Ex Parte Huang

Patent Trial and Appeal Board

Oct 10, 2014

10416459 (P.T.A.B. Oct. 10, 2014)

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.
10/416,459 10/06/2003 Ding Huang 01596/001614-US0 4313
76808 7590 10/10/2014
Leason Ellis LLP
One Barker Avenue
Fifth Floor
White Plains, NY 10601-1526
EXAMINER
BROOME, SAID A
ART UNIT PAPER NUMBER
2619
MAIL DATE DELIVERY MODE
10/10/2014 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 DING HUANG
____________

Appeal 2012-002220
Application 10/416,459
Technology Center 2600
____________

Before MAHSHID D. SAADAT, JOHN A. EVANS,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the July 18, 2014, Decision on Appeal
(“Decision”) in which we affirmed the rejections of claims 42 and 44–46
under 35 U.S.C. § 103(a) as being unpatentable over Sagar, Wolverton, and
Pourazady; and reversed the rejections of claims 21–33 under 35 U.S.C.
§ 103(a) as being unpatentable over Singh and Wolverton, alone or in
combination with other applied prior art. We have reconsidered the
Decision in light of Appellant’s arguments, but we are not persuaded of error
in the Decision for the reasons given below.

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ANALYSIS
1. Characterization of the Board’s Decision
Appellant contends that “the Board found claim 21 to be valid, and at
the same time found claim 42, which is narrower in all respects than claim
21, invalid.” (See Req. Reh’g 6; see also id. at 1 (“the Board found claim 21
to be allowable and maintained the Examiner’s rejection of claim 42”); 11
(“the Board overturned the rejection based on the failure of the prior art to
show element (d) of claim 21”).) This is a mischaracterization of our
findings. The Examiner applied the combination of Singh and Wolverton to
claim 21, (see Ans. 4–9), and the combination of Sagar, Wolverton, and
Pourazady to claim 42, (see Ans. 19–23). Although we found persuasive
Appellant’s argument that the applied prior art (i.e., the combination of
Singh and Wolverton) fails to teach every feature recited in claim 21, (see
Decision 4), we found unpersuasive Appellant’s argument that the applied
prior art (i.e., the combination of Sagar, Wolverton, and Pourazady) fails to
teach every feature recited in claim 42. Thus, rather than finding claim 21
valid, the Board found Appellant’s arguments with respect to claim 21
persuasive; and rather than finding claim 42 invalid, the Board found
Appellant’s arguments with respect to claim 42 unpersuasive.
Appellant further contends that “[t]he basis upon which claim 21 was
distinguished by the Board over the prior art is the very disclosure that the
Board attributes to Sagar,” (see Req. Reh’g 6), and points out that the Board
nevertheless made no attempt to apply Sagar to claim 21, (see Req. Reh’g
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12).
1
As discussed above, however, Sagar was relied on for the rejection of
claim 42, not claim 21. Our review of the Examiner’s rejection of claim 21
was limited to the applied prior art, which did not include Sagar.
Accordingly, we find Appellant’s arguments unpersuasive.
2. Different Language or Restatement of the Examiner’s Findings
Appellant contends the Examiner did not take the position that “Sagar
discloses shaping the topography of a face based on a curve that is analogous
to an underlying facial muscle, and the Board Decision does not cite to any
part of the Examiner’s Answer to support it.” (See Req. Reh’g 6.)
Appellant further contends that “this statement [regarding Sagar’s
disclosure] represents a new interpretation of Sagar, and thus a new ground
of rejection.” (See Req. Reh’g 6.) We find Appellant’s arguments
unpersuasive. As indicated in the Decision, this argued feature, which
Appellant articulated in the Appeal Brief, (see App. Br. 20–21),
2

corresponds to features recited in paragraphs (b) and (d) of claim 42. (See
Decision 5.) In rejecting claim 42, the Examiner found that Sagar teaches
features recited in paragraphs (b) and (d), including “dynamically modifying
said parameters [of said curves] such that the effect generated in said model
of the face is dynamically changed in the same way a face would change due

