Ex Parte McArdle et al

Board of Patent Appeals and Interferences

Nov 15, 2010

10656020 (B.P.A.I. Nov. 15, 2010)

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.
10/656,020 09/05/2003 Paul Joseph McArdle G&C 30566.255-US-U1 8147
55895 7590 11/15/2010
GATES & COOPER LLP
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
MORRISON, JAY A
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
11/15/2010 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 PAUL JOSEPH MCARDLE, CHAD STEVEN AMES,
LAND SHENG YUN, and SCOTT ANTHONY ARVIN
____________

Appeal 2009-008451
Application 10/656,020
Technology Center 2100
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.
____________

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-008451
Application 10/656,020

2
I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-30. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

A. INVENTION
The invention at issue on appeal relates generally to architectural and
engineering projects and to Extensible Markup Language (XML), and in
particular, to a method, apparatus, and article of manufacture for organizing
and managing architectural projects with supporting XML documents.
(Spec. [0003].)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:
1. A computer-implemented method for defining a
project in a computer graphics program comprising:
(a) obtaining a project file in the computer graphics
program comprising general information regarding the project;
(b) creating a directory structure in the computer graphics
program for the project wherein:
(i) one or more project drawing files are organized
into various folders by drawing file type of the one or
more project drawing files;
(ii) the one or more project drawing files are
composed of either a building information model for the
Appeal 2009-008451
Application 10/656,020

3
project or a report generated from the building
information model; and
(iii) the one or more project drawing files are
organized into the various folders based on the building
information model or the report accordingly;

(c) obtaining a companion file for each project drawing
file, wherein each companion file provides information used to
create the directory structure and comprises information to link
each project drawing file to the project based on the building
information model or the report; and

(d) displaying, in the computer graphics program on a
display device, the one or more project drawing files in the
various folders.

C. REFERENCES
The Examiner relies on the following references as evidence:

Fujieda 2002/0083082 A1 Jun. 27, 2002

Bondy 2002/0191219 A1 Dec. 19, 2002

Halpert 2004/0225958 A1 Nov. 11, 2004

Rappaport 6,850,946 B1 Feb. 1, 2005

Appeal 2009-008451
Application 10/656,020

4
D. REJECTIONS
The Examiner makes the following rejections.
Claims 1-9, 11-19 and 21-29 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Bondy in view of Halpert and further in view of
Fujieda.
Claims 10, 20 and 30 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Bondy, in view of Halpert and further in view of Fujieda
and further in view of Rappaport.

II. ISSUE
Has the Examiner set forth a reasoned conclusion of obviousness of
the claimed invention as recited in independent claim 1? Specifically, is
independent claim 1 limited to the building industry and a CAD application
as Appellants repeatedly argue?

III. PRINCIPLES OF LAW
Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
Appeal 2009-008451
Application 10/656,020

5
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415-16. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 416). The Federal Circuit relied in part on the fact
that Leapfrog had presented no evidence that the proposed modification was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. at 1162.
Appeal 2009-008451
Application 10/656,020

6
Similarly, the Federal Circuit recently found that adapting existing
electronic processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
2008) (quoting KSR, 550 U.S. at 421).

V. ANALYSIS
From our review of Appellants' Specification, we find that Appellants'
Specification is drafted by way of examples:

[0005] As described above, CAD applications are often used to create
drawings used in the architectural, engineering, and construction
(AEC) industry. The drawing are often defined by a collection
(referred to as objects) of one or more graphical elements, such as
lines, circles, polylines, text, or dimensions. For example, a collection
of various lines may make up a door or window object. CAD
programs may treat each object as a single element for creation,
manipulation, and modification. Some CAD programs may also
provide objects that are special entities with predefined behaviors and
display characteristics.

