Ex Parte Ecabert et alDownload PDFPatent Trial and Appeal BoardOct 27, 201411917937 (P.T.A.B. Oct. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte OLIVIER ECABERT, JOCHEN PETERS, and JUERGEN WEESE ____________ Appeal 2012-005192 Application 11/917,937 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2012-005192 Application 11/917,937 2 Invention The claimed invention on appeal relates to “an adaptation system [] for adapting a deformable model comprising a plurality of model elements to an object of interest in an image data set . . . .” (Abstract.) Representative Claim 1. An adaptation system for adapting a deformable model comprising a plurality of model elements to an object of interest in an image data set, said system comprising: a processor for selecting at least one image-driven model element from the plurality of model elements and for adapting the deformable model on the basis of optimizing a model energy of the deformable model, said model energy comprising an internal energy of the plurality of model elements and an external energy of the at least one image-driven model element, thereby adapting the deformable model. Rejections A. Claims 1, 3–13 and 15–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Chaney (US Pat. 5,926,568) in view of Li (US Pat. 6,594,378 B1). B. Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Chaney, and Li, and Lobregt (US Pat. 5,559,901). Appeal 2012-005192 Application 11/917,937 3 Grouping of Claims Based on Appellants’ arguments, we decide the appeal of rejection A of claims 1, 3–13 and 15–20 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c) (1)(vii)(2004).1 We address rejection B of claims 2 and 14 separately, infra. Objection to the Specification The Examiner objected to the Specification for missing section headings. (Final Office Action, mailed May 2, 2011, pp. 7-8.) Although Appellants urge us to reverse this objection, the Examiner is correct (Ans. 11), indicating this is a petitionable issue and not an appealable issue. The proper procedure under MPEP 1002.02(c)(4) is to file a petition with the Technology Center Director under 37 C.F.R. §1.113(a) regarding an objection made by the Examiner (“Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim.”). Accordingly, since the Examiner’s objection to the Specification is a petitionable, rather than appealable matter, this issue is not before us and we express no opinion as to its propriety. See 37 C.F.R. § 1.181. 1 Appellants filed a Notice of Appeal on Aug. 2, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-005192 Application 11/917,937 4 ANALYSIS We disagree with Appellants’ arguments with respect to representative claim 1 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 in the Answer in response to Appellants’ arguments. (Ans. 11–18.) However, we highlight and address specific findings and arguments regarding representative claim 1 for emphasis in our analysis below. Rejection A of Representative Claim 1 Issue: Under § 103, has the Examiner erred by finding the cited prior art would have collectively taught or suggested the contested emphasized limitations of: a processor for selecting at least one image-driven model element from the plurality of model elements and for adapting the deformable model on the basis of optimizing a model energy of the deformable model, said model energy comprising an internal energy of the plurality of model elements and an external energy of the at least one image-driven model element, thereby adapting the deformable model, within the meaning of representative claim 1? Claim Construction As an initial matter of claim construction, we note the multiple statements of intended use for the recited processor (e.g., “a processor for” {performing intended functions}). “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the Appeal 2012-005192 Application 11/917,937 5 claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id.2 Therefore, a question arises as to how much patentable weight, if any, we should give to the contested functional limitations intended to be performed by the recited processor. Assuming arguendo our reviewing court may accord patentable weight to all contested statements of intended use, Appellants contend: In the rejection of claim 1, the Office has not established that Chaney discloses selecting an image-driven model element, as recited by claim 1. Moreover, the Office has not asserted that Li discloses the claimed subject matter. (App. Br. 6, emphasis added.) The Examiner points to Chaney at Figures 3 and 5: Figure 5 then discloses that these different model elements can be inserted, deleted and moved, it is noted that in order to insert, move or delete any model element, it must be selected. 2 Further regarding claim 1 (“a processor for” {performing all claimed functions}), in the event of further prosecution, we leave it to the Examiner to consider whether the “processor for” language should be considered as a nonce word for “means for” and whether claim 1 should be rejected under 35 U.S.C. §112, first paragraph, as a single means which is nonenabling for the scope of the claim. Cf. with Aristocrat Techs. Austl. Pty Ltd. v. Inter. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) (the court held that Aristocrat failed to disclose the algorithms that transform the general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm. Id. at 1335.). Appeal 2012-005192 Application 11/917,937 6 Col. 5 lines 41-43, "...model generation program which allows a user interaction with the program to insert, delete, and move desired sites and links ..." And . . . Col. 15 lines 20-67 and specifically starting on line 48, "To facilitate user interaction, one can employ a model editing tool which incorporates the automatic model generation discussed above and which allows for insertion, deletion, and movement of sites and links ..." in order to insert, move or delete any model element, it must be selected. (Ans. 12–13.) We agree with the Examiner (id.) that in order for a user to insert, move or delete any model element, it must be selected. See Chaney, col. 5 lines 41–43, Figs. 5–6. (Ans. 12–13.) To the extent that Appellants urge that the claimed model element is not taught by an “image” in Chaney (App. Br. 6), we note that claim 1 does not define what an “image-driven model element” is, nor do Appellants point to a definition in the Specification. (Id.). Turning to Appellants’ Specification for context, we find exemplary non-limiting embodiments that are described using open-set “comprising” language. A model element from the plurality of model elements comprises information on a surface area of the deformable model. In addition to the shape of the surface area the model element commonly comprises the location and