Ex Parte Kanai et al

Board of Patent Appeals and Interferences

Mar 27, 2012

11214950 (B.P.A.I. Mar. 27, 2012)

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.
11/214,950 08/31/2005 Satoshi Kanai 389.45439X00 3477
20457 7590 03/28/2012
ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873
EXAMINER
GUERTIN, AARON M
ART UNIT PAPER NUMBER
2629
MAIL DATE DELIVERY MODE
03/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SATOSHI KANAI, HIROAKI DATE,
KENJI KISHINAMI and ICHIRO NISHIGAKI
____________

Appeal 2010-008079
Application 11/214,950
Technology Center 2600
____________

Before DEBRA K. STEPHENS, KRISTEN L. DROESCH and
MICHAEL R. ZECHER, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 2, 5, 10, 12, 13 and 16.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
Appellants’ disclosed invention relates to a tetrahedral mesh
generating method for finite-element analysis and a finite element
analyzing system using the method. More particularly, Appellants’
disclosed invention relates to automatically generating Multi-Resolution
Representation for analysis from a tetrahedral mesh with high quality
suitable for analysis by using a computer. Spec. 1.
Independent claim 1 is illustrative and is reproduced below:
1. A tetrahedral mesh generating method for finite
element analysis executable by a computer, comprising:
a first step of generating a high-density tetrahedral mesh
of a solid model of a product and of adding an identification
sign to a mesh element of the high-density tetrahedral mesh, to
which an analyzing condition is set; and
a second step of performing simplification for generating
a low-density tetrahedral mesh for finite-element analysis by
reducing a number of said high density tetrahedral meshes
generated by said first step, using an edge collapse processing
and conserving the mesh element to which the analyzing
condition is set,
wherein said second step comprises; calculating a new
vertex for integrating vertexes at both end points of a ridge line
forming the high-density tetrahedral mesh to one, estimating
whether or not the edge collapse processing is used for all ridge
lines including the ridge line changed by the calculated new
vertex, setting as an effective ridge line being determined the
ridge line which the edge collapse processing is used,

1 Claims 3, 4, 6-9, 11, 14, 15, 17 and 18 have been cancelled.
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estimating a degree of quality conserve of the tetrahedral mesh
when the edge collapse processing is used for the effective
ridge line, and performing the edge collapse processing by
using the effective ridge line estimated maximum degree of
quality conserve of the tetrahedral mesh and a position of the
new vertex,
wherein said estimating a degree of quality conserve of
the tetrahedral mesh estimates to satisfy a parameter for
controlling the characteristics of mesh which is present for at
least one of a lower limit ST of the quality of element shape, an
upper limit SZ, of the size, an upper limit TL of an
approximation error for shape, and an upper limit VL for vertex
estimation.