We note that independent claim 1, does not recite any specific field of
endeavor which would tie it to the "architectural, engineering, and
construction (AEC) industry" or "CAD applications" more than the claimed
"computer graphics program."
Appeal 2009-008451
Application 10/656,020

7
We find instant claim 1 lacks the context above to be interpreted in
the manner in which Appellants desire absent some additional express claim
limitations being present therein. Appellants' Specification further goes on
to identify a "project structure" in the architectural, engineering, and
construction fields as follows:

Project Structure

[0038] In the AEC industry, various parties may undertake to build
and complete a project. One or more embodiments of the information
provide for the organization and maintenance of information for such
projects. In this regard, building information models are organized
into projects. FIG. 4A illustrates the concept of a project 400 that is
composed of two parts, a building information model 402 and reports
404 generated from the model 402. FIG. 4B further illustrates the
components of project 400. As illustrated in FIG. 4B, the building
information model 402 is composed of elements 406 and constructs
408, while reports 404 consist of views 410 and plotting sheets 412.
Within a project 400, elements 406 are referenced into constructs 408,
constructs 408 are referenced into views 410, and views 410 are
referenced into plotting sheets 412.

(Spec. 9-10). Again, the difficulty with the "AEC industry" examples is that
the invention as expressly claimed provides no context for such a limited
interpretation, and we find to do so would amount to reading limitations into
the claimed invention. This we cannot do.

Appellants' traverse the rejection of independent claims 1, 11, and 21 for
the 9 reasons stated at pages 7 and 8 of the Appeal Brief. We provide
succinct responses thereto and further detailed responses subsequently.
Appeal 2009-008451
Application 10/656,020

8
1. The Examiner identifies Fujieda as teaching a CAD program having
computer graphics program and having computer graphics display and
the Examiner identifies Halpert for the displaying (Answer 5 and 6).
2. The Examiner identifies Bondy as teaching a project file which would
be in combination with the above teaching of Fujieda as teaching a
CAD. (Answer 5).
3. The Examiner identifies Fujieda as teaching a drawing in a computer
graphics program. (Answer 6 ).
4. The Examiner identifies Bondy ( [0018] meta data- IDs; [0019] meta
data tags for proper identification of resources and to associate the
resources with the proper project and documents ) as teaching a
drawing file having a drawing file type. (Answer 5).
5. The Examiner identifies Bondy ( [0019] concerning being stored in
folders) as teaching organizing a drawing file into a folder based on a
drawing file type. (Answer 5).
6. The Examiner identifies Bondy ( [0020] concerning the template) as
teaching a building information model or a report from a building
information model. (Answer 5).
7. The Examiner identifies Bondy ( [0020] concerning being stored in a
repository ) as teaching a building information model or a report from
a building information model. (Answer 5).
8. The Examiner identifies Bondy ( [0018-0019] concerning meta data
and meta data tags which associate with the proper projects and
documents, and we further note paragraph [0021] identifies putting all
the information together in a validity proof for printing which would
be assembling all the data together which clearly teaches and
Appeal 2009-008451
Application 10/656,020

9
evidences a linkage of files in the file system ) as teaching a
companion file for each drawing file. (Answer 5).
9. The Examiner identifies Bondy [0018-0019] concerning meta data
and meta data tags which associate with the proper projects and
documents and we further note paragraph [0021] identifies putting all
the information together in a validity proof for printing which would
be assembling all the data together which clearly teaches and
evidences a linkage of files in the file system as teaching a companion
file for each drawing file. (Answer 5). Paragraph [0018] identifies
two distinct phases, the creation phase and the production phase in
figure 3, wherein skilled artisans would have realized that each project
is different and would necessarily require a file structure which would
be different as identified in box 202.

Response to Appellants' Contentions
Appellants' first contention is that Bondy is directed towards printing
a project of documents containing variable data and not a computer graphics
program and the printing application of Bondy is not a computer graphics
program. (App. Br. 8). However, the Examiner did not rely upon the
teachings of Bondy for the computer graphics program limitation/aspects of
the claimed invention. Furthermore, the claimed invention merely recites
that the method for defining a project is "in a computer graphics program"
(emphasis added). Therefore, the specifics of the computer graphics
program are not expressly recited in the language of independent claim 1 to
distinguish the claimed invention. Appellants further argue that printing
documents is not even remotely similar to a computer graphics program or
Appeal 2009-008451
Application 10/656,020

