Ex Parte Simpson

Patent Trial and Appeal Board

Sep 15, 2014

11332048 (P.T.A.B. Sep. 15, 2014)

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.
11/332,048 01/13/2006 Jack Simpson AD23-005 6453
21567 7590 09/15/2014
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
MAIL DATE DELIVERY MODE
09/15/2014 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 JACK SIMPSON
______________

Appeal 2012-001617
Application 11/332,048
Technology Center 2600
______________

Before JOHNNY A. KUMAR, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1–3, 8–11, 13–17, 19–23, 25–27, 29–36, 38, 39, 42, and 44–65.
Claims 4–7, 12, 18, 24, 28, 37, 40, 41, and 43 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2012-001617
Application 11/332,048

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Exemplary Claim
Exemplary claim 1 reads as follows (emphasis ours):
1. A computer-implemented architectural structure design
method comprising:
displaying a design of an architectural structure
comprising a plurality of existing rooms;
modifying the design of the architectural structure
comprising adding an additional room to the existing rooms of
the design of the architectural structure at one of a plurality of
possible user-defined locations of the design of the architectural
structure as a result of user input;
receiving additional user input indicating a desire to
insert a dormer at a location of a design of an architectural
structure which is void of dormers;
after the receiving, accessing a design of the dormer
which was not created by a user;
accessing information regarding the location of the
design of the architectural structure;
using processing circuitry, automatically generating,
without user input, the dormer using the design of the dormer
and the information regarding the location;
using the processing circuitry, automatically modifying,
without user input, the design of the architectural structure to
include the generated dormer which is the first dormer present
in the design of the architectural structure; and
after the modifying the design of the architectural
structure, displaying the design of the architectural structure
comprising the dormer, the existing rooms and the additional
room.

