Ex Parte Kasprzak et al

Patent Trial and Appeal Board

Aug 15, 2013

11143883 (P.T.A.B. Aug. 15, 2013)

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.
11/143,883 06/01/2005 Kristopher C. Kasprzak 2005P57004 US 8099
45113 7590 08/16/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
SAMS, MICHELLE L
ART UNIT PAPER NUMBER
2677
MAIL DATE DELIVERY MODE
08/16/2013 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 KRISTOPHER C. KASPRZAK,
DANIEL STAPLES, and VADIRAJ MYSORE
____________

Appeal 2010-011123
Application 11/143,883
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5, 7-9, 11-20, 22-25, and 27.
1
We have jurisdiction under 35
U.S.C. § 6(b).

1
Claims 2, 4, 6, 10, 21, and 26 have been cancelled.
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2
We affirm-in-part and enter new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates generally to computer graphics and more
specifically to a method of binding objects in a three-dimensional geometric
modeling system such as a computer aided design (CAD) system. Abstract;
Spec. ¶¶ 1-2.
2

Claims 1, 5, 8, 14, 17, 22, 24, and 27 are independent. Claims 1, 8,
and 17 are illustrative of the invention (disputed limitations in italics):
1. A method of binding a plurality of features in a
geometric model, comprising the steps of:
modifying a geometric model by inserting a modifying
object feature into said geometric model between a prior object
feature of said geometric model and a following object feature of
said geometric model, wherein said modifying object feature has
an entity that modifies the prior object feature and wherein said
object features contain a plurality of feature entities;
re-computing said geometric model in a programmable
processing unit, comprising the steps of:
verifying a proxy bind operation for said object
features; and
if said verifying step is not successful:

2
We refer to Appellants’ Substitute Specification filed on November 15,
2005.
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rolling back said geometric model to a prior
feature state;
binding the modified object feature to the
feature entity for the prior object feature; and
repeating said re-computing step; and
rolling the modified geometric model forward to display
said object features.
8. A method of designing a geometric model,
comprising the step of:
binding a child entity having a parent entity to an
ancestor entity if said parent entity has been destroyed in a
programmable processing unit wherein said parent entity and
said ancestor entity may be one of spline and analytic.
17. A computer readable medium for storing
executable instructions to perform a method of binding a
plurality of features in a geometric model, comprising:
instructions for modifying a geometric model by
inserting a modifying object feature into said geometric model
between a prior object feature of said geometric model and
following object feature of said geometric model, wherein said
modifying object feature has an entity that modifies the prior
object feature and wherein said object features contain a
plurality of feature entities;
instructions for re-computing said geometric model; and
instructions for rolling the modified geometric model
forward to display said object features.

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Rejections on Appeal
The Examiner has rejected claims 1, 3, 5, 7, 9, 11, 12, 14-20, and 27
under 35 U.S.C. § 103(a) as being unpatentable over Maystrovsky (EP
0 768624 A2, Apr. 16, 1997) and Rittman (US 6,782,517 B2, Aug. 24,
2004). Ans. 3-9.
The Examiner has rejected claims 8, 13, and 22-25 under 35 U.S.C.
§ 103(a) as being unpatentable over Maystrovsky and Microsoft Word 2003,
Microsoft Corporation, 1983-2003. Ans. 9-11.
ISSUES
Based on Appellants’ arguments, the dispositive issues on appeal are:
3

(1) Does the combination of Maystrovsky and Rittman teach or
suggest “verifying a proxy bind operation for said object features,” as recited
in independent claim 1, and similar “binding” limitations recited in
independent claims 5, 14, and 27 and dependent claim 18?
(2) Does the combination of Maystrovsky and Rittman teach or
suggest “inserting a modifying object feature into said geometric model
between a prior object feature of said geometric model and following object
feature of said geometric model,” as recited in independent claim 17?
(3) Did the Examiner improperly rely on Microsoft Word 2003 as
prior art in rejecting independent claims 8, 22, and 24?

