11973663 (P.T.A.B. Jan. 30, 2015)

Ex Parte Fosburgh et al

Patent Trial and Appeal BoardJan 30, 2015

11973663 (P.T.A.B. Jan. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRYN FOSBURGH, LAVONNE LYNETTE FRAZIER, and PETER GRAHAM GIPPS ____________________ Appeal 2013-000832 Application 11/973,663 Technology Center 3600 ____________________ Before JOHN C. KERINS, EDWARD A. BROWN, and GEORGE R. HOSKINS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bryn Fosburgh et al. (Appellants) appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3–11, and 13–46. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2013-000832 Application 11/973,663 2 THE INVENTION Appellants’ invention is directed to a computer-implemented method for site development planning. Claim 1, reproduced below, is illustrative: 1. A computer-implemented method for site-development planning, said method comprising: automatically determining a development mix for developing a site, said development mix comprising a mix of structures for building upon said site, said development mix automatically determined by a computing system based upon: a location of said site, a user supplied development constraint, and regulatory information regarding said location of said site, wherein said computing system automatically uses said location of said site to search for and retrieve said regulatory information from a site development planning data source extrinsic to said computing system; automatically estimating, with said computing system, a site earthworks parameter for said development mix; automatically determining, with said computing system, a site build phase parameter for said development mix; and providing, from said computing system, said development mix, said site earthworks parameter, and said build phase parameter as a site development planning output. Appeal 2013-000832 Application 11/973,663 3 REJECTIONS The following rejections are on appeal: (i) claims 1, 3–11, 13–30, and 38–46 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Detwiler (US 2006/0025971 A1, published Feb. 2, 2006) in view of Tipton (US 6,097,995, issued Aug. 1, 2000) and Haunschild (US 2003/0131011 A1, published July 10, 2003); and (ii) claims 31–37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Detwiler in view of Tipton, Haunschild, and Ballew (US 2008/0086508 A1, published Apr. 10, 2008). OPINION Claims 1, 3–11, 13–30, and 38–46-Obviousness-Detwiler/Tipton/Haunschild Appellants argue these claims as a group. Appeal Br. 7–14. We take claim 1 as representative, and claims 3–11, 13–30, and 38–46 stand or fall with claim 1. The Examiner’s position is that it would have been obvious to modify the Detwiler system to include features disclosed in the Tipton and Haunschild references, and the resulting system would have rendered obvious Appellants’ claimed method. Ans. 5–11. Appellants traverse this rejection on the bases that: Detwiler, Tipton, and Haunschild are nonanalogous art (Appeal Br. 7–9, Reply Br. 2–3); modifying Detwiler in view of Tipton would change the principle of operation of Tipton (Appeal Br. 9–12, Reply Br. 3); and modifying Detwiler in view of Haunschild would change the principle of operation of Haunschild (Appeal Br. 12–14, Reply Br. 4). Appeal 2013-000832 Application 11/973,663 4 Appellants acknowledge that the nonanalogous art test “is to compare whether a reference is analogous to the field of the inventor’s endeavor and not whether two references used in combination are analogous to one another.” Reply Br. 2. As the arguments advanced in the Appeal Brief are directed specifically to whether the references are analogous to each other, the arguments do not persuade us that any of the references would be regarded as nonanalogous art. Appeal Br. 7–9. In the Reply Brief, Appellants reassert that “Detwiler, Tipton, and Haunschild are non- analogous art.” Reply Br. 2. Appellants further argue that “Tipton fails the two-step analysis” for determining whether the art is nonanalogous. Id. Appellants correctly state the conditions for the second step of the two-step test, namely, “if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular” problem faced by Appellants. Reply Br. 2. Appellants assert that Tipton fails this step. In support of this position, Appellants point out that Tipton is directed to industrial problems, which are not the same as building problems. Id. This, however, goes to the first step of the test, i.e., whether the reference is within the same field of endeavor. It says nothing about the possible pertinence of the teachings to the problem Appellants faced. Appellants advance no reasoning as to why the teachings of Tipton would not be reasonably pertinent to Appellants’ problem. Furthermore, Appellants themselves acknowledge that the field of their endeavor includes “building/industrial problems and applications for the purpose of ensuring regulatory compliance,” in addition to other aspects involving site planning. Id. at 2–3. Appeal 2013-000832 Application 11/973,663 5 Appellants also correctly state the principle that “[i]f the proposed modification or combination of the prior are would change the principle of operation of the invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” Appeal Br. 10 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)). Appellants also correctly state the principle that, “‘[i]f the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.’” Id. (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). Because the Examiner proposes modifying the prior art Detwiler reference in view of Tipton and Haunschild, the proper inquiry for the above two legal principles is whether the modifications proposed by the Examiner would change the principle of operation of Detwiler or render Detwiler unsatisfactory for its intended purpose. As noted above, Appellants’ arguments are instead directed to allegedly changing the principle of operation of the secondary references, i.e., Tipton and Haunschild, or rendering those references unsatisfactory for their intended purposes. As such, Appellants’ arguments fail to apprise us of Examiner error in concluding that it would have been obvious to modify Detwiler as proposed, in view of the Tipton and Haunschild references. The rejection of claim 1 as being unpatentable over Detwiler in view of Tipton and Haunschild is thus sustained. Claims 3–11, 13–30, and 38–46 fall with claim 1. Claims 31–37-Obviousness-Detwiler/Tipton/Haunschild/Ballew Appellants make no additional arguments for the patentability of claims 31–37 apart from those made with respect to claim 1, and simply argue that Ballew does not overcome the alleged deficiencies in the Appeal 2013-000832 Application 11/973,663 6 combination of Detwiler, Tipton, and Haunschild. Appeal Br. 14–15. As noted above, we are not persuaded that the combination of Detwiler, Tipton, and Haunschild is deficient in rendering obvious the subject matter of the claims. The rejection of claims 31–37 as being rendered unpatentable over Detwiler in view of Tipton, Haunschild, and Ballew is sustained. DECISION The rejection of claims 1, 3–11, 13–30, and 38–46 under 35 U.S.C. § 103(a) as being unpatentable over Detwiler in view of Tipton and Haunschild is AFFIRMED. The rejection of claims 31–37 under 35 U.S.C. § 103(a) as being unpatentable over Detwiler in view of Tipton, Haunschild, and Ballew is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED hh