Ex Parte Thornton et al

Board of Patent Appeals and Interferences

Jan 7, 2011

10729259 (B.P.A.I. Jan. 7, 2011)

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.
10/729,259 12/05/2003 Diane C. Thornton 030567; 190250-1780 1176
38823 7590 01/07/2011
AT&T Legal Department - TKHR
Attn: Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
GEBRESILASSIE, KIBROM K
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
01/07/2011 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 DIANE C. THORNTON, MICHAEL S. HESS, and RICKEY
HOWARD JOHNSON
__________

Appeal 2009-005502
Application 10/729,259
Technology Center 2100
__________

Before JEAN R. HOMERE, STEPHEN C. SIU, and JAMES R. HUGHES,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

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.
Appeal 2009-005502
Application 10/729,259
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-27. We have jurisdiction under 35 U.S.C.
§ 6(b).
The Invention
The disclosed invention relates generally to a drawing conversion
assignment and management system (Spec. 3).
Independent claim 1 is illustrative:
1. A drawing conversion management and assignment
system, comprising:
receiving logic of a computer system operable to receive
notification of completion of a land base drawing file that is
associated with a plat corresponding to a parcel of land represented by
the land base drawing file;
a database coupled to the receiving logic, operable to create a
drawing conversion job record associated with the completed land
base drawing file, the drawing conversion job record indicating that
the plat corresponding to the completed land base drawing file is
tasked to be converted into a new drawing format;
assignment logic of the computer system coupled to the
database and operable to assign the drawing conversion job record to
a draftsman and to instruct the database to record the assignment, the
drawing conversion job involving creation of a new drawing file
based on at least information depicted in the land base drawing file
and a prior plat of the parcel of land represented by the land base
drawing file; and
completion logic of the computer system coupled to the
database and operable to receive a request to close the drawing
conversion job record from the draftsman, and to instruct the database
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to mark the drawing conversion job record as closed to indicate that
the plat has been redrawn in the new drawing format.
(App. Br. 22, Claims Appendix).

The Reference
The Examiner relies upon the following reference as evidence in
support of the rejections:
Chauhan US 2004/0236620 A1 Nov. 25, 2004

The Rejections
1. The Examiner rejects claims 1-9 and 19-27 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejects claims 1-27 under 35 U.S.C. § 102(e) as being
anticipated by Chauhan.

ISSUES
Issue 1
The Examiner finds that claims 1-9 recite “software per se” (Ans. 3)
and are therefore directed to non-statutory subject matter. The Examiner
also finds that claims 19-27 are directed to a “computer readable medium
[that] comprises ‘propagation medium’ and ‘paper’ which are non-statutory.
Did the Examiner err in finding that claims 1-9 and claims 19-27 are
directed to non-statutory subject matter?

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Issue 2
Appellant argues that Chauhan fails to disclose “redrawing a plat for a
parcel of land from an old format into a new format . . . receiving
notification of creation of this land base drawing file, creating a drawing
conversion job record, assigning the job record to a draftsman, and then
receiving a request to close the job after the job is completed by the
draftsman” (App. Br. 11-12).
Did the Examiner err in finding that Chauhan discloses each limitation
recited in claim 1?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. The Specification discloses that the computer readable medium
“could even be paper or another suitable medium upon which the
program is printed” (Spec. 16).
2. Chauhan discloses customers calling a utility company to request
service (¶ [0081], ll. 1-2), the utility company assigning a Field
Engineer to the customer site (¶ [0081], ll. 5-7), and the Field
Engineer using geographic information and sketches of the customer
site to generate a work order (¶ [0081], ll. 9-11), the information
obtained from the Field Engineer being entered into the system at the
utility company.
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3. Chauhan discloses that a superior reviews the work order information
obtained by the Field Engineer, estimates the cost of the work, then
submits a work order that is scheduled and assigned to a work crew.
The work crew travels to the customer site and performs the work
according to the work order that was approved by the superior (¶
[0081], ll. 20-29).
4. Chauhan discloses that the supervisor “checks for (i) rules for
connectivity, (ii) required database fields, and (iii) other
dependencies” (¶ [0081], ll. 22-24).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
Issue 1
Claim 1 recites a system comprising a database coupled to logic of a
computer system. The Examiner finds that claim 1 recites “software per se”
because claim 1, according to the Examiner, fails to recite a system that is
“associated with physical components” (Ans. 3). However, the Examiner
fails to demonstrate that a system with a database as recited in claim 1 is not
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a “physical component.” Nor do we agree with the Examiner that a system
with a database is merely “software per se” since a computing system with a
database are disclosed as “embodied in hardware” (Spec. 39).
Claim 19 recites a computer readable medium. The Examiner finds
that claim 19 recites a computer readable medium that “comprises . . .
‘paper’ which [is] non-statutory” (Ans. 3). Appellant argues that claim 19
“does not describe . . . a medium like paper” (App. Br. 8), which is in direct
contradistinction with the Specification that discloses that the computer
readable medium is paper (FF 1). Because the Specification discloses that
the computer readable medium includes paper, we find Appellant’s
argument unpersuasive that the “computer readable medium” as recited in
claim 19 supposedly does not describe paper (App. Br. 8).
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claims 19-27 but we conclude that the Examiner erred in
rejecting claims 1-9 with respect to this issue.