3
Because these issues are dispositive, we need not reach Appellants’
additional arguments regarding other claim limitations.
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ANALYSIS
35 U.S.C. § 103(a) Rejection of Claims 1, 5, 14, 18, and 27
Appellants contend that Maystrovsky and Rittman do not teach or
suggest “verifying a proxy bind operation for said object features,” as recited
in claim 1. App. Br. 28-32; Reply Br. 18-20. First, Appellants point out that
Maystrovsky does not use the term “bind,” as acknowledged by the
Examiner. App. Br. 29; Reply Br. 18; see also Ans. 5. Appellants argue
that while Figure 5 of Maystrovsky appears to teach a concept similar to
binding (e.g., solid 40 depends on solid 42), it is at a much higher level of
abstraction than the binding recited in Appellants’ claims. App. Br. 29;
Reply Br. 18-19. Moreover, Appellants argue that Maystrovsky’s disclosure
is limited to maintaining a history of the state of the object model and does
not consider the issue of failed bind operations. App. Br. 30. Finally,
Appellants contend that Rittman’s disclosure of a photomask layout editor
that automatically returns a polygon to its original position or places it in a
position to avoid a design rule violation has little to do with verifying a bind
operation as recited in claim 1. App. Br. 30-31; Reply Br. 20.
We agree with Appellants that the Examiner has not shown that the
combination of Maystrovsky and Rittman teaches or suggests “verifying a
proxy bind operation for said object features.” Appellants’ Specification
explicitly defines “bind” as “refer[ring] to an associative parent-child
relationship between one element and another, wherein if Element B is
bound to Element A and Element A moves, then Element B moves also.”
Spec. ¶ 18. The Examiner states that the rejection “relies on Maystrovsky
for the binding features” (Ans. 13), yet the Examiner has not pointed to
anything in Maystrovsky that teaches or suggests binding as that term is
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used by Appellants. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art that Figure 5 of Maystrovsky
illustrates how different entities in the model are related to each other. Ans.
12. We agree with Appellants, however, that the history module shown in
Figure 5 of Maystrovsky does not teach or suggest binding as that term is
used in Appellants’ claims. See App. Br. 29-30. Furthermore, while the
Examiner relies on Rittman for “verification” (Ans. 13), we find nothing in
Rittman that teaches or suggests verifying a bind operation as recited in
claim 1.
For at least these reasons, we do not sustain the Examiner’s
obviousness rejection of claim 1 over Maystrovsky and Rittman. Appellants
repeat the same arguments for independent claims 5, 14, and 27, as well as
dependent claim 18 (which depends from independent claim 17), all of
which recite similar limitations regarding binding and verifying bind
operations. App. Br. 36-39, 46-48, 52-53. Therefore, for the same reasons
explained with respect to claim 1, we do not sustain the obviousness
rejection of claims 5, 14, 18, and 27. Furthermore, we do not sustain the
obviousness rejection of claims 3 and 9 (which depend from claim 1), claims
7, 11, and 12 (which depend from claim 5), and claims 15 and 16 (which
depend from claim 14).
35 U.S.C. § 103(a) Rejection of Claim 17
Independent claim 17 recites, inter alia, “inserting a modifying object
feature into said geometric model between a prior object feature of said
geometric model and following object feature of said geometric model.”
The Examiner relies on Maystrovsky for teaching this limitation. Ans. 4
(Examiner’s rejection of claim 1, which recites the same limitation); Ans. 8
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(Examiner’s rejection of claim 17, referring to rejection of claim 1).
Specifically, the Examiner finds that Maystrovsky teaches inserting a
cylinder (i.e., a modifying object feature) into a geometric model between
face f1 and face f3 (i.e., between a prior object feature and a following
object feature) of box 30. Ans. 4 (citing Maystrovsky, Fig. 3; col. 6, ll. 49-
57).
Appellants contend that Maystrovsky does not teach or suggest
inserting an object feature between a “prior” object feature and a
“following” object feature. App. Br. 23-28; Reply Br. 14-18. According to
Appellants, the terms “prior” and “following” describe a temporal
relationship between two object features in a dependency tree, the following
object feature having been added to the geometric model after the prior
object feature. App. Br. 19-20, 26-27; Reply Br. 15. Even if the terms are
interpreted as referring to a spatial relationship, Appellants argue that the
cylinder in Maystrovsky is not inserted between face f1 and face f3 because
those faces are deactivated and replaced with new faces f7 and f8 when the
cylinder is inserted. Reply Br. 16-17 (citing Maystrovsky, col. 6, l. 52 – col.
7, l. 2).
We are not persuaded by Appellants’ arguments. First, Appellants do
not define “prior” and “following” in their Specification, which uses the
terms only to summarize the claims and in the claims themselves.
Furthermore, while Appellants argue that the terms have a specific meaning
with reference to a dependency tree, claim 17 does not recite any language
limiting its application to a dependency tree, as the Examiner correctly finds.
Ans. 12. Under these circumstances, we agree with the Examiner that the
broadest reasonable interpretation of “prior” and “following” in light of
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Appellants’ Specification may refer to an order of the object features, which
can describe a spatial relationship. See Ans. 11.
4
Thus, as properly found
by the Examiner, Maystrovsky teaches or suggests inserting a modifying
object feature (a cylinder) into a geometric model between a prior object
feature and a following object feature (between faces f1 and f3). Ans. 4, 11-
12. Even though faces f1 and f3 are later deactivated and replaced by faces
f7 and f8, we nevertheless agree with the Examiner that insertion of the
cylinder is between faces f1 and f3. Ans. 12.
For these reasons, we sustain the obviousness rejection of independent
claim 17 over Maystrovsky and Rittman. We also sustain the obviousness
rejection of dependent claims 19 and 20, for which Appellants have not
made separate, detailed arguments. See App. Br. 48-49. As discussed
above, we do not sustain the rejection of dependent claim 18 because it
recites the “verifying a proxy bind operation” limitation.
35 U.S.C. § 103(a) Rejection of Claims 8, 22, and 24
Appellants contend that the Examiner improperly cited “Microsoft
Word 2003” as prior art in rejecting independent claims 8, 22, and 24 under
35 U.S.C. § 103(a). App. Br. 57-60; Reply Br. 25-29. We agree with
Appellants.
In rejecting claims 8, 22, and 24, the Examiner relies on figures
purportedly generated by the Examiner using a version of the Microsoft
Word product. Ans. 9-10, 13. These figures do not qualify as prior art. To