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Rejections
The Examiner rejected claims 51–53 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4.
The Examiner rejected claims 1–3, 10, 15, 19–23, 30, 31, 34–36, 38,
39, 42, 44, 45, 48–55, 57, and 59 under 35 U.S.C. § 102(e) as anticipated by
Tiramani (US 2005/0283371 A1, Dec. 22, 2005). Ans. 6–13.
The Examiner rejected claims 8, 9, 13, 14, 16, 26, 29, and 47 under
35 U.S.C. § 103(a) as unpatentable over Tiramani and Schell (US 6,628,279
B1, Sept. 30, 2003). Ans. 13–15.
The Examiner rejected claims 11, 17, 25, 27, 32, 33, 46, and 60–65
under 35 U.S.C. § 103(a) as unpatentable over Tiramani and Moore (US
7,019,759 B1, Mar. 28, 2006). Ans. 15–19.
The Examiner rejected claims 56 and 58 under 35 U.S.C. § 103(a) as
unpatentable over Tiramani. Ans. 19–20.
ANALYSIS
Rejection of claims 51–53 under 35 U.S.C. § 112, first paragraph
We have reviewed Appellant’s arguments in the Briefs, Examiner’s
rejection, and the Examiner’s response to the Appellant’s arguments. We
disagree with Appellant’s conclusion that the Examiner erred in finding the
Specification fails to demonstrate Appellant had possession of defining a
footprint of the design of the architectural structure using initial user input
which designs the footprint before existence of a complete design of the
architectural structure; and modifying the footprint using the initial user
input before the existence of the complete design of the architectural
structure, as claimed.
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The Examiner has provided a comprehensive response to each of
Appellant’s arguments on page 21 of the Answer. We have reviewed the
Appellant’s arguments and the portions of the Specification cited by the
Appellant and we are not persuaded of error in the Examiner’s rationale to
support the rejection. Accordingly, we sustain the Examiner’s rejection of
claims 51–53 under 35 U.S.C. § 112, first paragraph.
Prior art rejections
The Examiner rejected claims 1–3, 10, 15, 19–23, 30, 31, 34–36, 38,
39, 42, 44, 45, 48–55, 57, and 59 under 35 U.S.C. § 102(e) and claims 56
and 58 under 35 U.S.C. § 103 over Tiramani. The Examiner also made two
separate § 103 rejections for the remaining dependent claims using Tiramani
in combination with Schell or Moore.
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. The Examiner cited Tiramani for
all the claim elements of independent claims 1, 19, and 34. Ans. 6–13.
Further, we have reviewed the Examiner’s response to Appellant’s
arguments. The Examiner has provided a comprehensive response to each
argument presented by the Appellant on pages 21 through 25 of the Answer.
We have reviewed the response and concur with the Examiner’s findings
and conclusions. We adopt as our own (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. Ans. 6–33.
In particular, Appellant contends,
These teachings of Tiramani disclose that pre-defined
additional floor plan modules 302 snap into the single, pre-
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defined location of the pre-fabricated house (which is the only
position in which the module 302 may be positioned). The
modules 302 have prefabricated designs to correspond to
respective single locations of the design of page 300 as
determined by the placement of prefabricated doors,
prefabricated windows, etc.
Reply Br. 4; see also Appeal Br. 14–15.
In other words, Appellant argues that Tiramani teaches prefabricated
designs and thus, “Tiramani is void of any teachings that a user may modify
a module for placement in different locations of the design.” Appeal Br. 14
(See also Reply Br. 8, 10, 13, 15, 17, 22).
The Examiner responds, and we agree:
Paragraph 0076 discloses selecting addition floor plan modules
and additional variations to the home. Tiramani discloses
allowing a user to modify placement in different locations
through the selection of the graphical user interface box
checking location for the modification of the module with
placement in different locations, figure 1, element 40, figures 9-
19, specifically, figure 20, the module adds 2 large rooms.
Furthermore Tiramani discloses in figures 9-20, an option of
adding a den/office to the 1st or 2nd story, which therefore adds
an additional room to the existing rooms at one of a plurality of
possible user-defined locations of the architectural structure as a
result of user input.
. . . Tiramani discloses paragraph 0058, allowing a user
to access the database to allow selection of the options for the
house. . . . Tiramani discloses paragraph 0066, adding a dormer
to a single wing garage, which Examiner interprets as location
information regarding the design, and figure 12, dormer
inserted into the garage and figure 1, element 59, re-displaying
the image of the house with the with the user options included.
. . . Figure 11, shows architectural design without
dormers, figure 12 shows dormers added to a single wing
garage, figures 13-17 show dormers added to a double wing,
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and over a sunroom, and figures 16-17, show dormers added
over the roof, with a quantity that can be entered to indicate a
number of dormers added, therefore one of a plurality of
dormers can be selected at user defined locations for the
placement, also paragraph 0066.
Ans. 21–23 (emphasis ours).
Thus, we agree with the Examiner that Tiramani discloses the claimed
“user-defined locations.” We find Appellant’s arguments are not
commensurate in scope with the claim language as independent claims 1, 19,
and 34 do not preclude prefabricated designs.
Regarding the remaining dependent claims, while Appellant raised
additional arguments for patentability of the cited dependent claims (Appeal
Br. 21–36), we find that the Examiner has rebutted in the Answer each and
every one of those arguments by sufficient evidence. Ans. 24–33. As to
Appellant’s contentions that the references are not combinable, we find that
the Examiner’s suggestion for the proposed modification in the prior art
suffices as an articulated reason with some rational underpinning to establish
the prima facie case of obviousness. Ans. 14, 16, and 20. Therefore, we
adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference.
CONCLUSIONS
The Examiner did not err in rejecting claims 51–53 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
The Examiner did not err in rejecting claims 1–3, 10, 15, 19–23, 30,
31, 34–36, 38, 39, 42, 44, 45, 48–55, 57, and 59 under 35 U.S.C. § 102(e) as
anticipated by Tiramani.
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Application 11/332,048

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The Examiner did not err in rejecting claims 8, 9, 13, 14, 16, 26, 29,
and 47 under 35 U.S.C. § 103(a) as unpatentable over Tiramani and Schell.
The Examiner did not err in rejecting claims 11, 17, 25, 27, 32, 33, 46,
and 60–65 under 35 U.S.C. § 103(a) as unpatentable over Tiramani and
Moore.
The Examiner did not err in rejecting claims 56 and 58 under
35 U.S.C. § 103(a) as unpatentable over Tiramani.
DECISION
The Examiner’s rejections of claims 1–3, 8–11, 13–17, 19–23, 25–27,
29–36, 38, 39, 42, and 44–65 are 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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