10750261 (B.P.A.I. May. 14, 2012)

Ex Parte Chou

Board of Patent Appeals and InterferencesMay 14, 2012

10750261 (B.P.A.I. May. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEVE S.K. CHOU ____________ Appeal 2010-003045 Application 10/750,261 Technology Center 2100 ____________ Before ST. JOHN COURTENAY, III, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL Appeal 2010-003045 Application 10/750,261 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 1, 3, 4, 7-9, and 15. (App. Br. 3.) Claims 2, 5, 6, 10-14, and 16-20 were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary claim 8 follows: 8. A method for entering blueprint data into a handheld device comprising: entering a start point for a first line segment; entering a length for said first line segment; entering a direction for said first line segment; entering a start point for an arc; entering an end point for said arc; entering a radius for said arc; entering and displaying said line segment and said arc on a display associated with said handheld device; providing a segment editor to automatically parse said arc into a plurality of arc subdivisions; entering a start point for a second line segment, wherein said start point of said second line segment is an end point of said first line segment; entering and displaying said second line segment on said display; entering a start point for a third line segment, wherein said start point of said third line segment is an end point of said second line segment; translating said second line segment so that the start point of said second line segment coincides with an end point of said third line segment; entering and displaying said third line segment on said display; and storing said first, second, and third line segments as a hierarchical sequence, and wherein editing or deletion of said Appeal 2010-003045 Application 10/750,261 3 second line segment automatically identically translates said third line segment without translating said first line segment. The Examiner rejected claims 1, 3, 4, 7, 8, and 15 under 35 U.S.C. § 103(a) as being unpatentable over PocketCAD (Arc Second, Inc., PocketCAD Extreme Mobility, User Guide PocketCAD PRO Version 4.0 1- 124 (2001)) in view of Christensen (U.S. Patent No. 4,663,616 (filed June 25, 1985)). (Ans. 3-9.) The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being unpatentable over PocketCAD in view of Christensen and Minakata (U.S. Patent No. 5,568,565 (filed Apr. 29, 1993)). (Ans. 10.) ISSUES Based upon our review of the record, the dispositive issues before us are: (1) Can the claimed invention be distinguished from the prior art on the basis of the claim limitation “wherein editing, insertion, or deletion of a selected line segment identically translate line segments that succeed the selected line segment of said hierarchical sequence without translating line segments that precede the selected line segment in said hierarchical sequence,” as recited in independent claim 1 and as similarly recited in independent claims 8 and 15? (2) Are Appellants’ arguments urging patentability predicated on non-functional descriptive material? Appeal 2010-003045 Application 10/750,261 4 ANALYSIS We disagree with Appellant’s contentions regarding the purported patentability of claims 1, 3, 4, 7-9, and 15. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 3-16) in response to the Appellant’s Appeal Brief. For essentially the same reasons articulated by the Examiner, and for the additional reasons set forth below, we concur with the Examiner’s ultimate legal conclusion of obviousness. Appellant contends that claims 1, 8, and 15 are not obvious because the combination of PocketCAD and Christensen does not teach or suggest that editing, inserting or deleting a selected line segment identically translates line segments that succeed the selected line segment in a hierarchical sequence without translating line segments that precede the selected line segment in the sequence. (App. Br. 10-13.) But we conclude that the disputed limitation of identically translating line segments in the manner recited in the claims is a statement of intended use or purpose regarding the recited “processor and memory adapted for accepting . . .” i.e., performing various recited functions, including editing, inserting or deleting a selected line segment. “[A]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Moreover, a “clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 Appeal 2010-003045 Application 10/750,261 5 F.3d 1373, 1381 (Fed. Cir. 2003) (citation omitted). Here, the disputed functional limitations are not positively recited as actually being performed. (See representative claim 1). Even if we arguendo accord the disputed limitations weight, we nevertheless conclude that Appellants’ arguments urging patentability are predicated on non-functional descriptive material, i.e., the display of blueprint data in a manner that is perceived by a human. The blueprint data is not executable code that changes the function of a machine. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory . . . Nor does he seek to patent the content of information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). This reasoning is applicable here. Accordingly, we will sustain the Examiner’s rejection of representative claim 1, and independent claims 8 and 15 which fall therewith.1 See 37 C.F.R. § 41.37(c)(1)(vii). 1 We also conclude that Appellant’s claims encompass non-statutory subject matter because “a method that can be performed by human thought alone [or with pen and paper] is merely an abstract idea and is not patent-eligible under § 101.” Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“regardless of what statutory category (‘process, machine, manufacture, or composition of matter,’ 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.” Id. at 1374. (emphasis and underline Appeal 2010-003045 Application 10/750,261 6 We will also sustain the Examiner’s rejections of dependent claims 3, 4, 7, and 9 because Appellant did not set forth any separate patentability arguments for these dependent claims. (See App. Br. 10-14.) See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the Examiner’s decision rejecting claims 1, 3, 4, 7-9, and 15 as obvious. 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 llw added). In the event of further prosecution of claims having the same or similar scope, the Examiner should consider a rejection under 35 U.S.C. § 101.