Ex Parte Thompson

Patent Trial and Appeal Board

Jun 28, 2016

12135862 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/135,862 06/09/2008
55895 7590 06/28/2016
GA TES & COOPER LLP - Autodesk
HOW ARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Daniel Lee Thompson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30566.143-US-Dl 4533
EXAMINER
FIBBI, CHRISTOPHER J
ART UNIT PAPER NUMBER
2174
MAILDATE DELIVERY MODE
06/28/2016 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 DANIEL LEE THOMPSON
Appeal2015-002194
Application 12/135,862 1
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-27, 29, 31, 33--46, 48, 50, and 52-54. Appellant has
previously canceled claims 28, 30, 32, 47, 49, and 51. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Autodesk, Inc. App.
Br. 1.
Appeal2015-002194
Application 12/135,862
STATEMENT OF THE CASE2
The Invention
Appellant's claimed invention relates to a method and apparatus for
providing a presumptive drafting solution. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A computer-implemented method for providing a
presumptive drafting solution comprising:
(a) receiving input from a cursor control device relating
to a first geometric entity of one or more drawings, wherein the
first geometric entity has one or more geometric attributes;
(b) obtaining one or more prior drawing solutions of a
computer drawing program, wherein:
(i) the one or more prior drawing solutions
each have one or more solution attributes;
(ii) each of the one or more prior drawing
solutions has been previously accepted and
previously utilized by a user as a drawing solution;
and
(iii) each of the one or more prior drawing
solutions comprises a presumptive drafting
solution for creating and/or placing a second
geometric entity in the one or more drawings;
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
June 2, 2014); Reply Brief ("Reply Br.," filed Dec. 1, 2014); Examiner's
Answer ("Ans.," mailed Sept. 30, 2014); Final Office Action ("Final Act.,"
mailed Dec. 31, 2013 ); and the original Specification ("Spec.," filed
June 9, 2008 ).
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Application 12/135,862
( c) comparing the one or more geometric attributes to the
one or more solution attributes; and
( d) providing, for the first geometric entity, the prior
drawing solution having one or more solution attributes similar
to the one or more geometric attributes.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bozinovic et al. U.S. 5,544,265 Aug. 6, 1996
("Bozinovic ")
Gantt U.S. 5,572,639 Nov. 5, 1996
Donchin U.S. 5,615,283 Mar. 25, 1997
Jaeger US 2002/0141643 Al Oct. 3, 2002
Rejections on Appeal
RI. Claims 1, 5-11, 14--16, 17, 21-27, 33-35, 36, 40-46, and 52-
54 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Gantt, Donchin, and Bozinovic. Final Act. 2.
R2. Claims 2--4, 12, 13, 18-20, 29, 31, 37-39, 48, and 50 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Gantt, Donchin, Bozinovic, and Jaeger. Final Act. 7-8.
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Application 12/135,862
CLAIM GROUPING
A. Based on Appellant's arguments and suggested claim groupings
(App. Br. 6-16), we decide the appeal of obviousness Rejection RI as
follows:
Group I: Claims 1, 6-8, 10, 17, 22-24, 26, 36, 41--43, and
45 stand or fall on the basis of representative independent claim 1.
Group II: Claims 5, 21, and 40 stand or fall on the basis of
representative claim 5.
Group III: Claims 9, 25, and 44 stand or fall on the basis of
representative claim 9.
Group IV: Claims 11, 27, and 46 stand or fall on the basis of
representative claim 11.
Group V: Claims 14, 33, and 52 stand or fall on the basis of
representative claim 14.
Group VI: Claims 15, 34, and 53 stand or fall on the basis of
representative claim 15.
Group VII: Claims 16, 35, and 54 stand or fall on the basis of
representative claim 16.
B. Based on Appellant's arguments and suggested claim groupings
(App. Br. 16-17), we decide the appeal of obviousness Rejection R2 as
follows:
Group VIII: Claims 2, 18, and 37 stand or fall on the basis of
representative claim 2.
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Group IX: Claims 3, 19, and 38 stand or fall on the basis of
representative claim 3.
Group X: Claims 4, 20, and 39 stand or fall on the basis of
representative claim 4.
C. Dependent claims 12, 13, 29, 31, 48, and 50 in Rejection R2,
not argued separately, stand or fall with the respective independent claim
from which they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed the Examiner's rejection in light of Appellant's
arguments. We disagree with Appellant's arguments with respect to
claims 1-27, 29, 31, 33--46, 48, 50, and 52-54. We incorporate herein and
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 and rebuttals
set forth in the Examiner's Answer in response to Appellant's arguments.
We incorporate such findings, reasons, and rebuttals herein by reference
unless otherwise noted. However, we highlight and address specific
findings and arguments regarding the issues below for emphasis as follows.