10
drawings in a computer graphics program. (App. Br. 8). We find no
limitations in independent claim 1 detailing the specifics of the computer
graphics program or the specifics of the drawings therein with which to
distinguish independent claim 1. Therefore, Appellants' arguments are not
persuasive of error in the Examiner’s showing of obviousness of
independent claim 1.
Appellants argue that the limitations with respect to the project
drawing files in a computer graphics program, and the drawing files are
organized into various folders by the drawing file type of the drawing files
provides "context of the invention in that it relates to drawings and drawing
files in a computer graphics program." Appellants' reasoning is rather
circular by restating the claim language in arguing that it provides context to
the claim language again. (App. Br. 8-9). We find Appellants' argument to
be unpersuasive of error in the Examiner's showing of obviousness of the
claimed invention. Appellants argue that "a drawing file (i.e., a file
containing a drawing) is not similar to a document that contains a font or a
graphic." (App. Br. 9). While we may agree with Appellants in many
specific unrecited and unclaimed limitations and differences, in a general
and generic sense, but a file is a file and the rest is nonfunctional descriptive
material regarding the file without further limitations thereto to give it
context.
Appellants argue that the claimed drawing files are organized into
folders by drawing file type and nowhere in Bondy is there a remote
reference to organizing files in any location based on the type of file as
claimed. (App. Br. 9).
Appeal 2009-008451
Application 10/656,020

11
Appellants argue that Bondy described story references for the project
in folders based on a configuration file and the configuration file is not a
drawing file type. The Examiner explains at page 14 of the Answer that
different types of files such as images and fonts are stored in certain
different folders where the type of resource defines the folder in which it is
stored. We agree with the Examiner.
Appellants argue that the present claims provided that the project
drawing files are composed of either a building information model for the
project or a report generated from the model and that "throughout the text of
the specification as filed, a building information model is an information
model for a building ([0015] - [0017], [0038], [0040], etc.). Accordingly,
the use of the term 'building information model' in the claims provides a
specific meaning and intent that cannot merely be ignored." (App. Br. 9).
While we agree with Appellants that terms cannot be ignored, we do not find
any "specific meaning" or definitions in these portions of Appellants'
Specification. As discussed above, we find no express limitations in the
language of independent claim 1 to narrow the interpretation as Appellants
may have intended. We find that many of the dependent claims add
individual or discrete portions of the overall system that Appellants may
have in their "specific meaning and intent" yet it is not found in independent
claim 1. Therefore, Appellants' arguments are not persuasive of error in the
Examiner showing of obviousness of independent claim 1.
Furthermore, we find that "the one or more project drawing files are
composed of either a building information model for the project or a report
generated from the building information model" are directed to
Appeal 2009-008451
Application 10/656,020

12
nonfunctional descriptive material that does not further limit the method in
the claimed invention.
Appellants further argue that the teachings of Bondy's print job
template have no relationship to the "building information model as
claimed." Appellants further contend that the "structure and use of the
various folders and drawing files in the particular folders provides functional
advantages in the building industry." (App. Br. 10). We find Appellants'
argument is not commensurate in scope with the express language of
independent claim 1 and is therefore not persuasive of error in the Examiner
showing of obviousness. Furthermore, Appellants' argument seems to
discount completely that in the building industry items are printed for use on
job sites, etc.
Appellants argue that the drawing files are stored/organized in folders
"based on the building information model or report" and that Bondy fails to
describe the claimed "building information model." We find Appellants'
argument to be unpersuasive of error since the model is not expressly
functionally recited in the language of independent claim 1.
Appellants further contend that the companion file is created for each
project drawing file and that Bondy's configuration file is a single file that is
used to store all document project information which is not created
separately for each project file, as claimed. (App. Br. 10). The Examiner at
page 16 of the Answer identifies that "[i]t is respectfully submitted that the
entire project could represent a single document which would read on the
project drawing file for which the configuration file stores resources in
folders. Therefore it is respectfully submitted that Bondy teaches these
limitations." We agree with the Examiner’s limited example to meet the
Appeal 2009-008451
Application 10/656,020