4
See also Merriam Webster’s Collegiate Dictionary 927 (10th ed. 1999)
(defining “prior” as “earlier in time or order”); id. at 453 (defining
“following” as “being next in order or time”).
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the extent the Examiner relies on the Word program itself, the Examiner has
failed to establish that the “ancestry” feature was known or used by others in
this country before Appellants’ effective filing date, see 35 U.S.C. § 102(a),
or in public use or on sale in this country more than one year before
Appellants’ effective filing date, see 35 U.S.C. § 102(b). The screenshot
indicating that the Examiner’s version of Word includes Service Pack 2, and
the Examiner’s bare assertion that Service Pack 2 was released in 2003
according to Microsoft’s website, are insufficient to show that the product
relied on by the Examiner is properly cited as prior art. Indeed, the evidence
of record is to the contrary. See App. Br. 59-60; Reply Br. 27-28.
Accordingly, we cannot sustain the Examiner’s § 103(a) rejection of
independent claims 8, 22, and 24, and dependent claims 13, 23, and 25.
New Ground of Rejection for Claims 8, 13, 22, and 23
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
8, 13, 22, and 23 under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.
Claim 8 is a method claim reciting a single, conditional step: “binding
a child entity having a parent entity to an ancestor entity if said parent entity
has been destroyed in a programmable processing unit wherein said parent
entity and said ancestor entity may be one of spline and analytic” (emphasis
added). The step of binding a child entity to an ancestor entity is expressly
conditioned on the parent entity having been destroyed. However, there is
no requirement in the claim that the parent entity be destroyed, and thus no
requirement that the binding step occur. Therefore, under the broadest
reasonable interpretation, the parent entity would not be destroyed and the
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binding step would never be realized. See Ex parte Katz, 2011 WL 514314,
at *4 (BPAI Jan. 27, 2011) (interpreting a similar conditional limitation). If
the binding step is not performed, however, claim 8 in essence becomes a
method claim without any steps because there are no other steps recited in
the claim. We are unable to determine the metes and bounds of such a
claim, and we therefore conclude that claim 8 is indefinite under 35 U.S.C.
§ 112, second paragraph. Claim 13 depends from claim 8 but does not add
any method steps, so we also conclude that claim 13 is indefinite under 35
U.S.C. § 112, second paragraph.
Claim 22 recites “[a] computer readable medium for storing
executable instructions to perform a method of binding a plurality of features
in a geometric model, comprising the step of,” and then recites the same
conditional step recited in claim 8. Our decisions have drawn a distinction
between method claims and system or apparatus claim for purposes of
conditional “if” language. See, e.g., Katz, 2011 WL 514314, at *4-5.
However, we conclude that claim 22 as written is more analogous to a
method claim than a system claim and therefore interpret it in the same
manner as the method recited in claim 8. See Ex parte Tosey, 2013 WL
3326837, at *7 (PTAB May 15, 2013). Thus, for the same reasons discussed
with respect to claim 8, we are unable to determine the metes and bounds of
claim 22 and conclude that it is indefinite under 35 U.S.C. § 112, second
paragraph. Claim 23 depends from claim 22 but, like claim 13, does not add
any steps, so we also conclude that claim 23 is indefinite under 35 U.S.C.
§ 112, second paragraph.
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New Ground of Rejection for Claims 24 and 25
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
24 and 25 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement.
Claim 24 recites:
A computer system for three-dimensional geometric
modeling using a machine readable program logic comprising:

