Ex Parte Clay et alDownload PDFPatent Trial and Appeal BoardSep 22, 201510956902 (P.T.A.B. Sep. 22, 2015) Copy Citation 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. 10/956,902 10/01/2004 Freeman Clay 131715.00003 7249 112794 7590 09/23/2015 Jackson Walker (Trimble) 901 Main Street Suite 6000 Dallas, TX 75202 EXAMINER FERNANDEZ RIVAS, OMAR F ART UNIT PAPER NUMBER 2128 MAIL DATE DELIVERY MODE 09/23/2015 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 FREEMAN CLAY and OLLI NUMMELIN ____________ Appeal 2011-001322 Application 10/956,902 Technology Center 2100 ____________ Before THU A. DANG, JAMES R. HUGHES, and KALYAN K. DESHPANDE, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-001322 Application 10/956,902 2 STATEMENT OF THE CASE Pursuant to MPEP § 1214.04, the Examiner filed a Request for Rehearing1 alleging a misapprehension or oversight by the Board in a Decision on Appeal mailed June 28, 2013. In that Decision, the Board reversed the Examiner’s rejection of claims 1–7 and 9–21. Appellants filed a Response to the Examiner’s Request for Rehearing dated June 29, 2015. Appellants’ Invention Appellants’ invention pertains to the field of building design and construction, and more particularly to a system and method for designing building structures that allows scheduling and estimating to be generated from the building design model instead of requiring such steps to be performed independently. (Spec. ¶ 1, 4–7; Abstract.) Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A system for designing, estimating and scheduling building construction, comprising: a three dimensional design system that generates three dimensional design data using one or more elements in a spatial tree structure; one or more recipes associated with each element, each recipe having one or more associated method components, each method component having one or more associated resource components; 1 We refer to the Examiner’s Request for Rehearing (“Req. Reh’g”) mailed April 29, 2015, as well as the Board’s Decision on Appeal (“Dec.”) mailed June 28, 2013. We also refer to Appellants’ Response to the Request for Rehearing (“Response”) dated June 29, 2015; Specification (“Spec.”) filed October 1, 2004; and Appeal Brief (“App. Br.”) filed May 7, 2008. Appeal 2011-001322 Application 10/956,902 3 a cost estimate system generating cost estimate data using the recipes; and a schedule system generating schedule data using the recipes. ANALYSIS In a Request for Rehearing received April 29, 2015, the Examiner contends that “[c]laim 1 in the instant application is identical to claim 1 in [US Patent Application 11/235,344 (the “’344 application”)], except for an additional limitation in the ’344 application” (Req. Reh’g 1). The Examiner further contends that: Independent claims 11 and 21 in the instant application are substantially similar to claim 1 in the ’344 application. The claims in the ’344 application were rejected using the same prior art, applied in the same manner as in the instant application. The Board panel issued a decision in the ʼ344 application affirming the Examiner’s position, and on appeal, the Federal Circuit affirmed the Board’s decision. (Req. Reh’g 1–2.) In particular, the Examiner contends that the Decision directly contradicts the Board’s decision on appeal of the ’344 application, which was affirmed by the Court of Appeals for the Federal Circuit. The Examiner requests that we reconsider our Decision and defer to the Federal Circuit’s affirmance. The Examiner further asserts that the Federal Circuit’s affirmance binds Appellants from relitigating “substantially the same issues before the Board in this application” under the doctrine of res judicata. In a Response to the Request for Rehearing received June 29, 2015, Appellants contend that the Examiner’s Request for Rehearing is untimely and does not “state with particularity the points believed to have been misapprehended or overlooked by the Board” (Response 2). (See Response 1–2.) Appellants further contend that the Examiner has only presented Appeal 2011-001322 Application 10/956,902 4 arguments with respect to claim 1 of the instant application and independent claims 11 and 21 of the instant application “are materially different from the claims in the ’344 application” (Response 2) and res judicata should not apply (Response 3). We have carefully reviewed our Decision in light of the Examiner’s allegations of error and Appellants’ arguments in their Response. We find the Examiner’s contentions persuasive that we misapprehended the procedural significance of the ’344 Decision in our original Decision as follows. We agree with the Examiner that claim 1 of the instant application (set forth above) is nearly identical to claim 1 of the ’344 application. The only difference between the claims is the addition of the limitation “an estimate system applying one or more variances to one or more of the recipes, methods or