13
claim limitations that where there is only one file there would only need to
be one companion file where the configuration file would meet this limited
situation as the Examiner has identified for obviousness due to the claim
breadth. Therefore, we find Appellants' argument to be unpersuasive of
error in the Examiner showing of obviousness. Additionally, we note that
Bondy teaches in paragraph [0018] the use of metadata to permit tracking in
reporting of status and other variables. We further note that paragraph
[0019] states that "the resources for the project are stored in folders, i.e.
directories in accordance with the configuration file and tagged with
appropriate and meta data tags to identify the resources and associate the
resources with the proper project and documents."
We further note that paragraphs [0020]-[0021] discuss proofing
wherein it would have been readily apparent to those skilled in the art to
"keep in mind that all resources have been tagged with meta data for quick
retrieval. In step 220, the print job is prepared by importing variable data
such as personalized data from the customer and the variable data is
integrated into the fixed data template." To do this, Bondy must prepare
some companion file where metadata for each drawing is kept track of so
that it may be imported quickly. We find that the metadata is equivalent to
the companion file for each file which stores data about the data and the
configuration file co-locates all that information in a single location which is
readily accessible. We find Appellants' argument to be unpersuasive of error
since the “model” itself is not expressly functionally recited in the language
of independent claim 1.
Appellants argue that a single configuration file of Bondy cannot
possibly teach a companion file that is used to "link each and every project
Appeal 2009-008451
Application 10/656,020

14
drawing file to a project wherein the link is based on a building information
model or report as claimed." (App. Br. 11). Appellants' argument goes
beyond the scope of the express language of independent claim 1 and
therefore is not persuasive of the error in the Examiner’s showing of
obviousness.
Appellants argue that the ability to link a file based on the building
information model provides the ability to manage drawing files that have
different meaning in different folders and such functional advantages further
illustrated in dependent claims 6-9. Appellants' arguments regarding the
dependent claims do not show error in the Examiner's obviousness rejection
of independent claim 1. (App. Br. 11).
Appellants argue that the Examiner's reliance upon the Halpert
reference is in error wherein Halpert is not in the building information
industry and cannot be applied. (App. Br. 11). While Halpert may not be in
the "building information industry”, the Examiner merely relied upon it as a
teaching of an output display device for computer graphics program and we
find Appellants' argument to be unpersuasive of error in the Examiner's
reliance thereupon. We find that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have had some
form of output device as suggested by either Halpert or Fujieda. Therefore,
Appellants' argument does not show error in the Examiner's obviousness
rejection.
Appellants contend that the contents of the files themselves
"absolutely provide functional limitations with respect to the content of the
files" (App. Br. 11). But Appellants do not explain how or why these
claimed limitations provide functional limitations to the computer
Appeal 2009-008451
Application 10/656,020

15
implemented method. Appellants contend that "rather than merely
organizing files into random folders, the type of drawing -i.e., drawing file
types are used to organize the files into particular folders." (App. Br. 12).
Appellants further contend that it is "impossible to separate the claim
limitations and their functional aspects relating to both how the files are
organized and how the files are linked to a project." (App. Br. 12). We
disagree with Appellants' wherein the claim language does not set forth the
functional aspects relating to how the files are organized and how the files
are linked, but merely sets forth that there is "information" to organize and
to link. The "information" does not perform the function of organizing or
linking and is therefore nonfunctional descriptive material.
Appellants argue that Bondy described storing resources for the
project in folders based on a configuration file which is not a "drawing file
type" (App. Br. 12). Appellants maintain that paragraph [0018] is relied
upon to teach a directory structure where the files are organized into various
folders based upon "file content" which does not "even remotely [refer] to
organizing files into a folder based upon a [drawing] file type. (App. Br.
12). We disagree with Appellants and find that it is merely the label placed
upon the information that differs. While Appellants may find that
significant, we do not find that it distinguishes over the prior art combination
as applied by the Examiner in the rejection.
With respect to Appellants' arguments that the claim provides that the
drawing files are composed of "either a building information model or
report" (App. Br. 13), we find that the “model” is not expressly recited, but
the file is recited. The claimed "building information model or report" are
further descriptors of the nonfunctional descriptive material which are within
Appeal 2009-008451
Application 10/656,020

