Ex Parte Bou et alDownload PDFPatent Trial and Appeal BoardAug 2, 201309859959 (P.T.A.B. Aug. 2, 2013) Copy Citation 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. 09/859,959 05/16/2001 Robert E. Bou 30566.153-US-01 4898 55895 7590 08/02/2013 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 2677 MAIL DATE DELIVERY MODE 08/02/2013 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 ROBERT E. BOU and DANIEL LEE THOMPSON ____________________ Appeal 2010-008231 Application 09/859,959 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008231 Application 09/859,959 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1, 3-17, 19-33, and 35-48. Claims 2, 18, and 34 have been cancelled. (App. Br. 2). 1 We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claims Exemplary claims 1 and 33 under appeal read as follows (emphasis added): 1. A computer-implemented method for automating a draw order of entities output from a computer, comprising: examining a drawing output from the computer to identify two or more entities that intersect in a two dimensional space; automatically creating a drawing order for the two or more entities based on a set of one or more predefined rules, wherein the drawing order comprises a sequence for drawing the two or more entities on a display device; and drawing the two or more entities on the display device based on the drawing order. 33. A computer readable article of manufacture comprising a computer readable medium having instructions for causing a computer to execute a method for automating a draw order of entities output from a computer, the method comprising: examining a drawing output from the computer to identify two or more entities that overlap in a two dimensional space; automatically creating a drawing order for the two or more entities based on a set of one or more predefined rules, wherein the drawing order comprises a sequence for drawing the two or more entities on a display device; and drawing the two or more entities on the display device based on the drawing order. 1 Throughout this decision we refer to the “Amended Appeal and Reply Brief” filed June 1, 2009. Appeal 2010-008231 Application 09/859,959 3 Rejections on Appeal The Examiner rejected claims 33 and 35-48 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Ans. 2-3). 2 The Examiner rejected claims 1, 3, 14-17, 19, 30-33, 35, and 46-48 under 35 U.S.C. § 102(b) as being anticipated by Otto (US 5,666,474; Sep. 9, 1997).3 The Examiner rejected claims 4-13, 20-29, and 36-45 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Otto and Snyder (US 6,266,064 B1; Jul 24, 2001).4 The Examiner rejected claims 1, 4, 5, 13-17, 20, 21, 29-33, 36, 37, and 45-48 under 35 U.S.C. § 102(e) as being anticipated by Bou (US 6,392,662 B1; May 21, 2002). Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 33 under 35 U.S.C. § 101 because “[u]nder the Memorandum dated January 7, 2009 by John Love, the Patent Office provides that the test for a method claims is whether the claimed method is (1) tied to a particular machine or apparatus, or (2) transforms a particular article to a different state or thing.” (App. Br. 10). Appellants further state that the claims “provide for 2 As to this rejection, separate patentability is not argued for claim 35-48. Except for our ultimate decision, these claims are not discussed further herein. 3 As to this rejection, separate patentability is argued for claims 1, 3, 15, and 16. Separate patentability is not argued for the remaining claims. Except for our ultimate decision, the remaining claims are not discussed further herein. 4 As to this rejection, separate patentability is argued for claims 6, 9, 10, 11, 12, and 13. Separate patentability is not argued for the remaining claims. Except for our ultimate decision, the remaining claims are not discussed further herein. Appeal 2010-008231 Application 09/859,959 4 a particular machine or apparatus - the article of manufacture.” (App. Br. 11). 2. Appellants contend that the Examiner erred in rejecting the claim 1 under 35 U.S.C. § 102(b) over Otto because “the claims are not directed towards objects in a 3D environment that intersect over multiple planes. Instead, the claims require an intersection in a 2D (i.e., single planar space).” (App. Br. 12). 3. Appellants contend that the Examiner erred in rejecting the claim 1 under 35 U.S.C. § 102(b) over Otto because “as can be seen in the dependent claims” the Office Action is misinterpreting the claims and specification. (App. Br. 12, last paragraph). 