OLDCASTLE BUILDINGENVELOPE, INC.

Patent Trials and Appeals Board

Apr 28, 2021

2021002442 (P.T.A.B. Apr. 28, 2021)

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.
15/866,075 01/09/2018 Daipayan Bhattacharya OCBEP001C1US 1093
22434 7590 04/28/2021
WEAVER AUSTIN VILLENEUVE & SAMPSON LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250
EXAMINER
CHEN, YU
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
04/28/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@wavsip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAIPAYAN BHATTACHARYA, EDWIN HATHAWAY,
TONY CHOLFE, and DANIEL FRANK

____________

Appeal 2021-002442
Application 15/866,075
Technology Center 2600
____________

Before JENNIFER L. McKEOWN, CATHERINE SHIANG, and
JOHN D. HAMANN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2–22, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Oldcastle BuildingEnvelope, Inc. as the real party in
interest. Appeal Br. 2.

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Application 15/866,075

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STATEMENT OF THE CASE
Introduction
The present invention relates to “modeling, visualizing, analyzing,
and interacting with digital models of buildings and building products.”
Spec. ¶ 2.
In one embodiment, a method includes causing a building model
for a modeled building to be presented on a client computer. The
building model includes a three-dimensional scene. The three-
dimensional scene includes an individual rendering of at least
selected building components for the modeled building. The
method further includes permitting a user of the client computer
to perform a virtual walkthrough of the three-dimensional scene.
In addition, the method includes receiving a user change to the
three-dimensional scene via a graphical user interface (GUI)
component. Furthermore, the method includes dynamically
changing the building model in accordance with the user change.
The dynamically changing includes individually modifying an
appearance of at least one building component of the at least
selected building components in the three-dimensional scene.
Spec., Abstr. Claim 2 is exemplary:
2. A method at a computer server of providing building
product models and analytics, the method comprising:
obtaining a computer file comprising a building model
for a modeled building to be presented in a three-dimensional
visualization on a client device, the building model comprising
an initial building product;
determining modeling properties for the initial building
product and each of one or more predetermined alternative
building products wherein:
for the initial building product and each of the one or
more predetermined alternative building products, the modeling
properties indicate how the respective initial building product
or predetermined alternative building product should appear
when the building model is presented in the three-dimensional
visualization on the client device,
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the modeling properties are based on one or more product
attributes, wherein the one or more product attributes of the one
or more predetermined alternative building products are
different than the one or more product attributes of the initial
building product, and
the modeling properties are additionally based on one or
more building-site attributes, the one or more building-site
attributes comprising one or more attributes specific to a
geographic location of the modeled building;
causing the building model comprising the initial
building product to be presented in the three-dimensional
visualization on the client device via a graphical user interface
(GUI) that allows a user to modify a view of the building
model;
in response to user input received via the GUI, causing
the three dimensional visualization presented on the client
device to replace the initial building product in the building
model with at least one of the one or more predetermined
alternative building products; and
changing an analytical model for the modeled building,
wherein:
the analytical model is used to provide an analytical
visualization on the client device, the analytical visualization
providing a comparison of multiple selected building products
in a single visualization by displaying, for each of the multiple
selected building products, a graphical representation of a
respective performance value relative to one or more building
properties of the modeled building, and
the multiple selected building products are selected by
the user from the initial building product and the one or more
predetermined alternative building products.

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References and Rejections2

Claims
Rejected
35 U.S.C. § References
2–5, 8–15,
18–22
103 Boggs (US 2008/0062167 Al, Mar. 13, 2008),
Lepore (US 2010/0100405 Al, Apr. 22, 2010),
Demchak (US 2010/0118026 Al, May 13, 2010 )
6, 16 103 Boggs, Lepore, Demchak, ELSBERG (US
2010/0110071 Al, May 6, 2010)
7, 17 103 Boggs, Lepore, Demchak, Chaisuparasmikul (US
2008/0249756 A1, Oct. 9, 2008)
2–22 N/A (Double
Patenting)
U.S. Patent No. 9,898,862 B2, Lepore, Demchak

ANALYSIS
Double Patenting

Because Appellant does not argue against the Examiner’s rejection,
we summarily sustain the Examiner’s double patenting rejection of claims
2–22. We emphasize our affirmance is based on a procedural ground in
light of Appellant’s failure to dispute the Examiner’s rejection.