1
Although Appellant states, “No attempt was made by the Board to apply
Sagar as showing this feature to claim 42,” (see Req. Reh’g 12), we believe
Appellant intended to refer to claim 21 because the Examiner already
applied Sagar to claim 42.
2
In the Appeal Brief, Appellant contended, “Claim 42 is directed to
dynamically modifying the parameters of a face so as to simulate movement
on the surface layer that corresponds to the dynamic movement of the
muscle layer . . . . What is missing from the prior art is a [sic] dynamically
shaping a surface topo[graphy] based on an underlying rational curve that is
analogous to an underlying muscle.” (See App. Br. 20–21.)
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to movement of underlying facial muscles so as to simulate the deformation
of the face.” (See Ans. 20; see also Decision 6 (citing relevant portions of
both the Examiner’s Answer and Sagar).) The Examiner also found that
Sagar teaches “underlying facial fiber muscles [that] deform a facial model
to enable the outer surface to be deformed in the same manner as the
fibers.” (See Ans. 20.) Given these findings, it is our understanding of the
Examiner’s position that Sagar teaches “shaping the topography of a face
based on a curve that is analogous to an underlying facial muscle.”
Although the Examiner did not use this specific language to express the
Examiner’s findings, it is generally not a new ground of rejection if the
Board’s Decision responds to Appellant’s arguments using different
language or restates the reasoning of the rejection in a different way, so long
as the evidence relied on is the same and the basic thrust of the rejection is
the same. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976); see also In
re Krammes, 314 F.2d 813, 817 (CCPA 1963) (“It is well established that
mere difference in form of expression of the reasons for finding claims
unpatentable or unobvious over the references does not amount to reliance
on a different ground of rejection.”); In re Cowles, 156 F.2d 551, 555
(CCPA 1946) (holding that the use of “different language” does not
necessarily trigger a new ground of rejection).
Appellant also contends that “the Examiner did not take the position
that [Sagar] showed a system in which the changing of parameters of a
curve produced the same surface results on a model of a face that would be
produced by underlying facial muscles.” (See Req. Reh’g 5.) This argued
feature corresponds similarly to features recited in paragraphs (b) and (d) of
claim 42. (See App. Br. 4.) As discussed above, the Examiner found that
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Sagar teaches features recited in paragraphs (b) and (d), including the feature
“dynamically modifying said parameters [of said curves] such that the effect
generated in said model of the face is dynamically changed in the same way
a face would change due to movement of underlying facial muscles so as to
simulate the deformation of said face.” (See Ans. 20.) Given this finding,
we understand the Examiner’s position to indicate Sagar teaches “a system
in which the changing of parameters of a curve produced the same surface
results on a model of a face that would be produced by underlying facial
muscles.”
3. Waived Arguments
Appellant raises several arguments for the first time in the Request for
Rehearing. It is inappropriate for Appellant to discuss for the first time in a
Request for Rehearing matters that could have been raised in the Appeal
Brief. “The failure to raise all issues and arguments diligently, in a timely
fashion, has consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475
(BPAI 2010) (informative decision). See also 37 C.F.R. § 41.52 (a)(1):
Arguments not raised, and Evidence not previously relied upon,
pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the
request for rehearing except as permitted by paragraphs (a)(2)
through (a)(4) of this section . . .
(2) Appellant may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection
designated pursuant to § 41.50(b) are permitted.
(4) New arguments that the Board’s decision contains an
undesignated new ground of rejection are permitted.
We find Appellant’s new arguments discussed below waived. We also
nonetheless find these new arguments unpersuasive for the following
reasons.
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Appellant contends that changing parameters of a finite element
model, as taught by Sagar, is not the same as “modifying of said parameters
of the curves [which are] integral to simulating movement in the model of
the face in the form of movement of a particular point on the surface of the
face to a different location which is equivalent to movement due to the
mechanism of deformation caused by underlying facial muscles,” as
required by claim 42. (See Req. Reh’g 4; see also id. at 6–8, 14–15
(distinguishing finite element modeling from the invention).) As the
Examiner’s rejection of claim 42 discussed Sagar’s finite element model,
(see Ans. 17–18), Appellant could have raised this argument in the Appeal
Brief. Although this new argument is therefore waived, we nonetheless find
the argument unpersuasive. Appellant’s contention may be true; but
Appellant merely invites us to review additional evidence, (see Req. Reh’g
6–8), without providing any explanation as to why Sagar’s teaching is
different than the claim requirement. Attorney argument is not evidence.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Moreover, this
evidence was not relied on previously.
Appellant similarly invites us to review the file history of Sagar,
which was not previously relied on. In an attempt to ascertain the meaning
of Sagar’s teaching that tissue surface modifications are not limited to