4. Appellants contend that the Examiner erred in rejecting the claim 1 under 35 U.S.C. § 102(b) over Otto because: The Office Action further misinterprets the specification by stating that the rules are in the form of a directed acyclic/cyclic graph. Nowhere does the specification or claims provide for such a teaching. (App. Br. 13). Further: The Action continues and asserts that the claimed “one or more predefined rules” are taught by Otto’s occlusion graph that provides such predefined rules. Appellants respectfully traverse such an assertion. As stated above, the claimed drawing order is created based on the set of predefined rules. However, Otto’s directed acyclic graph does not even remotely resemble a set of rules that are used to define a create [sic] a drawing order but instead represents the resulting rendering order itself (see Abstract; col. 1, lines 53-62; and entire specification). In this regard, in direct contrast to the assertions of the Examiner, Otto’s directed acyclic graph is not and cannot be used as a set of rules that are used to create a drawing order that are then drawn. Appeal 2010-008231 Application 09/859,959 5 (App. Br. 13). 5. Appellants contend that the Examiner erred in rejecting the claim 3 under 35 U.S.C. § 102(b) over Otto because “rendering an object so that it doesn’t occlude others does not reflect any consideration of the areas of the entities.” (App. Br. 17). 6. Appellants contend that the Examiner erred in rejecting the claim 15 under 35 U.S.C. § 102(b) over Otto because: It is noted that rather than adjusting the drawing order itself, these claims provide for modifying the rules based on observations of the input. Thus, rather than merely changing the drawing order for the particular entities/ objects, the claimed invention is directed towards modifying the rules themselves that could eventually affect the drawing order. Such a difference is distinguishable and not even remotely contemplated or suggested anywhere in Otto. (App. Br. 19). 7. Appellants contend that the Examiner erred in rejecting the claim 16 under 35 U.S.C. § 102(b) over Otto because: The ability to merely change a camera parameter or viewing position does not change the rules that determine the drawing order. Instead, such a change would merely affect the resulting drawing order once the rules are applied. In this regard, (1) the concept of predefined rules, (2) the ability that a user can modify such rules, and (3) that such rules are applied to entities in a drawing to create a drawing order (as claimed), are not even remotely considered in any of the cited references. Instead, the cited references merely change properties that do not affect the rules (if such rules exist - which Appellants traverse) whatsoever. (App. Br. 19, emphasis added). Appeal 2010-008231 Application 09/859,959 6 8. Appellants contend that the Examiner erred in rejecting the claim 6 under 35 U.S.C. § 103(a) because: Such text of Snyder merely describes that if a portion of an image surface is hidden, the hidden surface can be removed by overlaying the rendered image layers in front to back order. However, what is lacking from such a teaching is any concept, implicit or explicit, regarding a rule that determines whether a first entity "contains" (i.e., to hold or include within its volume or area [see www.dictionary.com]) another entity. Such a claim limitation is not remotely alluded to in Otto or Snyder. (App. Br. 20). 9. Appellants contend that the Examiner erred in rejecting the claims 9, 25 and 41 under 35 U.S.C. § 103(a) because: Appellants submit that while front to back and back to front rendering order examines occlusion, a comparison of whether a first entity obscures a second entity more than a second entity obscures the first entity is not part of such an occlusion examination. In this regard, the comparison recited in the claim regarding which entity obscures another entity more is not contemplated in Otto or Snyder. In responding to the above arguments, the Answer states that Otto teaches an analysis of occlusion areas and whether an object has more or less occlusion areas when determining whether to draw an object last or not (relying on col. 14, lines 29-30 and col. 26, lines 54-60). However, a [sic] from a careful examination of such text, it can be clearly seen that Otto does not even remotely allude to a comparison of which object occludes another object more than another or to any occlusion area whatsoever. (App. Br. 21). 