Ex Parte Xie et al

Patent Trial and Appeal Board

Dec 17, 2013

11466194 (P.T.A.B. Dec. 17, 2013)

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.
11/466,194 08/22/2006 Hui Xie 2005P21689 US01 1599
28524 7590 12/18/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
RICHER, AARON M
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
12/18/2013 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 HUI XIE, JIN ZHOU, and TONG FANG
____________

Appeal 2011-001186
Application 11/466,194
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
JUSTIN BUSCH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001186
Application 11/466,194

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6, 8, 10-14, 16-23, 25, and 27, which are the only
claims remaining in the application. We have jurisdiction under 35 U.S.C. §
6(b).
We reverse.

Representative Claim
1. A method for smoothing a triangle mesh surface, said
triangle mesh surface comprising a target vertex to be
smoothed, said method being performed by a processor and
comprising:
identifying a plurality of neighboring vertices in said
triangle mesh surface as a function of a position of said target
vertex;
determining a position of said target vertex and a position
of each vertex in said plurality of neighboring vertices in a
coordinate system associated with said target vertex;
determining a surface function as a function of said
position of said target vertex and said position of each vertex in
said plurality of neighboring vertices; and
determining a new position of said target vertex as a
function of said surface function;
wherein said step of determining a new position of said
target vertex comprises determining a new x coordinate and a
new y coordinate of said target vertex as a function of the x
coordinates and the y coordinates of said vertices in said
plurality of neighboring vertices, respectively; and
wherein a z coordinate for said target vertex is
determined by inputting said new x coordinate and said new y
coordinate of said target vertex into said surface function.
Appeal 2011-001186
Application 11/466,194

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Prior Art
Orenstein US 6,580,427 B1 Jun. 17, 2003
Baumberg US 2005/0052452 A1 Mar. 10, 2005
Sriram US 7,084,869 B2 Aug. 1, 2006
Litke US 2006/0267978 A1 Nov. 30, 2006
Dai US 2007/0058132 A1 Mar. 15, 2007

Examiner’s Rejections
Claims 11-14, 16, and 17 stand rejected under 35 U.S.C. § 112,
second paragraph.
Claims 1, 2, 8, 11, 12, 16, 18, 19, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Baumberg and Orenstein.
Claims 3, 4, 10, 13, 17, 20, 21, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Baumberg, Orenstein, and Sriram.
Claims 5 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baumberg, Orenstein, Sriram, and Litke.
Claims 6, 14, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baumberg, Orenstein, and Dai.

ANALYSIS
Section 112, second paragraph rejection of claims 11-14, 16, and 17
The Examiner rejected claims 11-14, 16, and 17 under 35 U.S.C.
§ 112, second paragraph, because the Examiner cannot determine whether
the scope of the disclosed structure corresponding to the claimed means
encompasses a purely software embodiment. Ans. 3-4. Appellants contend
that the corresponding structure is a computer system executing program
instructions, which satisfies the requirements of 35 U.S.C. § 112, second
paragraph. Reply Br. 3-4.
Appeal 2011-001186
Application 11/466,194

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According to section 2181.II.(B) of the Manual of Patent Examining
Procedure,
Often the supporting disclosure for a computer-implemented
invention discusses the implementation of the functionality of
the invention through hardware, software, or a combination of
both. In this situation, a question can arise as to which mode of
implementation supports the means-plus-function limitation.
The language of 35 U.S.C. § 112, sixth paragraph requires that
the recited “means” for performing the specified function shall
be construed to cover the corresponding “structure or material”
described in the specification and equivalents thereof.
Therefore, by choosing to use a means-plus-function limitation
and invoke 35 U.S.C. § 112, sixth paragraph, applicant limits
that claim limitation to the disclosed structure, i.e.,
implementation by hardware or the combination of hardware
and software, and equivalents thereof. Therefore, the examiner
should not construe the limitation as covering pure software
implementation.
Here, by invoking 35 U.S.C. § 112, sixth paragraph, Appellants limit the
means-plus-function limitations to the disclosed structure, i.e.,
implementation by hardware or the combination of hardware and software,
and equivalents thereof. Therefore, the Examiner erred by construing the
limitations as covering pure software implementations.
Appellants further contend that disclosing an algorithm in the
Specification corresponding to each claimed means-plus-function limitation
satisfies the requirements of 35 U.S.C. § 112, second paragraph. See Reply
Br. 4. We agree with Appellants. MPEP § 2181.II.(B). Appellants have
shown where the function of each “means” limitation is described in
Appellants’ Specification. App. Br. 2-3; Spec. ¶¶ 21-25 and Fig. 7. The
Examiner has not provided persuasive evidence or argument to show that the
corresponding description of each function in the Specification fails to
Appeal 2011-001186
Application 11/466,194

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disclose an algorithm that satisfies the requirements of 35 U.S.C. § 112,
second paragraph.
We do not sustain the rejection of claims 11-14, 16, and 17 under 35
U.S.C. § 112, second paragraph.

