Ex Parte Clay et al

Patent Trials and Appeals Board

Jun 28, 2013

10956902 - (D) (P.T.A.B. Jun. 28, 2013)

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

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Application 10/956,902

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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.
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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
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Application 10/956,902

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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.)
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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).
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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
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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:
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["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)).

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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.
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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

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