Ex Parte Ramani et al

Patent Trials and Appeals Board

Mar 21, 2014

12551712 - (D) (P.T.A.B. Mar. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KARTHIK RAMANI and JIANTAO PU
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Appeal 2011-011178
Application 12/551,712
Technology Center 2600
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Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
CATHERINE SHIANG, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
twice rejecting claims 1-20, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We Affirm-in-part.
The present invention relates generally to providing ways to analyze
and access drawings and models. Spec. 4:11-12.
Claim 1 is illustrative:
1. A method comprising:
conducting a search of a database comprising 2D or 3D
representations of objects using at least one graphical input parameter,
wherein said graphical input parameter is a 2D or a 3D representation
of all or part of an object;
receiving a set of results from said search;
inputting a new graphical input parameter;
searching said set of results with respect to said new
parameter; and
obtaining a subset of said results.

Appellants appeal the following rejections:

R1. Claims 1, 4-6, 17, and 20 are rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 4, and 5 of Ramani (US Patent No. 7,583,272 B2, Sept. 1, 2009,
hereafter the ʼ272 patent) ;
R2. Claims 1-3, 9-15, and 17-19 are rejected under 35 U.S.C.
§ 102(e) as being unpatentable over Razdan (US Patent Pub. 2005/0168460
A1, Aug. 4, 2005);
R3. Claims 4-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Razdan, Lui (US Patent Pub. 2004/0252889 A1, Dec. 16,
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2004), and Tanaka (3D Object Representation Using Spherical Harmonic
Functions, Proceeding of the 1993 IEEE, 1873-80 (1993)).
R4. Claims 7, 8, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Razdan and Rioux (US 6,631,364 B1, Oct. 7, 2003);
and
R5. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Razdan and Tanaka.

ANALYSIS
Rejection under § 102(e)
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellants’
arguments. We concur with Appellants’ conclusion the Examiner erred in
finding that Razdan discloses searching the set of results with respect to the
new parameter, as set forth in claim 1.
As identified by Appellants, Razdan “does not disclose [Appellants’]
claim limitation of performing a second search on the set of results obtained
from a first search” (App. Br. 7-8). Appellants further contend that “[w]hile
Razdan discloses that the user can modify the query sketch by using a
thumbnail image from the initial search results screen, the second search
appears to be conducted on the entire database 114, and not on any subset of
that database” (App. Br. 9). We agree.
Thus, we disagree with the Examiner’s finding that Razdan discloses
resubmitting the query to obtain a subset of results (see Ans. 17-19). While
Razdan discloses that “the user can manipulate the query image 208 in real
time to refine searches” (¶ [0095]), Razdan also discloses that “[a]fter a user
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has entered the desired criteria into the query input screen 202, a ‘submit’
button 213 can be selected to submit the query to database 114” (id.). In
other words, Razdan’s refined searches are made of the database 114,
instead of on the set of results, as required by independent claims 1 and 17.
Accordingly, we will not sustain the Examiner’s anticipation rejection of
claims 1-3, 9-15, and 17-19.

Rejections under § 103(a)
The rejection of dependent claims 4-8 and 16 will not be sustain for
the same reasons as noted supra regarding independent claim 1.
Regarding claim 20, Appellants contend that “Tanaka states merely
that one should ‘start with . . . a 2.5D representation of an object’ Tanaka
does not teach how the 2.5D representation is obtained” (App. Br. 20). We
agree with Appellants.
The Examiner has merely shown that Tanaka teaches 2.5D image
representations being used when analyzing shapes (see Ans.21; see also
Tanaka, p. 1874, Section 2). However, the Examiner has not established that
any input parameter is converted to a 2.5D representation, as required by
claim 20. Thus, we disagree with the Examiner’s finding that the combined
teachings of Razdan and Tanaka disclose the above-noted feature.
Accordingly, we will not sustain the Examiner’s obviousness rejection of
claim 20.

Obviousness-Type Double Patenting Rejection
Appellants contend that “pending claim 1 does not include . . . twenty
(20) claim limitations that are present in claim 1 of the [ʼ]272 patent” (App.
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Br. 14) and “that pending claim 1 does not include dozens of limitations that
are present in claims 4 and 5 of the [ʼ]272 patent” (id. at 17). In other
words, Appellants merely concede that pending claim 1 is broader than
claims 1, 4, and 5 of the ʼ272 patent. In response, the Examiner finds that
“the broader limitations of the present invention encompass[] the narrower
limitations of the patent application” (Ans. 19). We agree with the
Examiner.
As Appellants have not explained why the broader aspects of the
present claims would not have been obvious over the narrower aspects of the
patented claims, we are not persuaded by Appellants’ arguments. Thus, we
sustain the Examiner’s rejection of claims 1, 4-6, 17, and 20 as unpatentable
based on obviousness-type double patenting over claims 1, 4, and 5 of the
ʼ272 patent.

DECISION
We reverse the Examiner’s § 102(e) and § 103(a) rejections.
We affirm the Examiner’s obviousness-type double patenting
rejection.
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

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