Obviousness
On this record, the Examiner did not err in rejecting claim 2.
We have reviewed and considered Appellant’s arguments, but such
arguments are unpersuasive. To the extent consistent with our analysis

2 Throughout this opinion, we refer to the (1) Final Office Action dated Apr.
7, 2020 (“Final Act.”); (2) Appeal Brief dated Nov. 9, 2020 (“Appeal Br.”);
(3) Examiner’s Answer dated Dec. 22, 2020 (“Ans.”); and (4) Reply Brief
dated Feb. 22, 2021 (“Reply Br.”).
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below, we adopt the Examiner’s findings and conclusions in (i) the action
from which this appeal is taken and (ii) the Answer.3

I

Appellant contends Boggs does not teach “one or more predetermined
alternative building products,” as recited in claim 2. See Appeal Br. 7–9;
Reply Br. 2. In particular, Appellant argues:
Boggs discloses a system for providing situational
awareness for a structure (which can be used by a first responders
and other emergency personnel) by rendering a 3D model of the
structure. The Office alleges that different objects in a 3D virtual
model of a structure as taught by Boggs can be interpreted to read
on the “building products”. . . and that “alternative building
products” can be made by changing attributes of these objects.
But there is no indication in Boggs that these alternatives are
“predetermined” as recited in the claims. Specifically, the
portions of Boggs cited by the Office as allegedly teaching
“determining modeling properties for . . . alternative building
products” (paragraphs [0085], [0086], [0090], and [0101]) do not
mention replacing an first object with an alternative-much less
selection from “predetermined alternative building products,” as
now recited in the claims. Instead, these portions mention the
ability to change attributes (dimensions, location, type, etc.) of a
single modeled object (e.g., window).

The shortcomings of Boggs with regard to teaching “one
or more predetermined alternative building products” are again
made clear in the Examiner’s assertion that Boggs allegedly
teaches or makes obvious the functionality of “causing the three-

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).

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dimensional visualization . . . to replace the initial building
product . . . with at least one of the one or more alternative
product.” The Examiner cited paragraph [0103] of Boggs as
allegedly replacing an “initial building product” with an
“alternative building product.” Problematically, the object in the
description of Boggs—a window—is not replaced by an
alternative building product. Instead, it is the same object, whose
attributes have changed due to some action: the window has been
“blown out” by an impact. Importantly, the change in attributes
are not “predetermined,” but instead calculated or computed
based on the action.

The explanations provided in the Response to Argument
section of the Office Action fails to adequately address these
insufficiencies of Boggs. For example, the examiner states that
“when a size of a window is changed, it will become a different
product of the same window type. All sizes of a window are
predetermined numbers in the information system. Thus, a
different size of window can teach predetermined alternative
building product.” But Boggs does not teach or imply that “all
sizes of a window are predetermined numbers in the information
system,” and the Examiner offers no evidence or explanation
support this claim. Further, it is unclear how “predetermined
numbers in [an] information system” would result in
“predetermined alternative building products.”

Appeal Br. 8–9 (footnotes omitted).
Appellant has not persuaded us of error. The Examiner finds “Boggs
indicated ‘interior or external sliding or plate glass’ are different type of
windows” in paragraph 110. Ans. 4. We agree with the Examiner that
Boggs’ “plate-glass” windows are predetermined, and constitute “one or
more predetermined alternative building products,” as required by claim 2.
See Boggs ¶ 101 (“the attributes of window can include the type of window
(e.g., interior or extern.al, sliding or plate glass and the like)”).
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Further, Appellant’s argument that the Examiner “fail[ed] to provide
the ‘articulated reasoning with some rational underpinning’ required to
support a prima facie case of obviousness” (Appeal Br. 9) is not relevant.
Because Boggs is the primary reference, the issue of whether Boggs teaches
“one or more predetermined alternative building products” does not involve
“articulated reasoning with some rational underpinning,” which relates to
combining teachings from multiple references. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”).