effects caused by movement of any underlying musculature, Appellant
contends that the file history of Sagar indicates that the wrinkles are not a
form of muscle contraction. (See Req. Reh’g 16.) As the Examiner’s
rejection of claim 42 discussed Sagar’s teaching regarding the tissue surface
modifications, (see Ans. 19–20), Appellant could have raised this argument
in the Appeal Brief. Although this new argument is therefore waived, we
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nonetheless find the argument unpersuasive because Sagar indicates
additionally that a wrinkle may exist when there is a change in the
underlying muscle volume. (See Req. Reh’g 16.)
Appellant further contends that Sagar is directed to finite-element
modeling, whereas Appellant’s invention is directed to curve controlled
modeling, which we understand refers to the NURBS curve recited in claim
42. (See Req. Reh’g 14–15.) As the Examiner’s rejection of claim 42
discussed Sagar’s finite-element model, (see Ans. 17–18), Appellant could
have raised this new argument in the Appeal Brief. Although this new
argument is therefore waived, we nonetheless find the argument
unpersuasive because the Examiner relied on Wolverton—not Sagar—for
teaching the recited NURBS curve. (See Ans. 22.)
Appellant further contends that finite element modeling “might be
used to create a wrinkle in a model, but would not be used to simulate a
blink.” (See Req. Reh’g 7; see also Req. Reh’g 15 (“modeling a part of
expression is not the same as modeling the overall complex expression as
with the present invention”).) Appellant also contends that the realistic
changes in expression according to Appellant’s invention are due to the
changes of the control curve. (See Req. Reh’g 13.) As the Examiner’s
rejection of claim 42 discussed Sagar’s disclosure of creating wrinkles and
achieving realistic changes in expression, (see Ans. 20–21), Appellant could
have made these arguments in the Appeal Brief. While these new arguments
are therefore waived, we note that the argued features are not recited in
claim 42. Accordingly, Appellant’s arguments are additionally not
commensurate in scope with the claim.
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Appellant further contends that “in Sagar, the muscle and the skin
are one and the same, while in the current invention one is the cause
and the other is the effect.” (See Req. Reh’g 14.) As the Examiner’s
rejection of claim 42 discussed tissue properties as including properties of
both muscles and skin, (see Ans. 19), Appellant could have raised this
argument in the Appeal Brief. Although this new argument is therefore
waived, we note that the argued feature is not recited in claim 42.
Accordingly, Appellant’s argument is not commensurate in scope with the
claim. We also observe Appellant provides a contradictory statement that
Sagar’s “modification of the muscle portion necessarily causes the skin
portion to change along with it.” (See Req. Reh’g 14.) Appellant does not
explain how this feature in Sagar is different than Appellant’s invention,
where “one is the cause and the other is the effect.” (See Req. Reh’g 14.)
Appellant further contends that “[i]n the present invention the skin
or surface compression occurs along the muscle direction, not
orthogonal to the collagen direction.” (See Req. Reh’g 9–10; see also id.
at 13 (contending that in Sagar, an analogous facial muscle would be located
orthogonally to curve 60, not along curve 60).) As the Examiner’s rejection
of claim 42 discussed the direction of skin compression in Sagar, Appellant
could have raised this argument in the Appeal Brief. Although this new
argument is therefore waived, we note that Appellant stated in the Appeal
Brief that “Figure 7 [of Sagar] is directed to compression of the skin in a
particular direction, which causes a displacement in height corresponding to
a model of a wrinkle.” (See App. Br. 20.) To the extent that Appellant’s
argument in the Request for Rehearing is an elaboration of this statement,
we find that Appellant’s argument is not commensurate in scope with claim
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42 because the argued feature is not recited in the claim. We also note that
Appellant contends that “compression of a finite element for a section of
tissue in a direction orthogonal to the direction of collagen in the tissue of
the model” is not the same as “dynamically shaping a surface topography of
a model of a human face based on an underlying curve that is analogous to
an underlying facial muscle.” (See Req. Reh’g 11.) Appellant provides no
explanation as to why these features are different.
Appellant further contends that “instead of achieving the wrinkle
merely based on a change in a curve, Sagar must modify the volumetric
representation of the face.” (See Req. Reh’g 13.) According to Appellant,
Sagar involves “a finite element model, so merely modifying a curve will
not produce the desired wrinkle.” (See Req. Reh’g 13.) As the Examiner’s
rejection of claim 42 discussed modifying the volumetric representation of
tissue in Sagar, (see Ans. 19–20), Appellant could have raised this argument
in the Appeal Brief. Although this new argument is therefore waived, we
nonetheless find the argument unpersuasive. Claim 42 is not limited to
merely responding to a curve or merely modifying a curve. Thus,
Appellant’s argument is additionally not commensurate in scope with the
claim.
Appellant further contends that “Sagar neither uses nor implies use of
the curve to control the movement of the surface topology.” (See Req.
Reh’g 15.) As Appellant raises this new argument for the first time in the