Claims 1, 2, 5, 10, 12, 13 and 16 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Szymczak (U.S. 6,718,290, B1,
Apr. 6, 2004) and Hoppe (U.S. 5,929,860, July 27, 1999).
ISSUE
Did the Examiner err in determining that the claimed invention would
have been obvious over Szymczak and Hoppe?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”) and the arguments in the Reply Brief presented in response
to the Examiner’s Answer. Only those arguments actually made by
Appellants in the Appeal Brief and Reply Brief have been considered in this
decision. Appellants argue claims 1, 2, 5, 10, 12, 13 and 16 together as a
group. We select independent claim 1 as representative of the group. See 37
C.F.R. § 41.37(c)(vii).
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We disagree with Appellants’ conclusions and 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 set forth by the Examiner in
the Answer in response to the Appeal Brief. With respect to the claims
argued by Appellants, we highlight and address specific findings and
arguments for emphasis as follows.
Appellants present several arguments addressing why the teachings of
Szymczak and Hoppe cannot be combined to arrive at the claimed invention.
First, Appellants argue that Szymczak and Hoppe are incompatible with
each other because Szymczak is directed to the highly complex art of
tetrahedral meshes while Hoppe is directed to a much less complex art of
triangular meshes. App. Br. 10-11. Appellants assert that it is well known
within the tetrahedral mesh art that triangular mesh teachings are not directly
applicable to the more complex tetrahedral mesh art. App. Br. 12; see also
App. Br. 16. Appellants further assert that Hoppe’s triangular mesh
simplifications are not simply applicable into the tetrahedral mesh art
because of a number of reasons, e.g., extra information is needed,
tetrahedron may be split in many more different ways than a triangle, etc.
App. Br. 12 (citing Szymczak col. 3-4); see also App. Br. 16.
We are unpersuaded by Appellants’ arguments. Szymczak’s
discussion of the prior art explains that extending the compression of a
triangular mesh to the 3-D case is not simple since sometimes extra
information would be needed and that the number of ways in which a
removal of a tetrahedron can split the mesh is considerably larger than the
2-D case (Szymczak col. 4, ll. 14-22). However, Appellants do not direct us
to objective evidence, such as expert testimony, to demonstrate that
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extending Hoppe’s simplification technique utilized with triangular meshes
to tetrahedral meshes would have been beyond the skill level, or uniquely
challenging, for one with ordinary skill in the art. (See e.g. Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Moreover,
we note that Szymczak’s discussion of the prior art also explains that it may
be possible to extend a scheme used for triangular meshes to tetrahedral
meshes. Col. 2, l. 56-col. 3, l. 23. Thus, contrary to Appellants arguments,
the known prior art indicates that techniques utilized for triangular meshes
can be extended to tetrahedral meshes.
Second, Appellants argue that Szymczak is not directed to tetrahedral
mesh simplification, but is instead directed toward arrangements which
compress or decompress data corresponding to 3-D finite element meshes
after the mesh has already been formed or supplied. App. Br. 13. Turning to
the Hoppe reference, Appellants argue that Hoppe teaches a method for
reducing a number or triangle meshes which are formed on a surface of a
solid model and which are used in a technology of computer graphics. App.
Br. 16. Appellants assert that in contrast, Appellants’ invention is used in
finite element analysis executable by a computer. App. Br. 17. Appellants
assert that Hoppe therefore does not teach the method defined in claim 1 for
reducing a number of tetrahedral meshes and being used in the art of finite
element analysis executable by a computer. App. Br. 17; Reply Br. 5.
Appellants’ arguments are misplaced and unpersuasive since
Appellants attempt to shown non-obviousness by attacking the Szymczak
and Hoppe references individually where the rejection set forth by the
Examiner (Ans. 3-7) is based on the combined teachings of Szymczak and
Hoppe. One cannot show non-obviousness by attacking references
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individually where the rejections are based on combinations of references. In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Circ. 1986); In re Keller,
642 F.2d 413, 426 (CCPA 1981).
To the extent that Appellants argue that Hoppe is non-analogous art,
Appellants do not persuasively explain why Hoppe is not from the same
field of endeavor, regardless of the problem addressed or why Hoppe is not
reasonably pertinent to the particular problem with which the inventor is
involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Related to the previous arguments, Appellants argue that Szymczak’s
compression operations conflict with Hoppe’s simplification arrangements.
App. Br. 13. In particular, Appellants argue the Szymczak adds tetrahedrons
to a supplied mesh increasing the complexity of the supplied mesh, while
Hoppe’s simplification arrangement is directed to edge collapse in order to
always try to simplify. App. Br. 13. Appellants argue that even if Hoppe’s
triangular edge collapse teachings could be applied to Szymczak’s
tetrahedral mesh arrangement, Szymczak’s reconfiguring or gluing
arrangement would be destroyed which provides a negative incentive to
combine. App. Br. 14.
Appellants’ argument that the combination of Hoppe with Szymczak
would destroy the purpose or operation of Szymczak is not persuasive. A
prior art reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
907 (Fed. Cir. 1985). It is not necessary that the invention and the purpose
described in a reference be maintained or unaltered in any way. The
obviousness determination is based on what the prior art would have
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suggested to one of ordinary skill, including modifying the operations
described in the prior art. Here, the Examiner relied on the combined
teachings of Szymczak and Hoppe. Appellants’ focus on the described
invention and purpose of the Szymczak is too limiting. Although Szymczak
