Ex Parte Rothermel

Board of Patent Appeals and Interferences

Nov 23, 2010

09954077 (B.P.A.I. Nov. 23, 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.
09/954,077 09/18/2001 Todd Rothermel 36488-174924 6632
26694 7590 11/23/2010
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
HAMZA, FARUK
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
11/23/2010 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 TODD ROTHERMEL
____________________

Appeal 2009-006181
Application 09/954,077
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-18 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant’s claimed invention relates to engineering, construction,
and operations (ECO) computer-aided design (CAD) application services
having means for viewing geospatially mapped project-oriented
collaboration information over a network (Spec. 11:18-12:10).
Independent claims 1 and 14, reproduced below, are representative of
the subject matter on appeal:

1. An online system for providing engineering, construction,
and operations (ECO) computer-aided design application
services, comprising:

a computer network, including server means and a plurality of
clients each of which is connected to said server means over
said network;

means for operating said server means and said plurality of
clients, said operating means supporting a runtime environment
for the ECO application on said network;

graphical user interface means displayed on said plurality of
clients, said graphical user interface means including a plurality
of personalized spaces;

a database storing a plurality of files, including engineering
documents and drawings, with a plurality of different file
formats;

a plurality of collaborative modules, each of which is run over
said network, said collaborative modules including:

means for accessing said engineering documents and drawings;
and

means for managing an engineering document; and
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means for viewing geospatially, according to geospatial
attributes, ECO project textual data including at least one of a
business, a project, a task, a document, or a person.

14. A computer-readable medium, comprising:

a first code segment for providing a graphical user interface to a
database storing a plurality of files, including engineering
documents and drawings, with a plurality of different file
formats, each of said plurality of files being stored as a series of
components;

a second code segment for accessing said engineering
documents and drawings;

a third code segment for managing an engineering document;

a fourth code segment for managing a discussion;

a fifth code segment for managing a form;

a sixth code segment for managing time; and

a seventh code segment means for viewing geospatially,
according to geospatial attributes, engineering textual data
including at least one of a business, a project, a task, a
document, and/or a person.

REFERENCES
Gross US 6,918,082 B1 Jul. 12, 2005
Wilson US 6,985,929 B1 Jan. 10, 2006
Tracey US 6,798,413 B1 Sep. 28, 2004

The Examiner rejected claims 1-17 and 21 under 35 U.S.C. § 103(a)
based upon the teachings of Gross and Wilson.
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The Examiner rejected claim 18 under 35 U.S.C. § 103(a) based upon
the teachings of Gross, Wilson, and Tracey.
Appellant contends Wilson does not teach means for viewing
geospatially, according to geospatial attributes, ECO project textual data.
Appellant also contends there is no motivation to add geospatial viewing
functionality to the system of Gross. (App. Br. 5).2

ANALYSIS
The Examiner finds Gross teaches all the features of Appellant’s
claimed invention except means for viewing geospatially, according to
geospatial attributes, ECO project textual data including at least one of a
business, a project, a task, a document, or a person, as recited in claim 1, and
relies on Wilson for teaching this feature (Ans. 11). The Examiner
concludes, modifying Gross by adding the geospatial viewing functionality
as taught by Wilson would be obvious because this functionality would
“allow users to view data graphically by using [a] browser and make the
system user friendly,” and it would “enhance [the] system’s usability and
make [it] more user-friendly” (Ans. 12).
Appellant asserts Wilson teaches storing geospatial data and
displaying geospatial data items on a map, but not viewing geospatially,
according to geospatial attributes such as ECO project textual data including
at least one of a business, a project, a task, a document, or a person (App. Br.
5; Reply Br. 4-5). Appellant further asserts there is no motivation to
combine Wilson with Gross because there is no need in Gross to access and