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1. Rejection RI, Group l: Claims 1, 6-8, 10, 17, 22-24, 26, 36, 41--43,
and45
Issue 1
Appellant contends (App. Br. 6-12, Reply Br. 1-3) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Gantt, Donchin and Bozinovic is in error. These contentions
present us with the following issue:
Did the Examiner err in rejecting claim 1 under§ 103(a) because the
cited prior art does not teach or at least suggest a method that includes, inter
alia, contested limitations (b )(ii), (b )(iii), and ( c ), as recited in claim 1?
Analysis
Appellant contends, regarding Gantt, "nothing in such text relates to
utilizing a prior drawing solution that is for creating/placing a geometric
entity in the drawing." App. Br. 7. Appellant, further contends
In this regard, Gantt relates to comparing one object to another
object that exists in a drawing. In contrast, the present claims
relate to comparing a first object to drawing solutions that were
used in the past in order to use the prior drawing solution for
the first object. Thus, it is the drawing solution (i.e., the
act/process that was used in the past) that is used in the
comparison and not simply an object that is placed in a
drawing. While Gantt describes moving a first object with
respect to an already existing second object, Gantt does not
provide for comparing properties of the first object with a
drafting solution used to place that second object. In this regard,
the drawing solution (i.e., presumptive drafting solution) is not
equivalent to a mere object that already exists in a drawing.
App. Br. 7-8. (Emphasis added)
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Appellant similarly contends (in referring to Gantt) "There is no
capability whatsoever in the cited text the provides the ability to present a
prior drawing solution based on a comparison of solution attributes in such
a drawing solution to geometric attributes of an entity." App. Br. 9.
(Emphasis added).
However, we are not persuaded by Appellant's arguments because
Appellant is arguing the references separately. "[O]ne cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references." In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). The Examiner relies on Donchin, not Gantt, for teaching or
at least suggesting the comparing limitation, which is limitation ( c ). Final
Act. 3.
Appellant also contends "neither Gantt nor Donchin have remotely
contemplated using/considering a presumptive drafting solution (that was
previously used by a user) as a factor for determmmg a drawing solution for
a current geometric entity." App. Br. 8. However, we are not persuaded by
Appellant's argument because Appellant again argues the references
separately. The Examiner relies on Bozinovic, not Gantt or Donchin, for
teaching or at least suggesting the presumptive drawing solutions limitation,
which is limitation (b )(iii). Final Act. 4; Ans. 4.
Appellant further contends, regarding Donchin, that "what is missing
from Donchin is the ability to use any pattern that has been previously
accepted and used by a user as a drawing solution." App. Br. 10. Again,
Appellant argues the references separately, because the Examiner relies on
Gantt, not Donchin, to teach or at least suggest limitation (b) "obtaining one
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or more prior drawing solutions ... (ii) each of the one or more prior
drawing solutions has been previously accepted and previously utilized by a
user as a drawing solution." Final Act. 2-3.
Appellant also argues:
Bozinovic's teaching is limited to comparing an object to an
object that is merely displayed on the screen, regardless of
whether it was previously used/accepted as a solution by a user.
Thus, rather than comparing [an] actual drawing solution[] used
by a user, Bozinovic merely compares objects to other "like"
objects already displayed on the screen.
App. Br. 12. We are again not persuaded by Appellant's contention, because
the Examiner relies on Donchin, not Bozinovic, to teach or at least suggest
the "comparing" limitation ( c ). Final Act. 3.
"In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
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Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
We note Appellant has not cited to a definition of "prior drawing
solution" in the Specification that would preclude the Examiner's broader
reading. In particular, we agree with the Examiner's finding that Gantt's
newly input graphic object, which may inherit specific characteristics of
previously accepted objects, teaches or at least suggests claim 1 's contested
limitation (b)(ii) "each one of the one or more prior drawing solutions has
been previously accepted and previously utilized by a user as a drawing
solution." Ans. 2, citing Gantt, col. 2, 11. 4--6, col. 4, 11. 6-10, col. 5,
11. 40-50.
Furthermore, as the Examiner points out (Ans. 3) Appellant's
argument on limitation (b )(ii) is contradictory by contending "the drawing
solution is not equivalent to a mere object that already exists in a drawing"
(App. Br. 8), whereas Appellant's Specification describes, "the prior
solutions examined may simply be the other existing geometry in the
drawing." Spec. i-f 50. Therefore, we find Appellant's argument regarding
contested limitation (b )(ii) to be inconsistent with their Specification, and we
also find Appellant does not provide persuasive evidence or argument as to
why the Examiner's interpretation is overly broad, unreasonable, or
inconsistent with the Specification.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting conclusion of obviousness.