II

Appellant contends Boggs, Lepore, and Demchak do not collectively
teach “for each of the multiple selected building products, a graphical
representation of a respective performance value relative to one or more
building properties of the modeled building,” as recited in claim 2. See
Appeal Br. 9–12; Reply Br. 2. In particular, Appellant asserts Lepore’s “bar
graph does not inherently teach or make obvious the ‘graphical
representation’ of the claims”:
the claim language is not limited to “a bar graph or bar chart.”
Further, there is nothing inherent in a bar graph or bar chart that
includes “a graphical representation of a respective performance
value relative to one or more building properties.” Thus,
although the Examiner may simply be acknowledging that the
recited “graphical representation” may comprise a bar graph or
bar chart (a conclusion with which the Appellant does not
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disagree) the bar graph or bar chart does not necessarily disclose
or make obvious the rest of the claimed features.

Appeal Br. 10. Appellant contends Lepore’s “graphical representation
shows construction product properties, rather than building properties”:
the graph in FIG. 3b of Lepore comprises “a graphical
representation,” the graphical representation shows construction
product properties, rather than building properties. As noted in
the claims, “building properties” are properties “of the modeled
building.” This functionality can enable embodiments to show
how a product can impact overall building performance, as
illustrated in the graphs of FIGS. 4B-4G of the pending
Application. And although plain language is not necessarily
limited to this embodiment, it falls beyond what Lepore
describes. In particular, FIG. 3b shows a graphical
representation of “green attributes” (e.g., a product attribute such
as sustainability rating) specific to “candidate construction
products” rather than “building properties.”

The reasoning provided by the examiner offers regarding
why construction product attributes of Lepore would be
interpreted as “building properties” is insufficient. The rejection
of claim 2 offers only a conclusory statement:
“green/sustainability are properties of a building product as well
as the building itself.” In the Response to Argument section of
the Office Action, the Examiner uses paragraph [0019] of Lepore
(allegedly disclosing that “green/sustainability are properties of
a building”) as the basis of concluding “green attributes” of a
building product are therefore building properties. But this
reasoning appears to conclude that all properties related to
“green/sustainability” must necessarily be building properties.
This is, of course, incorrect. Although construction product and
a building may have corresponding properties, it does not
necessarily follow that the property of the construction product
is a building property. (An efficiency rating of a window, for
example, is different than an efficiency rating of a building using
the window.) The record therefore fails to provide the “rational
underpinning” required to support obviousness in this regard.
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Appeal Br. 10–11. With respect to Demchak, Appellant argues the
reference alone does not teach the disputed limitation:
Item 504 has two charts, one indicating an amount of
recycled materials in a building (504A) and another indicating an
amount of recycled materials in concrete floors (504B). It is
unclear how either item 506 or 504 disclose a “performance
value” for each of multiple selected building products because (i)
item 504 discloses only a single building product (not “multiple”:
the building in chart 504A is not a selected building product), (ii)
the chart of item 506 showing materials used in a building does
not show “selected” building products, and (iii) it is unclear how
a percentage composition of a material used could be interpreted
as a “performance value” for “each of multiple selected building
products.” Additionally, as indicated in the claims, the “multiple
selected building products are selected by the user from the initial
building product and the one or more predetermined alternative
building products.” There is no indication that any “alternative
building products” are used in FIG. 6 at all.