2 Appellant’s Appeal Brief filed January 16, 2008, is referenced throughout
this opinion.
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view items geospatially according to geospatial attributes as Gross teaches
an electronic proofing system for managing documents (App. Br. 5).
The Examiner recites examples of data available for a user to view on
a map in Wilson, namely “Field Research Facility Area” and “NGDC
Sediment Data,” and interprets these data as project and document data,
respectively (Ans. 11; Wilson Fig. 15). However, as Appellant asserts, these
data, and other data available for viewing on the map in Wilson, such as
“Political/State Boundaries” in a particular area of interest, are geospatial
data (that is, mapping data), and are not ECO project textual data as claimed
(Reply Br. 4-5; Wilson col. 15, ll. 31-33; Figs. 10 and 15).
Further, the Examiner’s statement that Gross’s system could be made
more user-friendly by adding functionality for geospatial viewing according
to geospatial attributes is merely conclusory (Ans. 12). The Examiner has
not asserted any reason why a user would want to view the electronic
documents of Gross geospatially. We agree with Appellant that Wilson
cannot make the system of Gross more user-friendly if there is no purported
reason why a user would want to view an electronic document geospatially
(App. Br. 5). Therefore, claim 1 is not obvious in view of Gross and
Wilson.
Independent claims 10 and 14 recite similar limitations regarding
viewing geospatially, according to geospatial attributes, ECO project textual
data (claim 10), or engineering textual data (claim 14). Thus, these claims
are not obvious for the reasons discussed above, as are dependent claims 2-
9, 11-13, 15-18, and 21, which depend from claims 1, 10, and 14.

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NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
Claims 14-18 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claim 14 recites a “computer-readable medium,” which must be given
the broadest reasonable interpretation, “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” See In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification
describes an exemplary embodiment wherein “the present invention can
include, e.g., two separate computer programs: (1) a server program on a
server side 112a of the application; and (2) a client program on a client 102
side of the application. The two programs can be loaded into memory and
executed on a single computer; or they may be loaded on two different
computers connected together by a computer network . . . .” (Spec. 23:15-
19). A computer, as described in the Specification, that “could be used as a
client computer 102a, 102b” or as “application servers 112a, 112b” contains
a “bus 804 [that] can be coupled to any of various subsystems including,
e.g., as shown, a main memory 806, and a secondary memory 808 . . . and an
input/output (I/O) device to network 104” (Spec. 22:29-23:13; Fig. 8).
Although the Specification does not explicitly describe how each of the two
computer programs of the present invention are loaded into memory, one of
ordinary skill in the art would recognize that the programs could be
downloaded from the network and transferred to main memory via the bus.
In loading each program into main memory over the bus, the program would
have to be carried as a signal for at least some period of time. Signals,
however, are not patentable subject matter under 35 U.S.C. § 101. In re
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Nuijten, 500 F.3d 1346, 1352 (Fed. Cir. 2007). Thus, claim 14 embraces
non-statutory subject matter and is not eligible for patent protection.
Further, even if claim 14 is limited to a physical, non-transitory
computer-readable medium, it does not appear to recite executable code.
Claim 14 recites, for example, “a first code segment . . .; a second code
segment . . . ; and a seventh code segment . . . .” While the code segments
recite functional language, this language is not functionally related to the
computer readable medium recited in the preamble for realizing these
functions. That is, claim 14’s preamble recites a computer-readable medium
comprising code with no limitation on whether the code is executed by a
computer or is in an executable form. Although a computer may be patent
eligible if it “is programmed to perform particular functions pursuant to
instructions from program software,” In re Alappat, 33 F.3d 1526, 1545
(Fed. Cir. 1994), here, there is no hardware that executes the claimed code.
Further, the code is not limited to a programmable format such that a
computer could execute the code to perform the claimed functions. The
claimed code is therefore construed as descriptive material per se. As noted
in the MPEP, functional descriptive material is not patentable when claimed
as descriptive material per se. MPEP § 2106.01.
Claims 15-18 depend from claim 14 and merely recite additional
functions for the code segments. These claims also fail under 35 U.S.C.
§ 101 for the above reasons.

DECISION
The Examiner’s decision rejecting claims 1-18 and 21 is reversed.
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A new ground of rejection for claims 14-18 under 35 U.S.C. § 101 is
entered.
TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 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) 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 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)(v).

REVERSED
37 C.F.R. § 41.50(b)

KIS

VENABLE LLP
P. O. BOX 34385
WASHINGTON, DC 20043-9998