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Accordingly, Appellant has not provided sutlicient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art, or in the legal conclusion of
obviousness. Therefore, we sustain the Examiner's obviousness rejection of
independent claim 1, and claims 6-8, 10, 17, 22-24, 26, 36, 41--43, and 45
which fall therewith. See Claim Grouping, supra.
2. Rejection RI, Group II: Claims 5, 21, and 40
Issue 2
Appellant contends (App. Br. 13) the Examiner's rejection of claim 5
under 35 U.S.C. § 103(a) as being obvious over the combination of Gantt,
Donchin and Bozinovic is in error. These contentions present us with the
following issue:
Did the Examiner err in rejecting claim 5 under§ 103(a) because the
cited prior art does not teach or suggest the method of claim 1, "wherein a
geometric attribute and a solution attribute comprise a layer?" (Emphasis
added).
Analysis
Appellant contends:
Claims 5, 21, and 40 provide that the geometric attribute and
the solution attribute (that are compared) are a layer . . .
However, the concept of a layer is not addressed whatsoever.
Further, an electronic search of Gantt for the term "layer"
provides no results whatsoever. Without even mentioning the
term "layer", Gantt cannot possibly teach the ability to compare
a layer geometric attribute and a layer solution attribute as
explicitly required in the claims.
App. Br. 13.
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We agree with the Examiner's finding that the scope of claim term
"layer" covers Gantt's selected object clinging to an underlying graphic
object. Ans. 5 (citing Gantt, col. 2, 11. 23-29). Neither the plain language of
the claim term "layer," nor the support in the Specification (Spec. i-f 56)
describing "layer" as "a logical grouping of data that are like transparent
acetate overlays on a drawing; layers can be viewed individually or in
combination" precludes the Examiner's finding that Gantt teaches or at least
suggests "layer," under a broad, but reasonable interpretation. Accordingly,
Appellant has not provided persuasive evidence or argument that the
Examiner's construction is unreasonable, overly broad, or inconsistent with
Appellant's Specification.
Accordingly, we agree with the Examiner's factual findings and legal
conclusions that the cited prior art teaches or suggests the contested
limitation of claim 5. Therefore, we sustain the Examiner's obviousness
rejection of dependent claim 5 and claims 21 and 40 which fall therewith.
See Claim Grouping, supra.
3. Rejection RI, Groups III, IV, V, VI, and VII: Claims 9, 11, 14--16, 25,
27, 33-35, 44, 46, and 52-54
Furthermore, although Appellant raised additional arguments for
patentability of dependent claims 9, 11, 14--16, 25, 27, 33-35, 44, 46,
and 52-54, in Groups III through VII, rejected on the same basis as claim 1,
(App. Br. 13-16), we find the Examiner has rebutted each of those
arguments in the Answer by a preponderance of the evidence. Ans. 5-9.
Therefore, we adopt the Examiner's findings and underlying reasoning, and
legal conclusion of obviousness, which we incorporate herein by reference.
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Consequently, we find no reversible error in the Examiner's rejections of
claims 9, 11, 14--16, 25, 27, 33-35, 44, 46, and 52-54.
4. Rejection R2: § 103(a)-Dependent Claims 2--4, 18-20, and 37-39
Although Appellant raised additional arguments for patentability of
dependent claims 2--4, 18-20, and 37-39, subject to Rejection R2, (App.
Br. 16-17), we find the Examiner has rebutted each of those arguments in
the Answer by a preponderance of the evidence. Ans. 9-12. Therefore, we
adopt the Examiner's factual findings and legal conclusions, which we
incorporate herein by reference. Consequently, we find no reversible error
in the Examiner's rejections of claims 2--4, 18-20, and 37-39.
5. Rejection R2: Dependent Claims 12, 13, 29, 31, 48, and 50
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 12, 13, 29, 31, 48, and 50 under
§ 103(a) (see App. Br. 17), we sustain the Examiner's rejection of these
claims, as they fall with their representative independent claims 1, 17, and
36. When an Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1-8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a reply brief that were not raised in
the appeal brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause, which Appellant has
not shown. See 37 C.F.R. § 41.41(b)(2).
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CONCLUSIONS
(1) The Examiner did not err with respect to obviousness Rejection
RI of claims 1, 5-11, 14--16, 17, 21-27, 33-35, 36, 40-46, and 52-54 under
35 U.S.C. § 103(a) over the cited prior art combination of record, and we
sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 2--4, 12, 13, 18-20, 29, 31, 37-39, 48 and 50 under 35 U.S.C.
§ 103(a) over the cited prior art combination of record, and we sustain the
rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-27, 29, 31, 33-
46, 48, 50 and 52-54.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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