Ex Parte Bogues et al

Patent Trial and Appeal Board

May 23, 2014

11850534 (P.T.A.B. May. 23, 2014)

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.
11/850,534 09/05/2007 Michael Bogues 30566.418-US-01 7660
55895 7590 05/23/2014
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
WANG, JIN CHENG
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
05/23/2014 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 MICHAEL BOGUES, TYLER J. HENDERSON, and
HANS WALTER HERZOG,
____________

Appeal 2011-013523
Application 11/850,534
Technology Center 2600
____________

Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
CATHERINE SHIANG, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013523
Application 11/850,534

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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, 8-14, 16-22, and 24, which are all the claims
remaining in the application. Claims 7, 15, and 23 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
Claim 1. A computer-implemented method for displaying
multiple slices of a three-dimensional body in a computer
drawing application, comprising:
(a) displaying, on a display device, a first view of the
three dimensional body;
(b) defining, in a computer, on the first view, one or more
slice sketches; and
(c) displaying, on the display device via the computer, a
single slice view of the three dimensional body, wherein:
(i) the single slice view simultaneously depicts
all of the one or more slices with a zero-depth representation of
each slice;
(ii) each of the one or more slice sketches defines a
slice cutting surface; and
(iii) each slice is depicted in the single slice view by
displaying an outline of the three dimensional body where it
intersects with each slice cutting surface.
Prior Art
Garg U.S. 2009/0267940 A1; Oct. 29, 2009
Shoov U.S. 2003/0071810 A1; Apr. 17, 2003

Examiner’s Rejections
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Application 11/850,534

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Claims 17-22 and 24 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1-6, 8-14, 16-22, and 24 stand rejected under 35 U.S.C. §
102(e) as anticipated by Garg.
Claims 1-6, 8-14, 16-22, and 24 stand rejected under 35 U.S.C. §
102(b) as anticipated by Shoov.

ANALYSIS
Section 101 rejection of claims 17-22 and 24
Claim 17 recites an “article of manufacture comprising a data storage
device readable by a computer.” The Examiner finds the “data storage
device” cannot be a hardware device. Ans. 4, 56-57. Appellants contend
claim 17 recites statutory subject matter, because the “data storage device”
excludes signals and other transitory media. App. Br. 6-9; Reply Br. 2-4.
We agree with Appellants for the reasons given in the Appeal Brief and the
Reply Brief.
We do not sustain the rejection of claims 17-22 and 24 under 35
U.S.C. § 101.

Rejections based on prior art
Claim 1 recites “displaying . . . a first view of a three dimensional
body; defining . . . on the first view, one or more slice sketches; and
displaying . . . a single slice view of the same three dimensional body. . . .”
The data being displayed in a first view, defined on the first view, and
displayed as a single slice view do not affect any subsequent steps or
structural limitations of the method recited in claim 1. Displaying “a first
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Application 11/850,534

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view of a three dimensional body,” defining “on the first view, one or more
slice sketches” and displaying “a single slice view of the three dimensional
body,” are merely non-functional descriptions of the data being displayed
and defined. Therefore, the scope of claim 1 encompasses “displaying [first
data]; defining [second data]; and displaying [third data],” which does not
distinguish the claim from the prior art in terms of patentability. Claims 2-6,
8-14, 16-22, and 24 similarly recite non-functional descriptive material. See
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte Nehls, 88 USPQ2d
1883, 1887-90 (BPAI 2008) (precedential).
In addition, we adopt the findings of fact made in the Final Rejection
and the Examiner’s Answer as our own. We concur with the conclusions
reached by the Examiner in the Examiner’s Answer. We sustain the
rejections of claims 1-6, 8-14, 16-22, and 24 under §§ 102(b) and 102(e) for
the reasons given in the Examiner’s Answer. We highlight the following for
emphasis.