10. Appellants contend that the Examiner erred in rejecting the claim 10, 26 and 42 under 35 U.S.C. § 103(a) because neither Otto nor Snyder teach or suggest the claimed “percentages.” (App. Br. 22). Appeal 2010-008231 Application 09/859,959 7 11. Appellants contend that the Examiner erred in rejecting the claim 11 under 35 U.S.C. § 103(a) because neither Otto nor Snyder teach or suggest using an “absolute rule.” (App. Br. 22-24). 12. Appellants contend that the Examiner erred in rejecting the claim 12 under 35 U.S.C. § 103(a) because neither Otto nor Snyder teach or suggest using a “relative rule.” (App. Br. 24). 13. Appellants contend that the Examiner erred in rejecting the claim 13 under 35 U.S.C. § 103(a) because neither Otto nor Snyder teach or suggest using a “logical operator.” (App. Br. 25). 14. Appellants contend that the Examiner erred in rejecting the claims 1, 4, 5, 13-17, 20, 21, 29-33, 36, 37, and 45-48 under 35 U.S.C. § 102(e) over Bou because “Bou [does not] teach, disclose or suggest automatically creating a drawing order for two entities in an existing drawing based on a set of predefined rules.” (App. Br. 26). Issues on Appeal Did the Examiner err in rejecting claims 33and 35-48 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claims 1, 3, 14-16, 17, 19, 30-32, 33, 35 , and 46-48 as being anticipated under 35 U.S.C. § 102(b) because Otto fails to describe the argued limitations? Did the Examiner err in rejecting claims 4-13, 20-29, and 36-45 as being unpatentable under 35 U.S.C. § 103(a) because the combination of Otto and Snyder fails to teach or suggest the argued limitations? Appeal 2010-008231 Application 09/859,959 8 Did the Examiner err in rejecting claims 1, 4, 5, 13-17, 20, 21, 29-33, 36, 37, and 45-48 as being anticipated under 35 U.S.C. § 102(b) because Bou fails to describe the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. As to Appellants’ above contentions 9, 10, and 14, we agree. As to Appellants’ above contention 1, although we find Appellants’ arguments to be largely misdirected, we agree with Appellants’ ultimate conclusion that claim 33 has not been shown to be directed to non-statutory subject matter. However, Appellants’ reliance on the so-called Bilski machine-or-transformation test is misplaced as the rejected claim is not a method claim. Rather, the rejection under § 101 is premised on the Examiner construing claim 33 as encompassing a “signal” which does not fall within the four § 101 categories. The Bilski test is directed to determining whether a claim that qualifies as a method (one of the four categories) is none-the-less, as a whole, drawn to an abstract idea such that the claim would effectively grant a monopoly over an abstract idea and is ineligible for patent protection. In our review of claim 33, we find that the claim language precludes reading claim 33 as encompassing a “signal.” Claim 33, and the claims which depend therefrom, explicitly recite that they are directed to an “article of manufacture.” A “signal” is not an “article of manufacture.” In re Nuijten, 500 F.3d 1346, 1356 (Fed. Cir. 2007) (“All signals within the scope of the claim do not themselves comprise some tangible article or Appeal 2010-008231 Application 09/859,959 9 commodity.”). Conversely, an “article of manufacture” cannot encompass a “signal” as found by the Examiner. As to Appellants’ above contention 2, we disagree. The Examiner is correct that 3d image systems are relevant. Appellants’ Specification confirms this: “One or more embodiments of the invention provide the ability to automatically order entities 304 in a drawing. A drawing is examined to determine entities that intersect/overlap in 2D space (or in some flattened 2D projection of a 3D space).” (Spec. 9:2-4)(emphasis added). As to Appellants’ above contention 3, we disagree. The dependent claims may set forth additional limitations, but such limitations do not themselves limit the independent claim in any way. As to Appellants’ above contention 4, we disagree. Although we agree with Appellants that the Examiner misinterprets the directed acyclic/cyclic graph, we deem this to be harmless error. As to claim 1, we do not find where Appellants disputes that the Examiner correctly found that viewing direction and distance are also among the drawing order rules taught by Otto. (Final 10; Ans. 7). As to Appellants’ above contention 