As for FIG. 10, it shows a “radar diagram 1000” illustrating
recycled content of different materials used in the building. But
the radar diagram seems to be off point for at least the reasons
that (i) it is unclear why “materials” are apparently used to read
on the term “building products” (the material “structure” could
include many building products, for example), (ii) the Appellant
cannot find (and the examiner has not alleged) that Demchak
teaches these materials are “selected,” (iii) and there is no
indication that the materials in the radar diagram represent
“alternative building products.”
Appeal Br. 12.
We disagree. Appellant’s arguments about Lepore’s bar graphs
(Appeal Br. 10) are not directed to the Examiner’s specific findings, as the
Examiner does not merely cite Lepore’s bar graphs for teaching the entire
disputed limitation. See Ans. 5–7. Further, because the Examiner relies on
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the combination of Boggs, Lepore, and Demchak to teach the disputed claim
limitation, Appellant cannot establish nonobviousness by attacking the
references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The Examiner finds—and Appellant does not persuasively
argue—Boggs teaches the claimed “the modeled building,” and Lepore
teaches “for each of the multiple selected building products, a graphical
representation of a respective performance value relative to . . . .” See Final
Act. 28, 35–36; Ans. 5–6. The Examiner further finds—and Appellant does
not persuasively argue—Demchak teaches the claimed “one or more
building properties.” See Ans. 7.4
Therefore, and in light of Appellant’s failure to show error in the
Examiner’s reasoning for the proposed combination (discussed below)
Appellant has not shown the Examiner erred in concluding Boggs, Lepore,
and Demchak collectively teach “for each of the multiple selected building
products, a graphical representation of a respective performance value
relative to one or more building properties of the modeled building,” as
recited in claim 2.

III

Appellant argues the proposed combination of Boggs, Lepore, and
Demchak would change the principle operation of Boggs. See Appeal Br. 8;
Reply Br. 2. In particular, Appellant asserts:

4 The Examiner also provides cumulative findings based on Lepore and
Demchak. See Ans. 5–7.
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The references each deal with very different aspects of building
modeling, which are used for different purposes. As noted,
Boggs discloses 3D visualizations of existing buildings for
situational awareness in training/simulation. There does not
appear to be any need or desire to, for example, allow a user to
shop for alternative products, or similarly review “for each of the
multiple selected building products [including one or more
predetermined alternative building products], a graphical
representation of a respective performance value relative to one
or more building properties of the modeled building” as Lepore
and Demchak are alleged to disclose. (Hence the ability in Boggs
to modify the attributes of an object (e.g. window) to match those
of an existing building.) Altering Boggs to provide this
functionality would provide no benefit in the principle of
operation of Boggs which is to model existing buildings. Indeed,
the implementation of functionality would therefore change this
principle of operation.

Appeal Br. 8 (footnote omitted).
Modifying Boggs to include unneeded features of Lepore or
Demchak would only be obvious if Boggs’ mode of operation
were changed, for example, from a tool for ex post reconstruction
of an existing building to an ex ante construction tool in which a
comparison of a performance value of “alternative building
products” were needed for product selection before building
construction. The comparison of “alternative building products”
for Boggs’ current mode of operation (an ex post reconstruction
tool) would inappropriately require “a change in the basic
principles under which [Boggs’] construction was designed to
operate.”
Reply Br. 2.
Appellant’s arguments are unpersuasive, as Appellant does not
provide sufficient objective evidence to support the arguments. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (finding that
“attorney argument [is] not the kind of factual evidence that is
required to rebut a prima facie case of obviousness”); Meitzner v.
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Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument of counsel
cannot take the place of evidence lacking in the record.”). In
particular, Appellant has not provide any evidence to show Boggs’
principle of operation is indeed “to model existing buildings” Appeal
Br. 8. Nor has Appellant provided any evidence to show the proposed
combination indeed would change Boggs’ principle of operation.

