Ex Parte Dayanand et al

Patent Trials and Appeals Board

Mar 25, 2014

11244005 - (D) (P.T.A.B. Mar. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SRIRAM DAYANAND, MICHAEL CAREY DAUM,
and CHRISTOPHER CHEUNG1
____________________

Appeal 2011-013557
Application 11/244,005
Technology Center 2600
____________________

Before JASON V. MORGAN, LARRY J. HUME, and
LINZY T. McCARTNEY, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-27. An oral hearing was held March 18, 2014. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Autodesk Inc. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to a workflow system for 3D model
creation. Abstract.
Exemplary Claims
Claims 1 and 21, reproduced below, are representative of the subject
matter on appeal (emphases added):
1. A process, comprising:
allowing a user to paint within a 3D space using a
computer creating a continuous definition of a hand drawn
shape; and
allowing the user to specify 3D model geometry in the 3D
space associated with the hand drawn shape, the 3D model
geometry directly specified by the user one of within and
between the hand drawn shape and another hand drawn shape in
the 3D space to thereby construct a 3D model.
21. A process, comprising:
allowing a user to create a first planar drawing canvas
within a 3D model space using a computer; and
allowing the user to arbitrarily:
create a second planar canvas within the 3D space;
paint on the first canvas within the 3D space
creating a continuous definition of a hand drawn shape;
specify 3D model geometry on the first canvas in
the 3D space associated with the paint;

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Apr. 13, 2011); Reply Brief (“Reply Br.,” filed Sep. 6, 2011); Examiner’s
Answer (“Ans.,” mailed July 6, 2011); Final Office Action (“FOA,” mailed
Aug. 4, 2010); and the original Specification (“Spec.,” filed Oct. 6, 2005).
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paint on the second canvas within the 3D space;
specify directly 3D model geometry between the
first and second canvases in the 3D space associated
with the paint, the 3D model geometry one of within a
canvas and directly connecting the canvases together in
the 3D space to thereby construct the 3D model; and
orient the one of the canvases.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Aizawa US 4,858,150 Aug. 15, 1989
Roberts US 5,237,647 Aug. 17, 1993
Schell US 6,628,279 B1 Sep. 30, 2003
Golibrodski US 6,762,778 B1 Jul. 13, 2004
McDaniel US 2006/0082571 A1 Apr. 20, 2006
Rejections on Appeal3
1. Claims 1-6, 9-11, 13-15, 19, 20, and 22-27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Aizawa,
McDaniel, and Schell. Ans. 4.
2. Claims 7, 8, 12, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Aizawa, McDaniel, Schell,
and Golibrodski. Ans. 17.

3 Although not before us on appeal, if further prosecution of this application
should ensue, we leave it to the Examiner to determine whether the
recitation added during prosecution to claim 1 of “directly specified by the
user one of within and between the hand drawn shape and another hand
drawn shape in the 3D space” and similar recitations in other independent
claims meet the requirements of 35 U.S.C. § 112, second paragraph.
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3. Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Aizawa, McDaniel, Schell, and
Roberts. Ans. 21.
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments that Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1-27, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ arguments. However, we
highlight and address specific findings and arguments regarding claims 1
and 21 for emphasis as follows.
1. § 103 Rejection of Claims 1-6, 9-11, 13-15, 19, 20, and 22-27
Issue 1
Appellants argue (App. Br. 13-19; Reply Br. 2-4) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Aizawa, McDaniel, and Schell is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding that the cited prior art
combination teaches or suggests all the limitation of claim 1?
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(b) Did the Examiner err by not providing articulated reasoning
with a rational underpinning in support of the Examiner’s legal conclusion
of obviousness?
Analysis
Issue 1(a)
Appellants first contend, “Aizawa entirely fails to discuss or teach
[the limitation] ‘allowing the user to specify 3D model geometry in the 3D
space,’” but instead, “merely discusses that a computer may take 2D
wireframe data as input and infer three-dimensional geometry from this 2D
data which is from a database.” App. Br. 14 (emphasis omitted). Appellants
next contend Aizawa does not teach or suggest the limitation “allowing a
user to paint within a 3D space using a computer,” because the reference
only discusses retrieving 2D wire-frame data. Id.
In response, the Examiner finds, and we agree, Appellants’
Specification does not distinguish the use of the term “paint” from the
ordinary meaning one of ordinary skill in the art would understand the term
to mean, particularly because, as Appellants admit, “[d]uring the paint
operation . . . the user uses the typical drawing tools . . . available in a
conventional drawing system.” Ans. 23-24 (quoting Spec. ¶ [0029])
(emphasis omitted). Although Aizawa uses 2D wireframes to construct a 3D
model (Aizawa Abstract), we find Aizawa teaches or suggests a
conventional paint system because
[t]he inventive shape modeling system is designed to
enter commands and parameters through input means including
a graphic display unit 3, a tablet and stylus 4 and a keyboard 5
and operate on a computational unit 2 to produce data of 2-
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dimensional (will be termed simply “2-D” hereinafter) wire
frame in a 2-D wire-frame generating process 9 and store the
result in a data base 6.
Aizawa col. 2, ll. 55-62. This portion of Aizawa, as identified by the
Examiner (Ans. 24), teaches the use of conventional drawing tools including
a tablet and stylus to “paint,” i.e., draw lines in two-dimensional space to be
arranged and used to produce a three-dimensional shape. Thus, Aizawa does
not merely “retrieve” 2D wireframe data, as alleged by Appellants.
During prosecution, “the PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). We find Appellants
have not provided a definition of “paint” in the Specification (¶ [0029]) that
would preclude the Examiner’s broader interpretation.4
With respect to the disputed limitation, “allowing the user to specify
3D model geometry in the 3D space,” Appellants’ arguments are not
persuasive because Aizawa teaches or suggests user arrangement of 2D