means for binding a child entity having a parent entity to
an ancestor entity if said parent entity has been destroyed,
wherein said parent entity and said ancestor entity may be one
of spline and analytic.

Claim 24 is structured as a single means claim, i.e., a means recitation
that does not appear in combination with another limitation. Accordingly,
the claim is not subject to 35 U.S.C. § 112, sixth paragraph, which provides
that:
An element in a claim for a combination may be expressed as a
means . . . for performing a specified function without the
recital of structure . . . and such claim shall be construed to
cover the corresponding structure . . . described in the
specification and equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). Because § 112, sixth
paragraph, does not limit the interpretation of the recited means to the
structure disclosed in the Specification and equivalents, the claim covers
every conceivable means for achieving the stated result of binding a child
entity to an ancestor entity, while the Specification “discloses at most only
those means known to the inventor.” See In re Hyatt, 708 F.2d 712, 714
(Fed. Cir. 1983) (“The long-recognized problem with a single means claim
is that it covers every conceivable means for achieving the stated result,
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while the specification discloses at most only those means known to the
inventor.”). Claim 24, therefore, is subject to an undue breadth rejection for
lack of enablement under 35 U.S.C. § 112, first paragraph. See id. at 715;
see also MPEP 2164.08(a). Dependent claim 25 adds only a wherein clause
further reciting the type of geometric model and is therefore also structured
as a single means claim subject to a rejection under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
DECISION
5

The Examiner’s rejection of claims 1, 3, 5, 7, 9, 11, 12, 14-16, 18, and
27 under 35 U.S.C. § 103(a) over Maystrovsky and Rittman is reversed.
The Examiner’s rejection of claims 17, 19, and 20 under 35 U.S.C.
§ 103(a) over Maystrovsky and Rittman is affirmed.
The Examiner’s rejection of claims 8, 13, and 22-25 under 35 U.S.C.
§ 103(a) over Maystrovsky and Microsoft Word 2003 is reversed.
We enter a new ground of rejection for claims 8, 13, 22, and 23 under
35 U.S.C. § 112, second paragraph, for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
We enter a new ground of rejection for claims 24 and 25 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.

5
We have decided the appeal before us. In the event of further prosecution
of claims 14-20, 22, and 23, which recite a computer readable medium, the
Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346, 1356-57
(Fed. Cir. 2007) (holding that transitory signals are not patent-eligible
subject matter under 35 U.S.C. § 101), and Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
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-IN-PART;
37 C.F.R. § 41.50(b)

ELD