner should also consider whether any claims similar in form to claims
8–14 encompass non-statutory transitory media such as signals sent over
optical or electronic communication links. In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007). See also MPEP § 2106(I) (9th ed., Rev. 11 Mar.
2014) and Ex parte Mewherter, 107 USPQ2d 1857, 1859 (PTAB 2013).