Section 102(e) rejection of claims 1, 2, 4, 9, 10, 12, 17, 18, and 20
Appellants contend Garg does not disclose “a single slice view that
simultaneously depicts multiple slices with a zero-depth representation of
each slice” as recited in claim 1. App. Br. 9. In particular, Appellants
contend each orthogonal slice of Garg is not a “zero-depth” slice, because
the slice does not produce a cross-section of the component being sliced to
reflect the intersection between the 3D body and the slice cutting surface, as
disclosed in paragraphs 9, 10, and 42 of Appellants’ Specification. App. Br.
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11-13; Reply Br. 5-9. The Examiner finds Figures 6 and 7 of Garg describe
the single slice view as claimed. Ans. 6, 25-28.
We agree with the Examiner for the reasons given in the Examiner’s
Answer. In particular, Appellants have not provided persuasive evidence or
argument to distinguish “a single slice view that simultaneously depicts
multiple slices with a zero-depth representation of each slice” from the
single slice view shown in Figure 7 of Garg.
Appellants contend Garg does not disclose “depicting each slice in a
single view by displaying an outline of the three dimensional body where it
intersects with each slice cutting surface,” as recited in claim 1. Reply Br. 5-
9. The Examiner finds Garg depicts each slice by displaying an outline as
claimed. Ans. 7, 27-29. We agree with the Examiner for the reasons given
in the Examiner’s Answer.
We sustain the rejection of claim 1 under 35 U.S.C. § 102(e).
Appellants do not provide arguments for separate patentability of claims 2,
4, 9, 10, 12, 17, 18, and 20, which fall with claim 1.

Section 102(e) rejection of claims 3, 11, and 19
Claim 3 recites “accepting one or more planes in a model of the three
dimensional body as one or more slice sketches.” Appellants contend Garg
does not describe the concept of a plane in a model and the ability to accept
such a plane as the slice sketches. App. Br. 17; Reply Br. 9. The Examiner
finds Garg describes accepting one or more planes as claimed. Ans. 8-9; 41-
44. We agree with the Examiner for the reasons given in the Examiner’s
Answer.
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We sustain the rejection of claims 3, 11, and 19 under 35 U.S.C. §
102(e).

Section 102(e) rejection of claims 5, 13, and 21
Claim 5 recites “the slice view comprises an isometric view that
illustrates a depth component between slices displayed in the slice view
based on a distance between each slice sketch defined in the first view.”
Appellant argues that Garg does not describe an isometric view, or a depth
component between slices. App. Br. 17; Reply Br. 10-11. The Examiner
finds Garg shows an isometric view including the distance between
orthogonal slices displayed as slice views. Ans. 44. We agree with the
Examiner.
We sustain the rejection of claims 5, 13, and 21 under 35 U.S.C. §
102(e).

Section 102(e) rejection of claims 6, 14, and 22
Claim 6 recites “editing the three dimensional body or one of the slice
sketch; and automatically updating and displaying the slice view to reflect
the editing.” Appellants argue that Garg’s user changing on an interval still
fails to describe automatically updating and displaying the slice view to
reflect such editing. App. Br. 19. The Examiner finds Garg describes
editing the three dimensional body as claimed. Ans. 10-11, 46- 47. We
agree with the Examiner.
We sustain the rejection of claims 6, 14, and 22 under 35 U.S.C. §
102(e).

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Section 102(e) rejection of claims 8, 16, 24
Appellants contend excluding part of a tissue as described by Garg
does not disclose choosing which parts in an assembly participate in the
single slice view. App. Br. 19; Reply Br. 11-12. Appellants have not
provided a definition of assembly that excludes the multiple tissue parts
described by Garg.
We sustain the rejection of claims 8, 16, and 24 under 35 U.S.C. §
102(e) for the reasons given in the Examiner’s Answer.

Section 102(b) rejection of claims 1-6, 8-14, 16-22, and 24
We adopt the findings of fact made in the Final Rejection and the
Examiner’s Answer as our own. We concur with the conclusions reached by
the Examiner in the Examiner’s Answer. We sustain the rejection of claims
1-6, 8-14, 16-22, and 24 under 35 U.S.C. § 102(b) for the reasons given in
the Examiner’s Answer.

DECISION
The rejection of claims 17-22 and 24 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is reversed.
The rejection of claims 1-6, 8-14, 16-22, and 24 under 35 U.S.C. §
102(e) as anticipated by Garg is affirmed.
The rejection of claims 1-6, 8-14, 16-22, and 24 under 35 U.S.C. §
102(b) as anticipated by Shoov is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
41.50(f).
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AFFIRMED

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