16
the file. This information does nothing. It may be used, but it does nothing
functionally. In later dependent claims, an XML document (claim 3) which
may possess some function is recited, but independent claim 1 recites no
such detail and to import such limitations would be improper.
Appellants argue that the "companion file is used to "create the
directory structure" and nowhere does Bondy teach creation of a directory
structure. (App. Br. 13). The Examiner has equated the companion file with
the metadata tags (Answer 5, 15, and 16) which we found to be reasonable,
as discussed above.
Appellants argue that it is "improper and meritless to attempt to
merely utilize a reference that discloses a computer graphics program
[Fujieda] and combine such a reference with an entirely separable and
unrelated reference. (App. Br. 13). Appellants dispute the Examiner's
proffered motivation in the final rejection wherein each reference is in a
specific environment. We note the Examiner has relied upon the teachings
of the references for generic teachings which would be applicable to a wide
range of fields of endeavor and note that the preamble of the instant claimed
invention is directed to merely a "computer implemented method for
defining a project on a computer graphics program." We find no specific
field of endeavor recited therein nor in the body of the claim with which to
support Appellants' asserted distinctions between the various teachings of
the applied prior art references. Therefore, we do not find Appellants'
arguments to be persuasive of the error in the Examiner's combination of
teachings of the prior art references.
At page 14 of the Appeal Brief, Appellants reiterate the same with
respect to the data contents being functional in the claims and discusses a
Appeal 2009-008451
Application 10/656,020

17
hypothetical if the claims were modified to remove the word "drawing" from
the "files." As discussed above, we do not find Appellants' argument to be
persuasive of error in the Examiner showing of obviousness and furthermore
the hypothetical modification of the claims does not show error in the
Examiner's showing of obviousness. Therefore, we will sustain the rejection
of representative independent claim 1 and independent claims 11 and 21
falls therewith.
With respect to dependent claims 2, 12, and 22, we address
representative claim 2. Appellants argue that the dependent claims provided
"general information regarding the project is selected from a group
consisting of..." which is closed to the inclusion of materials other than those
recited. (App. Br. 14-15). The Examiner maintains at pages 6, 7, and 17 of
the Answer that the general information is nonfunctional descriptive material
which does not functionally limit independent claim 1. We agree and adopt
the Examiner's position. We find that the content of the material does not
further limit the method of independent claim 1. Therefore, we will sustain
the rejection of representative dependent claim 2.
With respect to dependent claims 3, 13, and 23, we address
representative claim 3. Appellants argue that the project drawing file is an
XML document. (App. Br. 15). The Examiner maintains at page 17 of the
Answer that Halpert teaches the use of XML files or documents for storing a
project. We agree with the Examiner and find that the language of the
dependent claim 3 does not set forth any specific limitations with regards to
the XML file or document with which to distinguish the claimed invention.
Therefore, we will sustain the rejection of representative dependent claim 3.
Appeal 2009-008451
Application 10/656,020

18
With respect to dependent claims 4, 14, and 24, we address
representative claim 4. Appellants rely upon the same argument advanced
with respect to dependent claim 3 which we did not find persuasive of error.
(App. Br. 17). Therefore, we will sustain the rejection of representative
dependent claim 4.
With respect to dependent claims 5, 15, and 25, Appellants argue that
the claims provide specific limitations which cannot be ignored and are
specific to the "building industry" and provide context and scope for the
claims. (App. Br. 17-18). The Examiner maintains at page 18 of the
Answer that the labels assigned to the folders are nonfunctional descriptive
material. We agree with the Examiner as discussed above. Appellants
further argue that the claim limitations provide context for the claims and
provide "a specific number of folders," "establishes a specific corresponding
folder for each type of specific drawing file," "and establishes different
folders used for files within a building information model than those used
for a report." (App. Br. 18). We find Appellants' argument to be
unpersuasive of error in the Examiner showing wherein the claim to "labels"
merely recite labels and could be identified as folders "1", "2", "3", "4" with
no functional change in the operation of independent claim 1.
With respect to dependent claims to 6, 16, and 26, we will address
representative claim 6. Again, Appellants argue that the claims are directed
to "the building industry and a CAD application" (App. Br. 18). We find
this argument unpersuasive since it is not commensurate with the scope of
claim 6. Appellants argue that the element type drawing file is a set of
geometry that is repeated one or more times throughout a project and that
Halpert does not teach this limitation. (App. Br. 17). The Examiner
Appeal 2009-008451
Application 10/656,020