describes a reconfiguring or gluing operation of attaching another
tetrahedron to an external face of a tetrahedral mesh, one with ordinary skill
in the art would have readily appreciated using a simplification technique in
combination with Szymczak’s tetrahedral mesh operation, since edge
collapse operations are known to be a popular simplification technique. See
Szymczak col. 2, ll. 65-66. Moreover, we note that Appellants acknowledge
that Szymczak’s arrangement already applies an edge collapse operation.
App. Br. 14 (citing Szymczak col. 13, ll. 51-52).
Similarly, we are also not persuaded by Appellants’ argument that one
skilled in the art would not have found Hoppe’s triangular mesh edge
collapse teachings of any particular interest and would have discarded
Hoppe’s triangular mesh patent as irrelevant or inapplicable since
Szymczak’s arrangement already applies an edge collapse operation. App.
Br. 14 (citing Szymczak col. 13, ll. 51-52). Appellants’ argument is
unsupported by objective evidence, such as expert testimony. Argument of
counsel cannot take the place of evidence lacking in the record. Meitzner v.
Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974).
Also related to the previous arguments, Appellants argue that
Szymczak teaches away from Appellants’ invention because Szymczak
teaches moving from a lower density mesh to a higher density mesh, while
Appellants’ invention and Hoppe teach simplification from a higher density
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mesh to a lower density mesh. App. Br. 13-14. We are not persuaded by
Appellants’ arguments. Merely disclosing more than one alternative does not
teach away from any of these alternatives if the disclosure (i.e., Szymczak
and/or Hoppe) does not criticize, discredit, or otherwise discourage the
alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
Appellants have not shown that either reference criticizes, discredits, or
otherwise discourages the alternative options. Nor have Appellants shown
that one of ordinary skill in the art would have been lead in a direction
divergent from the recited invention. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Teaching an alternative method does not teach away from
the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA
1965).
Turning now to arguments specifically addressing the Hoppe
reference, we are unpersuaded by Appellants’ argument that Hoppe does not
teach or suggest “conserving the mesh element to which the analyzing
condition is set,” as recited in claim 1. App. Br. 18. Appellants do not
persuasively explain the alleged errors in the Examiner’s findings (Ans. 5)
or why Hoppe does not describe the disputed limitation. Similarly, we are
not persuaded by Appellants’ arguments regarding that Hoppe does not
consider mesh quality since Appellants are arguing limitations that are not
recited in the claim. App. Br. 18. Claim 1 does not require the consideration
of mesh quality. Instead, claim 1 requires in the alternative at least one of a
lower limit of ST of the quality of element shape, or an upper limit SZ of the
size, or an upper limit TL of an approximation error for shape, or an upper
limit VL for vertex estimation.
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Appellants also present new arguments for the first time in the Reply
Brief directed to the Examiner’s finding that Hoppe describes estimating a
degree of quality conserve of the mesh estimates to satisfy a parameter for
controlling the characteristics of the mesh which is present for an upper limit
VL for vertex estimation. Reply Br. 4 (citing Ans. 7; Hoppe col. 24, ll. 28-
43). Appellants’ arguments are not presented in Response to the Examiner’s
Answer and could have been raised in the Appeal Brief. Compare Ans. 7
with FOA 6. Since the arguments in the Reply Brief directed to the meaning
of “ground plane” could have been presented in the Appeal Brief to rebut the
rejections made in the Final Office Action, Appellants’ arguments are
waived and are not considered. Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative decision) In any event, we are unpersuaded by
Appellants’ argument because Appellants do not meaningfully explain why
Hoppe’s description of a maximum dihedral angle restriction and a manifold
preservation restriction does not describe an upper limit for vertex
estimation, as found by the Examiner. Reply Br. 4; see Ans. 7; FOA 6.
For all these reasons, we sustain the rejection of claims 1, 2, 5, 10, 12,
13 and 16 as obvious over Szymczak and Hoppe.
Further Prosecution
In the event of further prosecution, we direct the Examiner’s attention
to independent claim 10 which recites: “[a]computer readable medium
containing at least one sequence of instructions that, when executed, cause a
machine to effect a finite element analyzing system . . . .” Upon further
prosecution, we leave it to the Examiner to determine whether the computer
readable medium recited in independent claim 10 is directed to non-statutory
subject matter (i.e., transitory, propagating signals). Appellants’
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Specification does not provide an explicit disclosure of a computer readable
medium. Accordingly, when read in light of Appellants’ Specification, the
claimed “computer readable medium” can be broadly construed as
encompassing both transitory, propagating signals and recordable type
media such as memory or disks, etc., “A claim that covers both statutory and
non-statutory embodiments . . . embraces subject matter that is not eligible
for patent protection and therefore is directed to non-statutory subject
matter.” U.S. Patent & Trademark Office, Interim Examination Instructions
for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009,
at 2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf. See also In re Nuitjen, 500 F.3d 1346,
1353-54 (Fed. Cir. 2007) (holding that transitory, propagating signals are not
patentable subject matter under § 101).
We additionally note that claim 10 does not recite that the at least one
sequence of instructions is encoded on the computer readable medium.
DECISION
We AFFIRM the rejection of claims 1, 2, 5, 10, 12, 13 and 16 under
35 U.S.C. § 103(a) as unpatentable over Szymczak and Hoppe.
TIME PERIOD
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).
AFFIRMED

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