Craig Schulz

Patent Trials and Appeals Board

Jul 30, 2019

13622994 - (R) (P.T.A.B. Jul. 30, 2019)

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.
13/622,994 09/19/2012 Craig Schulz 1351.1000 3628
35236 7590 07/30/2019
The Culbertson Group, P.C.
2210 Western Trails Blvd., Unit 104
Austin, TX 78745
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
docket@tcg-ipl.com
rculbertson2@gmail.com
rculbertson@tcg-ipl.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG SCHULZ
____________

Appeal 2018-003122
Application 13/622,994
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant’s request is Denied. However, as noted below, a limited
second request for rehearing will be permitted.
This is a decision on Appellant’s Request for Rehearing.1 Appellant’s
Request for Rehearing is filed under 37 C.F.R. § 41.50(a)(1) requesting that
we reconsider our Decision of May 2, 2019, wherein, inter alia, we affirmed
the Examiner’s rejection of claims 1–4, 6, 8–11, 13, 15–17, and 20–23 under
35 U.S.C. § 103(a). We have reconsidered our Decision in light of
Appellant’s comments in the request, and although we agree to further

1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1).
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provide clarity to Appellant regarding the rejection of claim 1, we have
found no error in the result reached. We, therefore, decline to change the
result of the Decision.