the orientation of the surface area. An example of a model element is a polygon of a polygonal mesh representing the deformable model. (Spec. 2, ll. 19–23, emphasis added.) Appeal 2012-005192 Application 11/917,937 7 Appellants further contend: [The Examiner] fail[s] to establish a teaching or suggestion of the claim limitation: adapting the deformable model on the basis of optimizing a model energy of the deformable model. The Office provides no nexus between the site-by-site optimization and the image energy, and it appears from the citations that there is no nexus. The Advisory Action does not further comment on this claim limitation. (App. Br. 7, emphasis added.) As such, the Office has failed to meet its burden of establishing a prima facie case of obviousness, and applicant has not had the opportunity to reply to the rejection. (App. Br. 8.) The Federal Circuit has held: “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). This burden is met by “adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.” Id. at 1370. It is only “when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection” that the prima facie burden has not been met and the rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Appeal 2012-005192 Application 11/917,937 8 Further: [A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. As the statute itself instructs, the examiner must "notify the applicant," "stating the reasons for such rejection," "together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. § 132. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Here, we find the Examiner has set forth a prima facie case that satisfies the requirements under 35 U.S.C. § 132. Similar to our discussion above, Appellants have not defined the contested claim terms (model energy, internal energy, external energy, image-driven model element) either in the claims or in the Specification. Appellants merely reproduce the Examiner’s rejection and assert the cited teachings in Chaney “fail to establish a teaching or suggestion of the claim limitation: adapting the deformable model on the basis of optimizing a model energy of the deformable model,” as claimed. (App. Br. 7.) Appellants have not persuaded us of error in the Examiner's underlying factual findings and ultimate legal conclusion of obviousness because they neither present rebuttal evidence nor explain why the Examiner's findings are incorrect.3 (Id.) “A statement which merely points 3 See EVIDENCE APPENDIX “None.” (App. Br. 15.) Appeal 2012-005192 Application 11/917,937 9 out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii). Appellants, who did not file a Reply Brief, have not further addressed the Examiner’s Responsive arguments to the contested limitations (Ans. 11–18), let alone demonstrated error by the Examiner, as required to satisfy their burden on appeal with respect to this ground of rejection. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Nor have Appellants cited to definitions of the contested claim terms in the Specification that would preclude the Examiner’s broader reading. (Ans. 11–18.) Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Given the Examiner’s broad but reasonable claim construction, on this record, we find the preponderance of the evidence supports the Examiner’s position as articulated in the Answer. (Ans. 11–18.) Appellants advance no separate substantive arguments traversing the Examiner’s specific findings for the dependent claims rejected under rejection A. We therefore sustain rejection A of representative independent claim 1, and also rejection A of grouped claims 3–13 and 15–20 (not argued separately), that fall therewith. See claim grouping supra. 4 4 In the event of further prosecution, we direct the Examiner’s attention to a recent precedential Board decision to ensure the “computer readable storage medium” recited in independent claim 13 is directed to statutory subject matter under § 101. Under our jurisprudence, we conclude the scope of the Appeal 2012-005192 Application 11/917,937 10 Rejection B of Claims 2 and 14 Appellants contend: Claim 2 recites "... wherein optimizing the model energy is based on optimizing a model force field." The Office concedes that Chaney and Li do not teach this claim feature and attempts to make-up the conceded deficiencies with Lobregt. However, Lobregt does not make up for the conceded deficiencies of Chaney and Li. More particularly, Lobregt includes the term 'force field' four times; namely, in col. 9, lines 3-43; col. 5, lines 10-24; and col. 8, line 45 to col. 9, line 2. While the term 'force field' is mentioned in these sections, nowhere in Lobregt does Lobregt teach or suggest optimizing a model energy based on optimizing a model force field, as claimed. Therefore, the combination of Chaney, Li, and Lobregt does not teach this claim feature. Claim 14 recites a similar claim feature. Similar to our discussion above, Appellants have not defined the contested claim terms (“model force field”) in the claims or in the Specification. Appellants merely reproduce the Examiner’s rejection and assert the cited teachings in Chaney “fail to establish a teaching or recited “computer readable storage medium” encompasses transitory media such as signals or carrier waves. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 since it encompasses transitory media). Here, the recited “computer-readable storage medium” (claim 13) is not claimed as non-transitory, and the originally-filed Specification (18) does not expressly and unambiguously disclaim transitory forms, such as signals, via a definition. Therefore, the “computer readable storage medium” of claim 13 is not limited to non-transitory forms and appears ineligible under § 101. Appeal 2012-005192 Application 11/917,937 11 suggestion of the claim limitation: adapting the deformable model on the basis of optimizing a model energy of the deformable model,” as claimed. (App. Br. 7.) As pointed out by the Examiner, “Lobregt is not required to provide a teaching of optimizing model energy because Chaney et al. and Li et al. were relied upon to teach these limitations . . . .” (Ans. 18.) On this record, Appellants have not persuaded us of error regarding the Examiner's underlying factual findings and ultimate legal conclusion of obviousness, because they neither present rebuttal evidence nor explain why the Examiner's findings are incorrect. Therefore, we are not persuaded of error regarding the Examiner’s rejection B of claims 2 and 14. We therefore sustain rejection B of dependent claims 2 and 14. DECISION We affirm the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103. 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). See 37 C.F.R. § 41.50(f). AFFIRMED tj Copy with citationCopy as parenthetical citation