4 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.” (citations omitted)). See also Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005) (“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. In particular, we have
expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.” (citations omitted)).
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wireframes to produce a 3D shape, which we find teaches or suggests the
limitation in dispute. Aizawa col. 3, l. 31 – col. 5, l. 7; see Ans. 24-25.
Appellants also contend McDaniel “merely discusses inferring three-
dimensional geometry from hand-drawn graphical input,” but “it is the three-
dimensional conversion module 106 that interprets whether user input refers
to 2-D and 3-D and 3D model geometry is not directly specified by the
user.” App. Br. 15.
In response, the Examiner emphasizes, and we agree, “McDaniel is
relied upon to disclose the feature of the user painting [being] created
through a continuous definition of a hand drawn shape and specifying the
3D model geometry is associated with the hand drawn shape” and further
“discloses allowing a user to create three dimensional models from the two-
dimensional drawings or sketches created by a user.” Ans. 25 (citing
McDaniel ¶¶ [0003], [0084]). We find the disputed limitation reads on this
teaching or suggestion of McDaniel. In addition, Aizawa also teaches or
suggests the user specifying 3D model geometry by arranging planes of 2D
wireframe drawings in the 3D space, which we find also teaches or suggests
the disputed limitation. See Aizawa col. 4, ll. 46-53.
Issue 1(b)
With respect to Issue 1(b), i.e., the alleged improper motivational
basis to combine the references in the manner suggested by the Examiner,
we highlight the Examiner’s comprehensive summary of the basis for the
unpatentability rejection of claim 1 over the combination of Aizawa,
McDaniel, and Schell, the findings of which we adopt as our own:
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[T]he disclosures of Aizawa, McDaniel, and Schell are directed
towards producing three-dimensional models. Aizawa, as
discussed above, produces three-dimensional models using two-
dimensional wire-frame images and three-dimensional plane
elements. McDaniel, as discussed above, produces three
dimensional models based on hand drawn images. Therefore,
Aizawa’s direct specification of a three-dimensional model
from wire-frame and plane elements would have realized the
benefit of adding user produced three-dimensional elements to
the final specification of the three-dimensional model. Schell
(Abstract and figures 6A-6S) discloses using familiar pencil
and paper techniques for producing a three-dimensional model.
Aizawa already realizes a pencil and paper technique by
allowing a user to draw two-dimensional wire-frame images,
but not for final production of a three-dimensional model.
Aizawa (Column 3, lines 52-65) relies on inputting commands
for specifying coordinates for arranging the various elements to
produce the final three-dimensional model; however, Schell
(Column 12, lines 25-38) assembles a three-dimensional model
without the need for complicated tools or concepts, but rather
allows a user to draw elements in any order and assembling
them. As a result, Schell discloses the 3D model geometry
directly specified by the user one of within and between the
hand drawn shape and another hand drawn shape in the 3D
space to thereby construct a 3D model. Therefore, the
combination of Schell with Aizawa and McDaniel would
realize the benefit of assembling a final three dimensional
model using familiar paper and pencil techniques of drawing
the model together rather than inputting commands for
specifying the coordinates in three-dimensional space for each
element.
Ans. 26-27.
In the Reply, Appellants argue “a reason for the particular
combinations has not been provided to establish obviousness [under KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)],” “the rejection . . . is made
by mere conclusory statements,” and “Applicants request that some
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reasoning with some rational underpinning be provided to support the legal
conclusion of obviousness.” Reply Br. 4. We disagree with Appellants’
contentions in this regard, as we find the above-cited portion of the Answer
provides the requested “reasoning with some rational underpinning . . . to
support the legal conclusion of obviousness.”
On this record, Appellants have provided no evidence that combining
such teachings was “uniquely challenging or difficult for one of ordinary
skill in the art,” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007), nor have Appellants presented evidence that
this incorporation yielded more than expected results.
Rather, we find Appellants’ invention is simply a combination of
known teachings that realize a predictable result. The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR, 550 U.S. at 418.
The skilled artisan would “be able to fit the teachings of multiple patents
together like pieces of a puzzle” since the skilled artisan is “a person of
ordinary creativity, not an automaton.” Id. at 420-21.
Appellants allege the Examiner has attempted to “bring in the isolated
teaching of McDaniel, Schell, Golibrodski and/or Roberts in the Aizawa
system [which] amount[s] to improperly picking and choosing features from
different references without regard to the teachings of the references as a
whole.” Reply Br. 4 (emphases omitted). We disagree because the
Examiner rejects the claims as obvious over the combined teachings of
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Aizawa, McDaniel, and Schell; the test for obviousness is not what the
references show individually but what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s legal conclusion of obviousness with respect to independent
