Ex Parte Loberg

Patent Trial and Appeal Board

May 13, 2013

11204421 (P.T.A.B. May. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARRIE ARNOLD LOBERG
____________

Appeal 2010-011226
Application 11/204,421
Technology Center 2100
____________

Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1and 3-22. Claim 2 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is directed to a method for designing interior
and exterior spaces in response to user inputs. Subsequent user inputs which
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Application 11/204,421

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conflict with prior choices are resolved or modified. See Spec. 36, Abstract
of the Disclosure.

Claim 1 is illustrative, with key disputed limitations emphasized:
1. In a computerized environment in which a user interface of a
design program is used to design one or more interior or exterior
spaces, the design program comprising a plurality of design elements
that each has one or more static attributes and one or more dynamic
attributes, a method of continually and automatically representing user
input of design elements through the user interface in an accurate and
efficient manner in real-time, comprising the acts of:

receiving an initial user input regarding an initial design
element in a design space to be displayed through a user interface, the
initial user input having one or more initial static attributes and one
or more dynamic attributes;

receiving a subsequent user input regarding a subsequent design
element for the design space, the subsequent user input having one or
more subsequent static attributes and one or more dynamic attributes,
wherein one or more of the subsequent dynamic attributes conflicts
with one or more of the initial dynamic attributes;

automatically resolving the conflict between the initial and
subsequent dynamic attributes by modifying one or more of the initial
dynamic attributes and the subsequent dynamic attributes so that one
or more of the initial element and the subsequent element are
automatically displayed in the design space in a non-conflicting,
modified form;

receiving a different user input that changes at least one of the
one or more initial or subsequent attributes; and

automatically displaying the initial and subsequent elements in
the design space as originally received by undoing the modification.

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The Examiner relies on the following as evidence of unpatentability:
Akasaka US 5,576,965 Nov. 19, 1996

THE REJECTION
The Examiner rejected claims 1 and 3-22 under 35 U.S.C. §102(b) as
anticipated by Akasaka. Ans. 3-12.1

ISSUES
Based upon our review of the record, the arguments proffered by
Appellant and the findings of the Examiner, we find the following issues to
be dispositive of the claims on appeal:
1. Under § 102, has the Examiner erred by finding that Akasaka
teaches “automatically displaying the initial and subsequent
elements in the design space as originally received by undoing the
modification” as set forth in independent claims 1 and 22?
2. Under § 102, has the Examiner erred by finding that Akasaka
teaches “that the modified initial or subsequent attributes are
automatically represented through a user interface accurately in
real-time as originally received in un-modified form” as set forth in
independent claim 12?
3. Under § 102, has the Examiner erred by finding that Akasaka
teaches user inputs which have “one or more initial static attributes

1 Throughout this opinion, we refer to the Appeal Brief filed December 14,
2009; the Examiner’s Answer mailed June 8, 2010; and, the Reply Brief
filed July 30, 2010.
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Application 11/204,421

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and one or more dynamic attributes” as set forth in independent
claims 1, 12, and 22?
4. Under § 102, has the Examiner erred by finding that Akasaka
teaches “automatically changing one or more possible dynamic
attributes of the initial material based on the subsequent static
attributes, and on the positioning of the initial and subsequent
material” and “displaying a parts list interface that reflects the one
or more static attributes and the determined one or more possible
dynamic attributes of the initial and subsequent material” as set
forth in independent claim 14?