5, we disagree. The occlusion process of Otto includes determining whole or total occlusion. (Otto: col. 25, ll. 5-8). Such total occlusion is area based. Thus the occlusion processing of Otto includes drawing order based on the area of entities. As to Appellants’ above contention 6, we disagree. As correctly set forth by the Examiner, an operator providing an input to the apparatus of Otto to change the viewing direction is an input which modifies a rule. Claim 15 requires no more than this. Although Appellants point to the Specification at page 14, lines 1-11, to support claim 15. (App. Br. 4). The Appeal 2010-008231 Application 09/859,959 10 description found at this point in Appellants’ specification describes a method where “repetitively” inputting a modification to a drawing order will automatically update a rule. Claim 15 is in no way so limited. As to Appellants’ above contention 7, we disagree. Again, as correctly set forth by the Examiner, an operator providing an input to the apparatus of Otto to change the viewing direction is an input which modifies a rule. We deem this description in Otto to be a rule because as Appellants admit in their argument, viewing position “affect[s] the resulting drawing order” and from our review of Appellants’ Specification we see no other requirements as to what comprises a rule. Specifically, at page 10, lines 3-4, Appellants state “a set of one or more [drawing order] rules are utilized to define the ordering for two or more overlapping entities.” (emphasis added). As to Appellants’ above contention 8, we disagree. As previously discussed, the occlusion process of Otto includes determining whole or total occlusion. (Otto: col. 25, ll. 5-8). Such is a situation where “the first entity contains the second entity.” As to Appellants’ above contentions 11, 12, and 13, we disagree. Otto teaches: At step 56 a preliminary list is produced by considering the distance of the furthest vertex of each polygon in the direction of the notional viewing axis. (Col. 7; ll. 38-40)(emphasis added). We deem the two rules to be the direction (absolute rule) and the distance (relative rule) which are both required (i.e., logically connected in an “and” operation). The distance rule is replaced by an occlusion rule (a second relative rule) to produce a final rendering order. Also, another viewing direction (a second absolute rule) may be chosen. (Col. 3; ll. 36-38). Appeal 2010-008231 Application 09/859,959 11 CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 33 and 35-48 as being unpatentable under 35 U.S.C. § 101. (2) Appellants have established that the Examiner erred in rejecting claims 1, 4, 5, 13-17, 20, 21, 29-33, 36, 37, and 45-48 as being anticipated by Bou under 35 U.S.C. § 102(e). (3) Appellants have established that the Examiner erred in rejecting claims 9, 10, 25, 26, 41, and 42 as being unpatentable under 35 U.S.C. § 103(a). (4) The Examiner did not err in rejecting claims 1, 3, 14-17, 19, 30-33, 35, and 46-48 as being anticipated by Otto under 35 U.S.C. § 102(b). (5) The Examiner did not err in rejecting claims 4-8, 11-13, 20-24, 27-29, and 36-40, and 43-45 as being unpatentable under 35 U.S.C. § 103(a). (6) On this record, claims 9, 10, 25, 26, 41, and 42 have not been shown to be unpatentable. (7) Claims 1, 3-8, 11-17, 19-24, 27-33, 35-40, and 43-48 are not patentable. Appeal 2010-008231 Application 09/859,959 12 DECISION5 The Examiner's rejection of claims 33 and 35-48 as being unpatentable under 35 U.S.C. § 101 is reversed. The Examiner’s rejection of claim 1, 4, 5, 13-17, 20, 21, 29-33, 36, 37, and 45-48 as being anticipated under 35 U.S.C. § 102(e) is reversed. The Examiner’s rejections of claims 9, 10, 25, 26, 41, and 42 as being unpatentable under 35 U.S.C. § 103(a) is reversed. The Examiner’s rejection of claim 1, 3, 14-17, 19, 30-33, 35, and 46-48 as being anticipated under 35 U.S.C. § 102(b) is affirmed. The Examiner’s rejections of claims 4-8, 11-13, 20-24, 27-29, and 36-40, and 43-45 as being unpatentable under 35 U.S.C. § 103(a) 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)(1)(iv). AFFIRMED-IN-PART ke 5 Claim 37 recites “the directed acyclic graph.” This limitation lacks an antecedent basis in claim 33 from which claim 37 depends. Rather, the antecedent basis for this limitation is in claim 36 from which we believe claim 37 should depend. See for example similar claim 5 which depends from claim 4. Copy with citationCopy as parenthetical citation