Request for Rehearing, we find the new argument waived. We nonetheless
also find the new argument unpersuasive. As the Examiner found in
rejecting claim 42, Sagar teaches a curve that represents a wrinkle, which is
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generated by modifying the volumetric representation of tissue. (See Sagar,
col. 5, ll. 36–41; see also Ans. 20.)
Appellant further contends that Sagar discusses the capability of
implementing expression characteristics identified in the Fagin reference,
but does not provide support for such capability. (See Req. Reh’g 15.) As
this new argument is raised for the first time in the Request for Rehearing
and does not fall under any of the categories described in 37 C.F.R. § 41.52
(a)(2)–(4), we find the argument waived. We also note that the argued
feature is not recited in claim 42. Accordingly, Appellant’s argument is not
commensurate in scope with the claim. Moreover, Fagin was not previously
relied on.
Finally, Appellant contends that “if Sagar uses the wrinkle curve to
create a change in topography and Wolverton’s curve does not result in such
a change, there is no motivation to use the Wolverton curve in Sagar. In
fact, the operation of the NURBS curve in Wolverton would teach against its
use in Sagar.” (See Req. Reh’g 16–17.) As Appellant raises this argument
for the first time in the Request for Rehearing, we find this argument
waived. We nonetheless also find this new argument unpersuasive. In
rejecting claim 42, the Examiner found as follows:
Wolverton teaches providing and locating at least one Non-
Uniform Rational B-Spline (NURBS) parametric curve in the
model based on the topography of said model . . . such that
modification of parameters of at least a section of said NURBS
curve has an effect on the topography of the model that is
geometrically analogous to the effect the movement of the
underlying facial muscles has on the surface of the face.
(See Ans. 22; see also Req. Reh’g 17.) As discussed above, the Examiner
found that Sagar teaches modifying parameters of a curve such that a model
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of a face is changed in the same way the face would change due to
movement of underlying facial muscles. (See Ans. 20.) We therefore
understand the Examiner relied on Wolverton primarily for its teaching of a
NURBS curve. The Examiner further found that Wolverton also teaches
that a NURBS curve “provides a modeler with a high degree of flexibility
that is required for representing highly detailed curved bodies.” (See Ans.
22.) Given this cited advantage of using a NURBS curve, we find that the
Examiner’s discussion of the applied prior art provided sufficient motivation
for combining Sagar and Wolverton.
4. Other Unavailing Arguments
Appellant contends that “[w]hile Sagar mentions the creation of a
temporal phenomenon, e.g., a ‘wink,’ no information is given as to its time
scale.” (See Req. Reh’g 7.) As this argued feature is not recited in claim 42,
however, Appellant’s argument is not commensurate in scope with the
claim, and it is therefore unavailing.
Appellant further contends that “[w]hile Sagar implies that it can
simulate muscle movement, no curve representative of a muscle is
disclosed.” (See Req. Reh’g 11; see also Req. Reh’g 12 (“[Sagar’s wrinkle
map] is not a curve that controls the surface in the same way a muscle
would.”); 13 (“Sagar does not use an underlying curve that is analogous to a
muscle.”).) As to Sagar’s wink, Appellant contends in particular that “there
is no indication that it is achieved by simulating the muscles near the eye, as
opposed to collagen fibers that would fold the skin to form a wink.” (See
Req. Reh’g 11.) We find these arguments unpersuasive. First, claim 42
recites the following feature:
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curve in the model based on the topography of said model such
that modification of parameters of at least a section of said
NURBS curve has an effect on the topography of the model that
is geometrically analogous to the effect the movement of the
underlying facial muscles has on the topography of the surface
of the face.
Although the claim requires that the effect of curve modification and the
effect of muscle movement are geometrically analogous, the claim does not
require that the curve represent the muscle itself. Second, with respect to
simulation, claim 42 recites “for simulation,” “so as to simulate the
deformation of the face,” and “simulating movement in the model of the
face.” Even though claim 42 also recites changing the model of the face in
the same way a face would change due to movement of underlying facial
muscles, the claim is not limited to simulation of the muscles themselves.
Accordingly, Appellant’s arguments are not commensurate in scope with
claim 42, and they are unavailing. We nonetheless note, as the Examiner
found, that Sagar teaches a curve that represents a wrinkle that is generated
by modifying the volumetric representation of tissue, (see Sagar, col. 5, ll.
36–41; see also Ans. 20), which includes muscles, (see Sagar, col. 3, ll. 56–
58; see also Ans. 19). As the Examiner also found, Sagar’s surface
modifications include effects caused by movement of and volume changes in
any underlying musculature. (See Sagar, col. 7, ll. 17–19; see also Ans. 19–
20.)
In view of the foregoing, we have granted Appellant’s request to the
extent that we have reconsidered our Decision, but we deny Appellant’s
request to make any changes therein.

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DECISION
The request for rehearing is denied.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REHEARING DENIED

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