19
maintains that the geometry is simply data since the functionality of
repeating these elements is not clear, so importing and repeating of an
element is taught by Halpert. (Answer 19). We agree with the Examiner.
Appellants further argue that "[i]t is clear that repeating a set of geometry in
a project is not even remotely similar to repeating an element used in a
website." (App. Br. 19). We find Appellants' argument to be unpersuasive
since it is not commensurate with the scope of claim 6. Claim 6 merely
recites a label placed on the element type and further recites a "wherein
clause" and does not set forth an active step in the method of independent
claim 1.
With respect to dependent claims and 7, 17, and 27, we will address
representative claim 7. Again, Appellants argue that the claims are directed
to "the building industry and a CAD application" (App. Br. 19). We find
that argument to be unpersuasive since it is not commensurate with the
scope of claim 7. Appellants repeat the same arguments advanced above
with respect to the functional limitations and organization and functional
capabilities of the independent claim. (App. Br. 19-20). The Examiner
maintains at page 19 of the Answer that claim 7 is directed to nonfunctional
descriptive material. Again, we agree with the Examiner.
With respect to dependent claim 8, 18, and 28, we will address
representative claim 8. Appellants argue that "[a]gain, claims 8, 18, and 28
(in combination with claims 5, 15, and 25) are specifically directed towards
the building industry and a CAD application having elements, constructs,
views, and sheets." (App. Br. 20-21). We find Appellants' argument to be
unpersuasive since it is not commensurate with the scope of claim 8.
Appellants further argue:
Appeal 2009-008451
Application 10/656,020

20
There is not even a remote possibility that such claim language
merely depicts non-functional descriptive material. Not only is
a portion of a project selected based upon user specified data,
but the view type drawing file automatically assembles
appropriate constructs to represent such a portion. Thus, there
are two separate functional aspects in these claims.

(App. Br. 21). We find Appellants’ argument to be unpersuasive since it is
not commensurate with the scope of claim 8 since claim 8 does not set forth
an active step in the method of independent claim 1. Additionally, we note
that the teachings of Bondy with respect to proofing teaches and fairly
suggests automatically assembling portions of an overall larger project using
smaller part/files, as discussed above.
With respect to dependent claims 9, 19, and 29, we will address
representative claim 9. Appellants argue the same argument of the building
industry and the CAD application which we did not find persuasive above.
We agree with the Examiner's position as set forth at pages 20-21 of the
Answer. Therefore, we will sustain the rejection of dependent claim 9.
With respect to dependent claims 10, 20, and 30, Appellants argue
that what is notoriously lacking is the ability to define a user definable
category and value for project information followed by storage of such a
category and value in the companion file. (App. Br. 23.) First, we note that
the category and value have not been defined in the claimed invention and
can be assigned to be anything by the Examiner. We find that as long as the
Examiner's prior art rejection stores some undefined category and undefined
value in the companion file, then the claim has been met. Appellant argues
that “Harper” [sic, Halpert] fails to teach or suggest user definable category
and value for project information followed by storage of such a category and
Appeal 2009-008451
Application 10/656,020

21
value in a companion file and Rappaport similarly lacks the same teaching.
(App. Br. 23-24). The Examiner maintains at page 21 of the Answer that
Rappaport merely teaches a "user defined" element in combination with the
teachings of Halpert as discussed at page 12 of the Answer. We agree with
the Examiner's position and find that Appellants' argument merely argues the
individual teachings of the references rather than what they would have
suggested to one skilled in the art as asked by the Examiner. Therefore, we
will sustain the rejection of dependent claim 10.
We have further considered Appellants' arguments in the Reply Brief
and find that they are substantially similar to those set forth in the principal
Appeal Brief where Appellants contend that the independent claims are
directed to the building industry and CAD application. As discussed above,
we find Appellants' arguments to be unpersuasive of error in the Examiner's
showing of obviousness.
Appellants at page 15 of the Reply Brief maintained that Appellants'
Specification relates a building information model to a building (see e.g.,
paragraph [0044]). We disagree with Appellants and find that paragraphs
[0044] - [0049] merely show exemplary interpretations or embodiments for
this portion of Appellants' invention and does not necessarily define the term
to import a limitation into the claimed invention.

VI. CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner's showing of obviousness claims 1-30.

Appeal 2009-008451
Application 10/656,020

22
VII. ORDER
We affirm the obviousness rejections of claims 1-30.
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

tkl

GATES & COOPER LLP
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045