IV

Appellant argues there is no motivation to combine the teachings of
Boggs, Lepore, and Demchak for claim 2. See Appeal Br. 8–9; Reply Br. 2.
In particular, Appellant asserts:
Problematically, this [Examiner’s] reasoning may explain why
the graphical representation is used in Lepore, but does not
explain why it would be used in (or even relevant to) Boggs. As
noted, Boggs discloses modeling 3D visualizations of existing
buildings for training/simulation, so a “price versus attribute
analysis” is entirely irrelevant to the functionality or performance
of Boggs. And thus, Lepore does not provide the
suggestion/motivation as suggested by the Office.

In the Response to Argument section of the Office Action, the
examiner raises the additional argument that “the fact that both
Boggs and Lepore are on the same software platform (Autodesk
REVIT) make it obvious for one of ordinary skill in the art to
combine,” further concluding “it is obvious to incorporate the
feature as taught by Lepore for product comparison due to both
Boggs and Lepore are [sic] plug-ins for REVIT. . . . . A similar
reasoning is provided for combining Demchak and Boggs. But
even if these assertions are true, the reasoning is simplistic and
insufficient. The simple fact that Boggs may share a common
software platform with Lepore and Demchak does not make
otherwise unrelated product comparison functionality of Lepore
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and Demchak somehow relevant. Instead, it only evidences that
there is a possibility these references can be combined, which is
insufficient alone to support a rejection of obviousness . . . .

Accordingly, . . . the Office has not sufficiently established how
a person ordinary skill in the art at the time of filing would have
combined Boggs with Lepore or Demchak in the manner
suggested.
Appeal Br. 8–9 (footnotes omitted).
We disagree with Appellant. The U.S. Supreme Court has held “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. Contrary to Appellant’s arguments, “[i]f the claim extends to what is
obvious, it is invalid under § 103” and “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418–19.
The Examiner finds—and Appellant does not dispute—this invention,
Boggs, Lepore, and Demchak are analogous art. See Final Act. 28–37. The
Examiner also provides reasoning as to why one skilled in the art would
have found it obvious to combine the teachings of Boggs, Lepore, and
Demchak. See Final Act. 37. In response to Appellant’s arguments, the
Examiner further explains why one skilled in the art would have pursued the
proposed combination. See Ans. 8. In particular, the Examiner explains one
skilled in the art would have seen the benefit of the proposed combination as
being “attribute analysis, product to product comparisons, and also
provid[ing] a convenient view of how much of a given building model is
composed of a particular building material.” Ans. 8; see also KSR, 550 U.S.
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at 424 (“[t]he proper question to have asked was whether a . . . designer of
ordinary skill . . . would have seen a benefit to upgrading Asano with a
[feature from the secondary reference]”). Appellant does not dispute such
further explanation.
The Examiner’s findings and conclusion are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle,” as the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. Appellant does not
present adequate evidence that the resulting arrangements would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418–19).
Accordingly, we agree with the Examiner that applying Lepore’s and
Demchak’s techniques in the Boggs method would have predictably used
prior art elements according to their established functions—an obvious
improvement. See KSR, 550 U.S. at 417.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 2, and independent
claim 12 for similar reasons.
We also sustain the Examiner’s rejection of corresponding dependent
claims 3–11 and 13–22, as Appellant does not advance separate substantive
arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
We affirm the Examiner’s decision rejecting claims 2–22 under 35
U.S.C. § 103.
We affirm the Examiner’s decision rejecting claims 2–22 under the
double patenting doctrine.
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–5, 8–15,
18–22
103 Boggs, Lepore,
Demchak
2–5, 8–15,
18–22

6, 16 103 Boggs, Lepore,
Demchak,
ELSBERG
6, 16
7, 17 103 Boggs, Lepore,
Demchak,
Chaisuparasmikul
7, 17
2–22 Nonstatutory
Double Patenting
U.S. Patent No.
9,898,862 B2,
Lepore, Demchak
2–22
Overall
Outcome
2–22

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). See 37
C.F.R. § 41.50(f).
AFFIRMED