Section 103 rejection of claims 1, 2, 8, 11, 12, 16, 18, 19, and 25
Claim 1 recites “determining a new position of said target vertex as a
function of said surface function . . . wherein a z coordinate for said target is
determined by inputting said new x coordinate and said new y coordinate of
said target vertex into said surface function” where the surface function is “a
function of said position of said target vertex and said position of each
vertex in said plurality of neighboring vertices.” The Examiner finds that
Baumberg teaches that a z coordinate is determined from a surface function
that is a function of the target vertex and the position of each vertex in the
plurality of neighboring vertices, and Orenstein teaches that the z coordinate
is determined by inputting new x and y coordinates into the surface function.
Ans. 4-6, 13-15.
Appellants contend that the surface function of Baumberg does not
determine a z coordinate from the new x and y coordinates, and the surface
function of Orenstein does not determine a z coordinate as a function of
neighboring vertices. App. Br. 10. Appellants further contend that to use
both surface functions of Baumberg and Orenstein, a new 3D position of
each vertex, including the z coordinate, would be determined using the
surface function of Baumberg. Then, the new position would be compressed
and stored using compression coefficients of Orenstein. The compressed z
coordinate would be retrieved using the compression coefficients in the
Appeal 2011-001186
Application 11/466,194

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surface function of Orenstein. Therefore, the combination of Baumberg and
Orenstein does not teach “a z coordinate for said target vertex is determined
by inputting said new x coordinate and said new y coordinate of said target
vertex into said surface function.” Reply Br. 4-6.
We agree with Appellants. The surface function of Baumberg does
not determine a new position of the target vertex by inputting new x and y
coordinates into the surface function to determine the z coordinate. Rather,
the surface function of Baumberg computes the new z coordinate as a
function of neighboring vertices. The surface function of Orenstein does not
determine the new position of the target vertex using a surface function that
is a function of neighboring vertices. Instead, the surface function of
Orenstein decompresses a previously determined and compressed z
coordinate using corresponding x and y values and compression coefficients.
However, the compression coefficients are not a function of neighboring
vertices.
The combination of Baumberg and Orenstein teaches determining a
new position of the target vertex using a first equation that is a function of
neighboring vertices, then compressing and retrieving the z coordinate of the
new position using a second equation that is a function of compression
coefficients and x and y values of the new position. The combination of
Baumberg and Orenstein does not teach “determining a new position of . . . a
z coordinate for said target . . . by inputting said new x coordinate and said
new y coordinate of said target vertex into said surface function” that is “a
function of said position of said target vertex and said position of each
vertex in said plurality of neighboring vertices.”
Appeal 2011-001186
Application 11/466,194

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We do not sustain the rejection of claim 1 under 35 U.S.C. § 103.
Claims 2, 8, 11, 12, 16, 18, 19, and 25 recite, or depend from a claim that
recites, a limitation similar to that found in claim 1. Therefore we do not
sustain the rejection of claims 2, 8, 11, 12, 16, 18, 19, and 25 under 35
U.S.C. § 103.

Section 103 rejection of claims 3, 4, 10, 13, 17, 20, 21, and 27
Claims 3, 4, 10, 13, 17, 20, 21, and 27 depend from a claim that
recites a limitation similar to that found in claim 1. We do not sustain the
rejection of claims 3, 4, 10, 13, 17, 20, 21, and 27 under 35 U.S.C. § 103.

Section 103 rejection of claims 5 and 22
Claims 5 and 22 depend from a claim that recites a limitation similar
to that found in claim 1. We do not sustain the rejection of claims 5 and 22
under 35 U.S.C. § 103.

Section 103 rejection of claims 6, 14, and 23
Claims 6, 14, and 23 depend from a claim that recites a limitation
similar to that found in claim 1. We do not sustain the rejection of claims 6,
14, and 23 under 35 U.S.C. § 103.

DECISION
The rejection of claims 11-14, 16, and 17 under 35 U.S.C. § 112,
second paragraph is reversed.
Appeal 2011-001186
Application 11/466,194

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The rejection of claims 1, 2, 8, 11, 12, 16, 18, 19, and 25 under 35
U.S.C. § 103(a) as being unpatentable over Baumberg and Orenstein is
reversed.
The rejection of claims 3, 4, 10, 13, 17, 20, 21, and 27 under 35
U.S.C. § 103(a) as being unpatentable over Baumberg, Orenstein, and
Sriram is reversed.
The rejection of claims 5 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Baumberg, Orenstein, Sriram, and Litke is reversed.
The rejection of claims 6, 14, and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Baumberg, Orenstein, and Dai is reversed.

REVERSED

ELD