Ex Parte Williams

Patent Trial and Appeal Board

Feb 21, 2014

11184167 (P.T.A.B. Feb. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte CHARLES W. WILLIAMS 7
___________ 8
9
Appeal 2011-011794 10
Application 11/184,167 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2011-011794
Application 11/184,167

2

STATEMENT OF THE CASE1 1
Charles W. Williams (Appellant) seeks review under 35 U.S.C. § 134 of 2
a final rejection of claims 19-26 and 35-44, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b). 5
The Appellant invented an open-network system for managing the 6
architectural process (Spec., para. [0003]). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 19, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
19. A computer readable storage medium comprising 11
instructions, which, when executed by a processor, cause a 12
computer to perform a set of steps comprising: 13
a) providing a graphical interface to a user, 14
the graphical interface comprising a form 15
specific to an architectural work category; 16
b) receiving a set of input data, 17
the set of input data comprising data 18
from the form specific to the architectural work 19
category; 20
and 21
c) automatically generating multiple aspects of an architectural 22
contract document, 23
the multiple aspects comprising: 24
i) a schedule, 25

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 4, 2011) and the Examiner’s Answer (“Ans.,” mailed
April 29, 2011).
Appeal 2011-011794
Application 11/184,167

3

wherein the schedule is an aspect of the 1
architectural contract document comprising 2
a listing of attributes 3
of repetitive building parts; 4
ii) a specification, 5
wherein the specification is an aspect of the 6
architectural contract document comprising 7
written, detailed descriptions of the 8
materials and processes 9
that make up a building; 10
and 11
iii) a detail, 12
wherein the detail is an aspect of the architectural 13
contract document comprising 14
drawings of parts making up the building; 15
wherein automatically generating the multiple aspects 16
comprises 17
incorporating the data from the form specific to the 18
architectural work category 19
into each of the multiple aspects. 20
The Examiner relies upon the following prior art: 21
Elliott US 6,446,053 B1 Sep. 3, 2002
Claims 19, 35, and 44 stand provisionally rejected under the judicial 22
doctrine of obviousness type double patenting. 23
Claims 19-26 and 35-44 stand rejected under 35 U.S.C. § 102(e) as 24
anticipated by Elliott. 25
Appeal 2011-011794
Application 11/184,167

4

ISSUES 1
The issue of the provisional non-statutory double patenting rejection is 2
resolved by the terminal disclaimer filing. The issues of anticipation turn 3
primarily on whether Elliott describes creating output that both describes the 4
nature of the material needed and the amount of such material, and on 5
whether the mental interpretation of input data is given patentable weight. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be 8
supported by a preponderance of the evidence. 9
Facts Related to the Prior Art 10
Elliott 11
01. Elliott is directed to developing a construction proposal including 12
a detailed graphical model and a detailed cost estimate model. 13
The proposal is submitted electronically over a networked 14
communication system to a construction professional for a bid, 15
and the user receives a response from the construction 16
professional over the networked communications system. The 17
user accomplishes all of these tasks from a single computer 18
environment. A computer application installed on the user’s 19
computer educates the user as it guides the user through a series of 20
construction phases and steps, prompting the user to input critical 21
information and make appropriate selections throughout the series 22
of phases and steps. Elliott 2:25-39. 23
02. An application guides the user through the following steps: create 24
an initial graphical model and store it in a first memory; create an 25
initial cost estimate model and store it in a second memory; 26
Appeal 2011-011794
Application 11/184,167

5

prompt the user to create the construction proposal in a series of 1
construction phases and steps; access product descriptions from 2
the first database associated with a particular one of the 3
construction steps and prompt the user to select from them; update 4
the graphical model by incorporating the digital image of the 5
selected product description into the existing graphical model in 6
the first memory; update the cost estimate model by calculating a 7
cost of the selected product from the corresponding cost-per-unit 8
data, incorporate the cost into the existing cost estimate model in 9
the second memory, and store the updated cost estimate model in 10
the second memory; display a completed construction proposal on 11
the user’s display screen; access the second database and display 12
the contact information of at least one construction professional; 13
and electronically transmit the completed construction proposal to 14
a selected one of the displayed construction professionals. Elliott 15
2:40-3:2. 16
03. The application prompts the user to select a starting point by 17
inputting an initial graphical model. In the example of building a 18
house, the initial graphical model is a lot of land. The initial 19
graphical model may be derived from a photograph of the lot 20
scanned into the computer at the user site. This digital image can 21
then either be sent to the user on disc, or downloaded to the user 22
via the networked communication system. Alternatively, the 23
initial graphical model may be selected from a variety of 24
templates stored in the user computer’s memory when initially 25
Appeal 2011-011794
Application 11/184,167

6

installing the application and/or accessed through the central site 1
plan database. Elliott 5:37-51. 2
04. A user designates materials to be used. Elliott 7:Table 1. 3
05. In Phases 3 to 14 the user must select materials. Elliott 8:57-58. 4
06. A user enters product data, such as for floor covering products 5
offered by Floors 4U, which are displayed in the lower right 6
section of the prompt window. The product data includes the 7
name of the product, the cost-per-unit, and a digital image of the 8
product. Elliott 9:6-14. 9
07. The user computer simultaneously calculates the square footage of 10
the Main Floor Dining Room from the user input floor plans in 11
memory, and calculates the required material quantity and the 12
associated material cost from the cost-per-unit data. Elliott 9:19-13
23. 14
08. Once the proposal is complete to the user’s satisfaction, the 15
application prepares it for submission. Elliott 10:47-48. 16
09. The user submits the proposal directly to the central site. The user 17
identifies the geographic location of the building site and his 18
desire to hire a general contractor or to receive subcontractor bids 19
directly. Regional contractors are selected at the central site and 20
the user’s proposal submitted to the selected contractors. Once the 21
subcontractor or general contractor receives the bid they may 22
review it and respond to it. Subscribing contractors have software 23
application installed on their computers that enables them to view 24
and navigate the user’s proposal package. Elliott 11:25-47. 25
Appeal 2011-011794
Application 11/184,167