Issue 2
As set forth above, claim 1 recites a system in which a record of a
drawing conversion job in which a drawing file is to be converted into a new
drawing format (i.e., “creation of a new drawing file” based on information
in a land base drawing file and a prior plat of land) is assigned to a
draftsman and recorded in a database. The system recited in claim 1 also
receives a request from the draftsman to close the drawing conversion job
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upon completion of the job to indicate that the plat has been redrawn in the
new drawing format.
Chauhan discloses a system in which customers report issues to a
utility company which sends a Field Engineer to generate a work order
based on geographic features of the customer site. A “superior” in Chauhan
reviews and approves the work order from the Field engineer after which
time a utility crew is dispatched to the customer site to perform the work
described in the work order (FF 2-3).
The Examiner equates the “superior” in Chauhan with the claimed
“assigned draftsman” (Ans. 12) but fails to indicate how the “superior” in
Chauhan is assigned a record of a drawing conversion job in which a
drawing is “tasked to be converted into a new drawing format” or that after
the job is completed, the “superior” in Chauhan sends a request to close the
job record “to indicate that the plat has been redrawn in the new drawing
format” as recited in claim 1. Rather, the “superior” in Chauhan appears to
review a work order from a Field Engineer and merely checks the work
order for rules for connectivity, required database fields, and other
dependencies (FF 4). None of these tasks appear to relate to converting a
drawing file into a new drawing format.
Also, after the “superior” in Chauhan approves the work order, repair
crews are dispatched to the customer site to perform the work (FF 2-3). We
do not find, and the Examiner has not demonstrated, that Chauhan also
discloses that the “superior” approving the work order (i.e., approves the
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cost, rules for connectivity, required database fields, and other
dependencies) results in the superior requesting the system to close the work
order to indicate that anything was redrawn in a new drawing format, much
less a completed land base drawing file as recited in claim 1. In fact, the
superior approving the work order appears to only indicate that a work crew
is to be dispatched to the customer site to perform the requested work.
Claims 10 and 19 recite similar features as claim 1.
Accordingly, we conclude that the Examiner erred in rejecting
independent claims 1, 10, and 19, and claims 2-9, 11-18, and 20-27 which
depend therefrom with respect to this issue.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in finding that claims 19-27 are directed to non-
statutory subject matter but we conclude that the Examiner erred in finding
that claims 1-9 are directed to non-statutory subject matter and that Chauhan
discloses each limitation recited in claims 1-27.

DECISION
We affirm the Examiner’s decision rejecting claims 19-27 under
35 U.S.C. § 101. We reverse the Examiner’s decisions rejecting claims 1-9
under 35 U.S.C. § 101 and claims 1-27 under 35 U.S.C. § 102(e).
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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

rvb

AT&T Legal Department – TKHR
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Room 2A-207
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