Appellant’s Contentions
1. Appellant contends that, as to claim 1, the Board erred because:
Appellant’s claim 1 requires at element (c), under control of the
system of one or more data processing devices included in the
evaluation system, causing a grid to be displayed at the user
device along with a representation of the identified damaged
section, the grid defining a number of grid segments with
each grid segment located over a respective portion of the
representation of the identified damaged section, the grid and
representation of the identified damaged section being
displayed together with a number of predefined damage
severity indicators . . .
Element (d) of claim 1 then requires,
receiving a respective damage severity level input from the
user device for each of the grid segments encompassing
damage which is to be considered in an overall repair cost
estimate for the identified damaged section . . .
Thus, in order for the combination of Holden and Xu to meet
these limitations from claim 1 the combination must include not
only the grid and product representation as set out in element
(c), but must also receive a respective damage severity level
input from the user device for each of the grid segments
encompassing damage which is to be considered as set out in
element (d). That is, the damage severity level inputs must be
received per grid segment encompassing damage.
. . .
[S]imply adding the user-input data system disclosed in Xu to
the grid-based image comparison system of Holden, would not
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result in a system in which damage severity level inputs are
received from a user device per grid segment. Therefore, a
further modification of the combination of Holden and Xu is
required to meet the limitations of claim 1. That further
modification is that the user inputs described in Xu would be
made on a grid segment-by-grid segment basis.
. . .
The notion of a grid over a product representation is foreign
to Xu and thus nothing in Xu could provide a reason for user
inputs on a per grid segment basis. As for Holden, the grid
segments are used in connection with image comparisons
(Holden ¶¶0056-0064) and thus the notion of user input data
per grid segment is necessarily also foreign to Holden.
Because neither Holden nor Xu provide any apparent reason
for the further modification of the combination to receive user
input data as in Xu on a per grid segment basis, the reason
must come from elsewhere in the record. However, there is
nothing in the record to provide this apparent reason to
further modify the proposed combination of Holden and Xu to
reach the process set out in claim 1.
. . .
Element (d) of claim 1 specifically requires “receiving a
respective damage severity level input from the user device for
each of the grid segments encompassing damage which is to be
considered in an overall repair cost estimate for the identified
damaged section.” In contrast, Holden discloses the use of a
grid system in connection with image comparisons (Holden
¶¶0056-0064).
Reh’g Req. 3–5, Appellant’s emphasis omitted, panel’s emphasis added.
2. Appellant also contends that, as to claim 4, the Board erred
because:
[S]imply finding that Holden displays front and side views does
not meet the . . . limitation in claim 4 that the product sectional
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representation includes a representation of the entire vehicle
divided into a number of different sections.
. . .
Xu simply discloses providing multiple diagrams of different
parts of a vehicle for use in allowing a user to input damage
information relevant to the selected diagram.
Thus, neither Holden nor Xu discloses or suggests a product
sectional representation as claimed, that is, “including a
representation of the entire product identified by the product
identifying information divided into a number of different
sections of the product where each of the sections is separately
selectable.” In order for the proposed combination of Holden
and Xu to meet the limitations of claim 4, the combination must
be further modified to provide a sectional representation of the
entire product divided into separately selectable sections.
Reh’g Req. 7–8, Appellant’s emphasis omitted, panel’s emphasis added.
3. Appellant also contends that, as to claim 22, the Board erred
because:
On the face of it, paragraph 30 of Xu does not disclose or
suggest displaying an inquiry for additional information in
response to a user-selected damage severity indicator (defined
in claim 1). Likewise, nothing in paragraph 115 of Xu suggests
displaying such an inquiry in response to a user-selected
damage severity indicator as claimed. Therefore, further
modification of the proposed combination of Holden and Xu is
required in order to meet the limitation of claim 22.
Reh’g Req. 8, Appellant’s emphasis omitted, panel’s emphasis added.
4. Appellant also contends that, as to claim 1, the Board erred
because:
As noted above, Appellant’s claim 1 requires causing a number
of predefined damage 10 severity indicators to be displayed
with the grid and product representation (element (c) of claim
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1). Element (d) of claim 1 further requires receiving a
respective damage severity level input from the user device
where each such input includes “a user-selected damage
severity indicator selected from the number of predefined
damage severity indicators displayed at the user device”
(element (d) of claim 1). (Emphasis added). Thus claim 1 does
not merely require displaying “predefined damage severity
indicators.” Rather, claim 1 specifically requires that each
damage severity level input is selected from those “predefined
damage severity indicators” displayed in accordance with
element (c) of claim 1.
. . .
The Decision treats Appellant’s limitations regarding the
“predefined damage severity indicators” as non-functional
descriptive material that does not patentably distinguish the
claim from the prior art. Decision at p. 19, lines 22-26.
However, this finding overlooks the further claim limitations
regarding how the “predefined damage severity indicators”
are used in the process, namely, for making the damage
severity level inputs as required at element (d) of claim 1 (for
example). This oversight of the functional relationship between
the “predefined damage severity indicators” and the damage
severity level inputs leads to an incorrect conclusion on
obviousness since the Examiner admits on the record that
Holden and Xu do not teach or suggest the limitations regarding
the display of the “predefined damage severity indicators” (See
Final Action 10-11) and therefore also cannot teach or suggest
the claimed use of such indicators.
. . .
Appellant submits that the “predefined damage severity
indicators” do not represent non-functional descriptive
material for two reasons. First, the “predefined damage
severity indicators” are not claimed for what they
communicate and thus do not meet the threshold requirement
for material to be considered non-functional descriptive
material. . . . Second, even assuming arguendo that the
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“predefined damage severity indicators” represent merely
descriptive material, these indicators are clearly functionally
related to the claimed process (as to claim 1, and apparatus and
program product as to claims 9 and 15, respectively) because
these indicators are used to make the damage severity level
inputs.
Reh’g Req. 9–11, Appellant’s emphasis omitted, panel’s emphasis added.