7

ANALYSIS 1
Claims 19, 35, and 44 provisionally rejected under the judicial doctrine of 2
obviousness type double patenting. 3
We are persuaded by the Appellant’s argument that the timely filed 4
terminal disclaimer removes this rejection. Although the Examiner has not 5
indicated the rejection is withdrawn, the Examiner did not respond to this 6
argument. 7
Claims 19-26 and 35-44 rejected under 35 U.S.C. § 102(e) as anticipated by 8
Elliott. 9
As to the independent claims, we are not persuaded by the Appellant’s 10
argument that Elliott fails to describe automatically generating the recited 11
schedule and specification. App. Br. 12-15. The entire proposal is 12
automatically generated at the general contractor’s site, or on the user’s 13
computer for printing. FF 08- 09. The proposal includes amounts of 14
material (schedule) and detailed descriptions of material (specification). FF 15
04-07. 16
As to claims 21-23, reciting data fields describing shingles, doors, tiles, 17
flooring, and windows, we are not persuaded by the Appellant’s argument 18
that the specific fields recited in the claims are not non-functional 19
descriptive material. 20
In a recent non-precedential decision, our reviewing court reminded 21
us of the applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. 22
Cir. 1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969) and In re Lowry, 32 23
F.3d 1579 (Fed. Cir. 1994) decisions. 24
We have held that patent applicants cannot rely on printed 25
matter to distinguish a claim unless “there exists [a] new and 26
unobvious functional relationship between the printed matter 27
Appeal 2011-011794
Application 11/184,167

8

and the substrate.” In re Gulack, 703 F.2d 1381, 1386 1
(Fed.Cir.1983). . . . 2
3
. . . [T]he Board did not create a new “mental 4
distinctions” rule in denying patentable weight . . . . On the 5
contrary, the Board simply expressed the above-described 6
functional relationship standard in an alternative formulation—7
consistent with our precedents—when it concluded that any 8
given position label’s function . . . is a distinction “discernable 9
only to the human mind.” . . . ; see In re Lowry, 32 F.3d 1579, 10
1583 (Fed.Cir.1994) (describing printed matter as “useful and 11
intelligible only to the human mind”) (quoting In re Bernhart, 12
. . . 417 F.2d 1395, 1399 (CCPA 1969)). 13
In re Xiao, 462 Fed. Appx. 947, 950 (Fed. Cir. 2011). Thus, non-functional 14
descriptive material, being useful and intelligible only to the human mind, is 15
given no patentable weight. See also In re Ngai, 367 F.3d 1336, 1339 (Fed. 16
Cir. 2004). “The rationale behind this line of cases is preventing the 17
indefinite patenting of known products by the simple inclusion of novel, yet 18
functionally unrelated limitations.” King Pharms., Inc. v. Eon Labs, Inc., 19
616 F.3d 1267, 1279 (Fed Cir 2010). (The relevant inquiry here is whether 20
the additional instructional limitation has a “new and unobvious functional 21
relationship” with the method , that is, whether the limitation in no way 22
depends on the method, and the method does not depend on the limitation). 23
We agree that the claims describe a special purpose computer. The 24
question of eligibility of subject matter is not at issue. Elliott simply 25
describes that special purpose computer in providing a form that allows for 26
data entry that is then stored. The specific names given to the data fields are 27
interpretable only to the human mind, much as the Instructions in Ngai. The 28
data field contents are not used other than to be stored. As such, the process 29
does not depend on the interpretation of the data fields, and the interpretation 30
Appeal 2011-011794
Application 11/184,167

9

of the data fields does not depend on the process. Further, Elliott’s software 1
will necessarily encompass whatever fields are appropriate for the 2
customer’s home construction project, as a simple requirement for operation. 3
As to claim 24, reciting “allowing the user to create a template by 4
storing data from the form specific to the architectural work category as the 5
template,” we are not persuaded by the Appellant’s argument that Elliott 6
fails to describe this. The claim does not specify the nature of the template 7
or how it is created. In fact, the claim does not even recite creating a 8
template, but merely allowing a user to create a template. The operative 9
language in the claim actually is “storing data from the form specific to the 10
architectural work category,” which Elliott clearly does. The remainder of 11
the claim is aspirational rather than functional. 12
As to claims 25 and 26, reciting applying claim 24 to shingles, flashing, 13
and doors, the arguments are substantially the same as those asserted against 14
claim 21, and are equally unpersuasive here. 15
The remaining claims are argued on the basis of the above claims or 16
repeating the same rationales. 17
CONCLUSIONS OF LAW 18
The provisional rejection of claims 19, 35, and 44 under the judicial 19
doctrine of obviousness type double patenting is improper. 20
The rejection of claims 19-26 and 35-44 under 35 U.S.C. § 102(e) as 21
anticipated by Elliott is proper. 22
DECISION 23
The rejection of claims 19-26 and 35-44 is affirmed. 24
Appeal 2011-011794
Application 11/184,167

10

No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2011). 3
4
AFFIRMED 5
6
7
8
9
10
11
mls 12