ANALYSIS
Appellant argues that the Examiner erred in rejecting independent
claims 1and 22 in view of the failure of Akasaka to disclose “automatically
displaying the initial and subsequent elements in the design space as
originally received by undoing the modification.” Specifically, Appellant
argues that the cited portion of Akasaka relied upon by the Examiner teaches
resolving a conflict, not “automatically undoing a modification that was
previously performed to resolve a conflict.” App. Br. 17.
The Examiner finds that Akasaka discloses, at column 40, lines 35-43
that conflicts may be resolved utilizing a procedure guide command menu,
or in the event such “conflict removal method is missing, mitigation of
constraints is to be achieved in an automatic manner.” Further, the Examiner
finds that Akasaka discloses, at column 43, lines 55-65, the presence of a
“reverse propagation means 5008” which, in conjunction with “constraint
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propagation retaining or keeping means 5007,” utilizes a history of prior
constraint propagations to undo any previous constraint. Ans. 4-5.
We find the Examiner’s position persuasive. Further, to the extent
Appellant relies upon argument that certain actions in the claimed invention
take place “automatically,” we find it is well settled that where, as here,
merely providing an automatic means to replace manual activity to
accomplish the same is an obvious improvement. See In re Venner, 262 F.2d
91, 95 (CCPA 1958). Nor has Appellant shown that automatically
performing these functions in lieu of at least some manual interaction would
have been uniquely challenging or otherwise beyond the level of ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
With regard to the Appellant’s argument (App. Br. 17) that Akasaka
fails to disclose that modified initial or subsequent attributes are
“automatically represented . . . accurately in real-time as originally received
in un-modified form” as set forth in claim 12, we also find that the
Examiner’s reliance on the Akasaka’s disclosure of “constraint propagation
retaining or keeping means 5007” (Ans. 4-5 citing Akasaka, conlumn 43,
lines 55-65) is well placed with regard to the disclosure within Akasaka of
the ability to represent attributes “as originally received in un-modified
form.” For the reasons we set forth above, we find Appellant’s reliance on
the “automatic” presentation of such attributes to be misplaced.
Appellant argues that Akasaka fails to disclose design inputs which
include “one or more initial static attributes and one or more dynamic
attributes” as set forth in independent claims 1, 12, and 22. App. Br. 21-22.
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The Examiner finds that Akasaka discloses user input of attributes,
citing column 38, lines 42-50. Ans. 4.
We acknowledge that the Examiner has failed to show that the
attributes disclosed in Akasaka are either “static” or “dynamic” attributes;
however, we find Appellant’s claims demonstrate no particular difference in
the manner in which such attributes are processed. Consequently, within
Appellant’s claims, we find the terms “static” and “dynamic” to be merely
descriptive, nonfunctional material. Nonfunctional descriptive material
cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). As a
consequence we find that the Examiner did not err in finding a teaching of
user input of attributes within Akasaka.
Appellant argues that the Examiner erred in rejecting independent
claim 14 by finding that Akasaka discloses “automatically changing one or
more possible dynamic attributes of the initial material based on the
subsequent static attributes, and on the positioning of the initial and
subsequent material” and “displaying a parts list interface that reflects the
one or more static attributes and the determined one or more possible
dynamic attributes of the initial and subsequent material” as set forth within
that claim. App. Br. 22-24.
The Examiner finds that Akasaka discloses the positioning of material
within the design space and the changing of design attributes and material
position based upon subsequent design attributes, citing column 40, lines 41-
43. Ans. 10. Further, the Examiner finds that Akasaka provides a design
aiding system applicable to any product of which specification items and
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attributes “can be arranged in a list . . .” citing column 27, lines 18-21. Ans.
23-24.
As we noted above, we give no patentable weight to Appellant’s
recitation of “automatic,” “dynamic” or “static” for the reasons we
previously set forth. Similarly, with respect to claim 14, we find that
Akasaka teaches the setting forth of a list. We also find that the content of
that list has no impact on the operation of the claimed system and
consequently constitutes nonfunctional descriptive material. We therefore
find that the Examiner did not err by finding that Akasaka anticipates the
claimed changing of attributes or material position in response to subsequent
attributes and the display of a “parts list interface.”
For the reasons set forth above, we find Appellant’s Arguments do not
show error in the Examiner’s citation and characterization of Akasaka as
teaching independent claims 1, 12, 14, and 22, and claims 3-11, 13, and 15-
21 depending therefrom. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner did not err in rejecting claims 1 and 3-22 under § 102.

ORDER
The Examiner’s decision rejecting claims 1 and 3-22 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)(1)(iv).

AFFIRMED
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