Ex Parte Clay et alDownload PDFPatent Trial and Appeal BoardJun 28, 201310956902 (P.T.A.B. Jun. 28, 2013) 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 06/28/2013 Jackson Walker (Trimble) 901 Main Street Suite 6000 Dallas, TX 75202 EXAMINER SHAH, KAMINI S ART UNIT PAPER NUMBER 2123 MAIL DATE DELIVERY MODE 06/28/2013 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 GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001322 Application 10/956,902 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-7 and 9-21. Claim 8 was canceled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 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: ¶ [0001].)1 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; a cost estimate system generating cost estimate data using the recipes; and a schedule system generating schedule data using the recipes. 1 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”) filed September 21, 2010; and Appeal Brief (“App. Br.”) filed May 7, 2008. We also refer to the Examiner’s Answer (“Ans.”) mailed July 21, 2010. Appeal 2011-001322 Application 10/956,902 3 Rejections on Appeal 1. The Examiner provisionally rejects claims 1, 11, and 21 on the grounds of nonstatutory obviousness type double patenting as being unpatentable over claims 1, 9, and 14 of copending Application No. 11/235,344 in view of Ferriter (U.S. Patent No. 5,109,337, issued Apr. 28, 1992). 2. The Examiner rejects claims 1-7 and 9-21 under 35 U.S.C. §102(b) as being anticipated by Froese (Froese et al., Industry Foundation Classes for Project Management – A Trial Implementation 17-36 ITcon (Vol. 4, 1999). 3. The Examiner rejects claims 1-7 and 9-21 under 35 U.S.C. § 102(b) as being anticipated by Broughton (U.S. Patent Pub. No. 2003/0050871 A1, published Mar. 13, 2003.) 4. The Examiner rejects claims 1-4, 6, 9-14, 16, and 18-21 under 35 U.S.C. § 102(e) as being anticipated by Schwegler (U.S. Patent No. 7,042,468 B2, issued May 9, 2006 (filed May 2, 2002)). 5. The Examiner rejects claim 21 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. ISSUES 1. Did the Examiner err by provisionally rejecting claims 1, 11, and 21 under the doctrine of nonstatutory obviousness-type double patenting? 2. Under § 102, did the Examiner err in finding that Froese would have disclosed or described “one or more recipes associated with each Appeal 2011-001322 Application 10/956,902 4 element, each recipe having one or more associated method components, each method component having one or more associated resource components,” within the meaning of claim 1 and commensurate limitations in independent claims 11 and 21? 3. Under § 102, did the Examiner err in finding that Broughton would have disclosed or described “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,” within the meaning of claim 1 and commensurate limitations in independent claims 11 and 21? 4. Under § 102, did the Examiner err in finding that Schwegler would have disclosed or described “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,” within the meaning of claim 1 and commensurate limitations in independent claims 11 and 21? 5. Under 112, second paragraph, did the Examiner err in determining that claim 21 is indefinite? ANALYSIS Double Patenting Appellants contend that the Examiner’s non-statutory obviousness- type double patenting rejection is improper. (App. Br. 9.) “Applicants know of no legitimate basis for asserting a double patenting rejection where one of the references is not commonly owned or assigned or where there is no common inventor.” (Id.) Appeal 2011-001322 Application 10/956,902 5 We observe that co-pending Patent Application 11/235,344 was filed after the present application2, and is still pending.3 Since, the ‘344 Application is still pending, the non-statutory double patenting rejection is not ripe for a decision by the PTAB.4 Therefore, we do not reach the Examiner’s provisional rejection of claims 1, 11, and 21. Froese Appellants contend that Froese fails to disclose or describe “one or more associated method components, each method component having one or more associated resource components,” as recited in representative claim 1. (App. Br. 10.) We agree for the essentially the same reasons asserted by Appellants. (Id.) The Examiner mapped the claimed “elements” as the “walls” described in Froese, the claimed “recipes” as Froese’s “test case scenarios” (emphasis omitted), and the claimed “method components” (the “method components” associated with “one or more recipes” associated with each element) as the three activities for each wall: “Install Metal Studs, Hang Drywall and Apply Taping” (emphasis omitted). (Ans. 24.) However, based on the Examiner’s construction, the “recipe” is the same as the “method component.” Claim 1 recites “. . . each recipe having one or more 2 The present application was filed October 1, 2004. 3 U.S. Patent Application No. 11/235,344 (‘344) was filed on Sept. 26, 2005 and was the subject of Appeal 2009-011632. The CAFC affirmed the USPTO on Jan. 15, 2013. 4 In the instant appeal no other rejections remain due to our reversal (infra) of the other grounds of rejection, and the present application predates the ‘344 application. Accordingly, this issue is not ripe for decision by the Board. Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). Appeal 2011-001322 Application 10/956,902 6 associated method components, each method component having one or more associated resource components . . . .” (claim 1.) Therefore, the Examiner has not shown that Froese discloses or describes the present limitation, as claimed. Independent claims 11 and 21 recite commensurate limitations. Based on this record, we conclude that the Examiner erred in rejecting independent claims 1, 11, and 21. Accordingly, we reverse the Examiner’s § 102 rejection of claims 1-7 and 9-21 over Froese. Broughton Appellants contend that Broughton fails to disclose or describe “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,” as recited in independent claims 1, 11, and 21. (App. Br. 20-21.) We agree for essentially the same reasons argued by Appellants. (Id.) The Examiner relied on paragraph [0077] of Broughton, to disclose or describe this limitation. (Ans. 13, 32.) The Examiner appears to map the “intelligent objects that are associated with tag data” to the claimed “recipes associated with each element,” “labor information” to the claimed “method component,” and “material information” to the claimed “resource component.” (Id.) We find that Broughton discloses or describes intelligent objects and a tag data. However, we find that the Examiner has not established under § 102, the claimed “method component” associated with each recipe and the claimed “resource component” associated with the method component as required by the claim language. Moreover, it is not clear which portion of Appeal 2011-001322 Application 10/956,902 7 Broughton is mapped to the claimed “element.” Accordingly, we find that the Examiner has not shown that Broughton discloses the disputed limitations of claim 1 or the commensurate limitations of claims 11 and 21. Based on this record, we conclude that the Examiner erred in rejecting independent claims 1, 11, and 21 as being anticipated by Broughton. Accordingly, we reverse the Examiner’s rejection of claims 1-7 and 9-21 as being anticipated by Broughton. Schwegler Appellants contend that Schwegler fails to disclose or describe “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,” as recited in independent claim 1. (App. Br. 24-25.) We agree with Appellants for essentially the same reasons argued by Appellants. (Id.) Independent claims 11 and 21 recite commensurate limitations. The Examiner relied on column 4, lines 4-16 of Schwegler to disclose or suggest this limitation. (Ans. 16, 38.) We agree with Appellants that the Examiner’s mapping of the cited portion of Schwegler does not disclose or describe the disputed limitation. (App. Br. 25.) For example, the Examiner appears to map the claimed “associated method components” to the “View defined activities (168)” (emphasis omitted) described in Schwegler. (Ans. 38.) However, similar to the discussion of Broughton supra, the Examiner has not established under § 102, what portion of Schwegler is mapped to the claimed “resource component” that is associated with the method component: Appeal 2011-001322 Application 10/956,902 8 ["IN such a 4D model, the three dimensional model is segmented into components, see FIG. 1, that can be associated with construction activities that occur at a certain discrete date, or occur over a discrete interval of time. " (column 4, lines 4- 16)]. (Ans. 16 (emphasis omitted).) Thus, we find that the Examiner has not shown that Schwegler discloses the disputed limitations of claim 1 or the commensurate limitations of claims 11 and 21. Based on this record, we conclude that the Examiner erred in rejecting independent claims 1, 11, and 21 as being anticipated by Schwegler. Accordingly, we reverse the Examiner’s anticipation rejection of claims 1-4, 6, 9-14, 16, and 18-21. Claim 21 - Indefiniteness under § 112, Second Paragraph The Examiner rejects claim 21 under 112, second paragraph as being indefinite. (Ans. 19.) The Examiner asserts that claim 21 is written in means-plus-function format. Therefore, the present written description must include a corresponding structure that includes an algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333.5 (Ans. 19-20.) The Examiner determined that Appellants’ Fig. 4 and Specification (Spec. 20-23) do not disclose sufficient corresponding structure, material, or 5 “[I]n a means-plus-function claim ‘in which the disclosed structure is a computer . . . programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.’” Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed.Cir.1999)). Appeal 2011-001322 Application 10/956,902 9 acts for performing the claimed function. (Ans. 20-21.) We disagree for the reasons discussed infra. Appellants’ Fig. 4 was cited as the algorithmic structure in support of means-plus-function claim 21. Under § 112, algorithms only need to disclose adequate structure to render the bounds of the claim understandable to one of ordinary skill in the art. See, e.g., Med. Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1214 (Fed. Cir.2003). The issue, then, is whether Fig. 4 and Specification are sufficient to demarcate the bounds of the invention, not whether one of ordinary skill in the art may practice the invention. Aristocrat, 521 F.3d at 1337. The Examiner argues that Fig. 4 and the specification merely lay out steps for designing, estimating, and scheduling building construction, in functional terms, and do not provide adequate details as to how the functions are accomplished. (Ans. 21.) We disagree because such details are not required to indicate the metes and bounds of claim 21. We find that Fig. 4 and cited portion of the Specification provide adequate structure to demarcate the bounds of claim 21. Based on this record, we conclude that the Examiner erred in determining that claim 21 was indefinite under 35 U.S.C. § 112, second paragraph. Accordingly, we reverse the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, second paragraph. CONCLUSIONS OF LAW The Examiner’s provisional non-statutory double patenting rejection is not ripe for decision. Appeal 2011-001322 Application 10/956,902 10 Appellants have shown that the Examiner erred in rejecting claims 1-7 and 9-21 under 35 U.S.C. § 102(b) as being anticipated by Froese. Appellants have shown that the Examiner erred in rejecting claims 1-7 and 9-21 under 35 U.S.C. § 102(b) as being anticipated by Broughton. Appellants have shown that the Examiner erred in rejecting claims 1- 4, 6, 9-14, 16, and 18-21 under 35 U.S.C. § 102(e) as being anticipated by Schwegler. DECISION We do not reach the Examiner’s provisional rejection of claims 1, 11, and 21 and double-patenting. We reverse the Examiner’s rejections of claims 1-7 and 9-21 under 35 U.S.C. § 102. We reverse the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, second paragraph. REVERSED Vsh Copy with citationCopy as parenthetical citation