ANALYSIS
Claim 1
As to Appellant’s above contention 1, we are not persuaded of error.
Appellant’s argument is that the combination of Holden and Xu does not
teach or suggest “receiving a respective damage severity level input from the
user device for each of the grid segments encompassing damage,” as recited
in claim 1 (i.e., receiving damage severity level input on a grid segment-by-
grid segment basis, as characterized by Appellant) because neither reference
individually teaches the aforementioned limitation and that the combination
of Xu and Holden would not result in a system in which damage severity
level inputs are received from a user device for each of the grid segments
encompassing damage. However, this argument is in error. As the
Examiner found, Holden explicitly teaches an image processing system that
compares grid segments of an image of a damaged vehicle to grid segments
of an image of an undamaged vehicle. See Ans. 15. More specifically,
Holden teaches comparing change in length, height, width, area, and volume
between front end grid segment of image of damaged vehicle and front end
grid segment of image of undamaged vehicle, and determining quantity,
extent, and severity of damage to damaged vehicle depicted in the image.
See id. (citing Holden ¶¶ 56, 63); see also Holden ¶ 62. Thus, as the
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Examiner found, Holden teaches “[identifying a damage severity level] for
each of the grid segments encompassing damage.” See Final Act. 6–7; see
also Ans. 13, 15–16. As also found by the Examiner, Xu teaches “receiving
[a] damage severity level input from [a] user device,” as recited in claim 1.
See Final Act. 9–10; see also Ans. 16–17. Thus, the combination of Holden
and Xu teaches or suggests “receiving a respective damage severity level
input from the user device for each of the grid segments encompassing
damage,” as recited in claim 1. See Final Act. 10; see also Ans. 15.
As to Appellant’s above contention 4, Appellant’s argument is that the
claimed “predefined damage severity indicators” do not represent non-
functional descriptive material because the claimed “predefined damage
severity indicators” are functionally related to the claimed “damage severity
level inputs,” and, thus, the claimed “predefined damage severity indicators”
patentably distinguish the claims from the cited prior art. However, this
argument is merely a reiteration of an argument previously raised in
Appellant’s Appeal Brief (see App. Br. 18–19), and does not “state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a)(1). Thus, Appellant’s argument is not
permitted under 37 C.F.R. § 41.52(a). Further, even assuming Appellant’s
argument is a proper argument, it is not persuasive of error for the reasons
provided in the Decision. See Decision 19 (citing Final Act. 10–11;
Ans. 18).

Claim 4
As to Appellant’s above contention 2, Appellant’s argument is that
neither Holden nor Xu teaches or suggests “a representation of the entire
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product . . . divided into a number of different sections of the product,” as
recited in claim 4, because the vehicle representations disclosed in Holden
and Xu do not include representations of the entire vehicle. However, this
argument is a new argument, as Appellant’s arguments in Appellant’s
Appeal Brief focused on whether Holden and Xu teach or suggest “where
each of the section is separately selectable through the user device,” rather
than whether Holden and Xu teach or suggest “a representation of the entire
product.” Under 37 C.F.R. § 41.52(a), “[a]rguments not raised [in
Appellant’s Appeal Brief] are not permitted in the request for rehearing”
unless the new argument: (a) is based upon a recent relevant decision; (b)
responds to a new ground of rejection; or (c) argues that the Board’s
decision contains an undesignated new ground of rejection.” 37 C.F.R.
§ 41.52(a)(1). As none of the aforementioned scenarios applies here,
Appellant’s argument is not permitted under 37 C.F.R. § 41.52(a).
Further, even assuming Appellant’s argument is permitted, it is not
persuasive of error because the displayed representations of a vehicle
respectively disclosed in Holden and Xu teach or suggest the claimed
“representation of the entire product.” More specifically, the claim does not
define “representation of the entire product,” nor does it distinguish the
aforementioned claim element from either the displayed side and front views
of a vehicle disclosed in Holden or the displayed exterior and interior
diagrams of a vehicle disclosed in Xu, as both displays are representations of
an entire vehicle.

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Claim 22
As to Appellant’s above contention 3, Appellant’s argument is that Xu
fails to teach or suggest “display an inquiry for additional information in
response to [a] user-selected damage severity indicator,” as recited in claim
22 because paragraphs 30 and 115 of Xu do not describe displaying an
inquiry in response to a user-selected damage severity indicate. However,
this argument is merely a reiteration of an argument previously raised in
Appellant’s Appeal Brief (see App. Br. 22), and does not “state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a)(1). Thus, Appellant’s argument is not
permitted under 37 C.F.R. § 41.52(a). Further, even assuming Appellant’s
argument is permitted, it is not persuasive of error for the reasons provided
in the Decision. See Decision 25 (citing Final Act. 16–17; Ans. 20).

DECISION
In view of the foregoing discussion, we grant Appellant’s Request for
Rehearing to the extent we provide additional clarity regarding the rejection
of claim 1 under 35 U.S.C. § 103(a), but we otherwise deny Appellant’s
request.
Because this Decision on Request for Rehearing modifies the original
decision so as to provide additional clarity regarding the rejection of claim 1
under 35 U.S.C. § 103(a), pursuant to 37 C.F.R. § 41.52(a)(1), a second
request for rehearing limited to a discussion of the rejection of claim 1
under 35 U.S.C. § 103(a) is permitted.

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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)(v).

REQUEST FOR REHEARING DENIED