resources” (’344 Application Claim 1) in claim 1 of the ’344 application. This limitation was not a substantial issue in the Board’s decision. (See Ex Parte Freeman Clay and Marcel Broekmaat, Appeal No. 2009-011632 (US 11/235,344), mailed July 13, 2011 (’344 Decision).) The Federal Circuit affirmed the Board’s Decision on Appeal of the ’344 application. (See In re Clay Freeman and Marcel Broekmaat, Appeal No. 2012–1158, 489, Fed. Appx. 466 (Fed. Cir. Jan. 15, 2013).) As pointed out by Appellants (Response 3–4) the Federal Circuit affirmed the Board’s decision under Fed. R. App. P. Rule 36, without opinion or additional fact finding. Accordingly, the factual conclusions in the Board’s Decision on Appeal, which was affirmed by the Federal Circuit, are the “law of the case,” and are entitled to an issue preclusive effect during further prosecution. See 37 CFR 1.197 and MPEP 706.07(h). Appeal 2011-001322 Application 10/956,902 5 On further review and reconsideration of our original Decision, we find that the Board’s decision on appeal of the ’344 application and the subsequent affirmance of the facts therein by Federal Circuit’s decision are entitled to issue preclusive effect in the present application. That is, because the’344 application decision predates our original Decision and the facts at issue are the same (same claim language and allegedly anticipating reference) and not materially different, the prior claim interpretation and fact finding in the’344 application decision applies (preclusively) in the instant application under the principles of collateral estopple (issue preclusion). Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1314–19 (Fed. Cir. 2015). In the present appeal, the Board’s claim interpretation for claim 1 of the ’344 application and finding of anticipation by Froese (see ’344 Decision 6–8, 11–14) precludes a different claim construction and finding in the instant application. Thus, we now affirm the Examiner’s anticipation rejection of claim 1 by Froese for the reasons stated in the ’344 Decision. (’344 Decision 6–8, 11–14.) We find Appellants’ contrary arguments unpersuasive. With respect to Appellants’ untimeliness contention, we agree with Appellants that the delay in the prosecution of the present application is significant, but that alone is not a persuasive reason for foregoing reconsideration of our Decision. MPEP § 1214.04 does not set a fixed time for requesting reconsideration. With respect to Appellants’ contention that the Examiner does not state the points misapprehended by the Board with particularity, we disagree with Appellants and find the Examiner has stated with particularity the issues misapprehended by the Board. Appeal 2011-001322 Application 10/956,902 6 We also find that independent claims 11 and 21include limitations of commensurate scope to claim 1 and do not differ materially in scope from claim 1 of the instant application or the independent claims in the ’344 application (claims 9 and 14, respectively). Accordingly, we now affirm the Examiner’s anticipation rejection of independent claims 11 and 21 for the same reasons as claim 1 (supra) and for the reasons discussed in the ’344 Decision (’344 Decision 15–17). Dependent claims 2–7, 9, 10, and 12–20 depend on claims 1 and 11. We now affirm the Examiner’s anticipation rejection of dependent claims 2–7, 9, 10, and 12–20 for the same reasons as claim 1 (supra). We agree with Appellants (and disagree with the Examiner) that res judicata does not apply in the present situation. There are a number or distinct rejections in the instant appeal that were not made in the ’344 application. This is not the case where Appellant has attempted to relitigate an identical cause of action. See Brain Life, LLC v. Elektra, Inc., 746 F.3d 1045, 1053 (Fed. Cir. 2014). Although the facts regarding the § 102 rejection (by Froese) are the same between the instant appeal and the ’344 Decision, there are several material differences in the appeals. The Examiner does not request reconsideration of our reversal of the other grounds of rejection on appeal in our original Decision. Accordingly, we decline to make any substantive change to our Decision with respect to the Broughton anticipation rejection (claims 1–7 and 9–21 rejected under § 102(b) as being anticipated by Broughton), the Schwegler anticipation rejection (claims 1–4, 6, 9–14, 16, and 18–21 rejected under § 102(e) as being anticipated by Schwegler), or the indefiniteness rejection (claim 21 under 35 U.S.C. § 112, second paragraph). Appeal 2011-001322 Application 10/956,902 7 CONCLUSION In view of the foregoing discussion, we grant the Examiner’s request for rehearing and affirm the rejection of claims 1–7 and 9–21 under 35 U.S.C. §102(b) as being anticipated by Froese. We decline to modify our original Decision with respect to the other grounds of rejection. REQUEST FOR REHEARING GRANTED dw Copy with citationCopy as parenthetical citation