claim 1.
In addition, Appellants raise what appear to be separate, substantive
arguments (App. Br. 19-34) for patentability of dependent claims 2-6, 9-11,
13-15, 19, and 20, all rejected on the same basis as claim 1. To the extent
these arguments are separate and substantive, we find the Examiner has
rebutted each of those arguments in the Answer by a preponderance of the
evidence. Ans. 6-9, 34-41. We adopt the Examiner’s findings as our own.
Further, while Appellants raised what may appear to be separate,
substantive arguments for patentability of independent claims 22-27, all
rejected on the same basis as claim 1 (App. Br. 19-34), we find the issues
presented generally turn on Issues 1(a) and 1(b) discussed above with
respect to independent claim 1. To the extent Appellants may have
presented additional substantive arguments for the patentability of these
claims, we find the Examiner has rebutted each of those arguments in the
Answer by a preponderance of the evidence. Ans. 9-17, 29-34. Again, we
adopt the Examiner’s findings as our own.
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2. § 103(a) Rejection of Claims 16-18
As mentioned above, claims 16-18 stand rejected under § 103 as being
unpatentable over the combination of Aizawa, McDaniel, and Schell in view
of Roberts. We find Appellants have not provided separate, substantive
arguments with respect to these claims, but instead generally allege the cited
art, Roberts in particular, does not teach or suggest the recited features.
We note the Examiner’s detailed response in the Answer. Ans. 21-22,
43-44. We also particularly note Appellants have not specifically rebutted
the Examiner’s responsive arguments regarding claims 16-18 in their Reply
Brief. Based upon our review of the record before us, we find Appellants
have failed to present substantive arguments supported with specific factual
evidence of sufficient character and weight to persuade us of error regarding
the Examiner’s findings of facts and ultimate legal conclusion of
obviousness.
Further, mere attorney arguments and conclusory statements
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip
op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”);
cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
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not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”). Arguments not made are therefore waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). We therefore sustain the rejection of claims 16-18.
3. § 103 Rejection of Claims 7, 8, 12, and 21
Issue 2
Appellants argue (App. Br. 38-41) the Examiner’s rejection of claims
7, 8, 12, and 21 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Aizawa, McDaniel, Schell, and Golibrodski is in error.
These contentions present us with the following issue:
Did the Examiner err in finding that the cited prior art combination
teaches or suggests the limitation of “allowing the user to arbitrarily . . .
specify directly 3D model geometry between the first and second canvases
in the 3D space associated with the paint, the 3D model geometry one of
within a canvas and directly connecting the canvases together in the 3D
space to thereby construct the 3D model,” as recited in claim 21?
Analysis
In disagreement with the Examiner’s findings (FOA 14-15),
Appellants contend Aizawa does not teach or suggest allowing the user to
arbitrarily “specify 3D model geometry on the first canvas in the 3D space
associated with the paint.” App. Br. 38 (citing Aizawa Fig. 2; col. 4, ll.
57-65).
We note the issues raised with respect to independent claim 21 are
substantially the same as those raised in connection with independent
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claim 1, discussed supra, with the addition of the terms “canvas” and
“canvases.” For example, Appellants contend
Aizawa fails to discuss “specify 3D model geometry on the first
canvas in the 3D space associated with the paint.” . . . [and]
Figure 2 of Aizawa merely shows that 2-D wire-frame data is
retrieved and that 3-D planes and [sic] made and a 3-D
transformation takes place based on this 2-D wire-frame data.
Id. Thus, Appellants again argue Aizawa’s teaching and suggestion of
assembling 2D wireframes into 3D objects is irrelevant to the claimed
invention, which involves “painting.” We disagree for the reasons cited
above with respect to the rejection of claim 1. We further note Appellants’
arguments in the Reply Brief (Reply Br. 4) in response to the Examiner’s
findings do not specifically rebut the Examiner’s findings (Ans. 19-21, 41-
42), but instead continue to allege improper motivation to combine the
references in the manner suggested by the Examiner, a contention we have
dealt with above in connection with Issue 1(b).
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s legal conclusion of obviousness with respect to independent
claim 21.
In addition, Appellants raise what appear to be separate, substantive
arguments (App. Br. 41, 42) for patentability of dependent claims 7, 8, and
12, all rejected on the same basis as claim 21. To the extent these arguments
are separate and substantive, we find the Examiner has rebutted each of
those arguments in the Answer by a preponderance of the evidence. Ans.
18-19, 42-43. We adopt the Examiner’s findings as our own.
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CONCLUSION
The Examiner did not err with respect to any of the unpatentability
rejections of claims 1-27 under 35 U.S.C. § 103(a) over the various
combinations of the prior art of record, and we sustain the rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 1-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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