Ex Parte Dujmich

Board of Patent Appeals and Interferences

Feb 4, 2009

10892589 (B.P.A.I. Feb. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL L. DUJMICH
____________

Appeal 2008-5549
Application 10/892,589
Technology Center 2600
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Decided:1 February 5, 2009
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Before JOHN A. JEFFERY, CARLA M. KRIVAK, and KARL D.
EASTHOM, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5549
Application 10/892,589

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 3, 6-12, and 36. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellant invented a method of marketing merchandise to a customer.
Specifically, the method enables visualizing the appearance of merchandise
in a digitized representation of a space associated with the customer (e.g., a
space or room in the customer’s residence). To this end, the user can
digitally place an object in the space and display this representation to
determine if the object fits in that space. As a result, the customer can
visualize the appearance of the merchandise in their own spaces or rooms
before purchase.2 Claim 36 is illustrative:
36. A method for marketing merchandise comprising:

offering merchandise to customers;

obtaining from a customer digital data defining a space in which the
customer wishes to determine if the merchandise will fit;

the digital data defining the space being obtained from a digital
camera or by scanning an image from a film camera into digital data;

inputting into a computer system the digital data defining the space
including at least one dimension defining the space and displaying on a
display device a representation of the space; obtaining digitized data
defining the merchandise to be fitted in the space;

2 See generally Spec. 1:4−2:10.
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Application 10/892,589

placing the digitized data defining the merchandise in the digitized
space using the computer system and displaying on the display device the
merchandise in the representation of the space, and

determining if the merchandise fits in the space to facilitate marketing
of the merchandise.

The Examiner relies on the following prior art references to show
unpatentability:
Bodor US 6,201,546 B1 Mar. 13, 2001
MacInnes US 2005/0081161 A1 Apr. 14, 2005
(filed Oct. 10, 2003)

The Examiner rejected claims 3, 6-12, and 36 under 35 U.S.C.
§ 103(a) as unpatentable over MacInnes and Bodor (Ans. 3-7).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding the Examiner’s obviousness rejection of representative
claim 36,4 the Examiner finds that MacInnes discloses all of the claimed
subject matter except for using a digital camera or scanned film image to

3 Throughout this opinion, we refer to (1) the Appeal Brief filed Aug. 16,
2007; (2) the Examiner’s Answer mailed Sept. 11, 2007; and (3) the Reply
Brief filed Nov. 13, 2007.
4 Appellant argues all appealed claims together as a group. See App. Br. 3-
9. Accordingly, we select claim 36 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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obtain digital data from the customer defining a space in which the customer
wants to determine if merchandise will fit. The Examiner, however, relies
on Bodor for teaching generating images from a digital photograph or
scanner to obtain dimensional data pertaining to the image and concludes
that the claimed invention would have been obvious to ordinarily skilled
artisans over these collective teachings (Ans. 3-5, 8, 9, 11).
Appellant argues that while MacInnes and Bodor teach computer
systems for modeling three-dimensional objects and spaces, the references
do not teach or suggest marketing merchandise in the manner claimed.
According to Appellant, the references fail to suggest offering merchandise
to customers (e.g., at a store) and obtaining digital data from a customer
defining a space in which the customer wishes to determine if the
merchandise will fit in that space, let alone inputting that obtained digital
data into a computer system as claimed (App. Br. 3-9; Reply Br. 3).
The Examiner responds that since MacInnes teaches that
manufacturers can use the disclosed system to showcase their products,
skilled artisans would understand that this application would involve
marketing merchandise as claimed (Ans. 10-12).
Appellant also argues that since MacInnes uses photographs to derive
information for a completely different purpose, namely to supply
information regarding the texture of surfaces, it would not have been
obvious to use photographs to supply dimensional data of the space as the
Examiner proposes (Reply Br. 1-2).
The issue before us, then, is as follows:

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ISSUE
Has Appellant shown that the Examiner erred in finding that the
collective teachings of MacInnes and Bodor teach or suggest the method of
marketing merchandise recited in representative claim 36 under § 103?
The issue turns on:
(1) whether the collective teachings of these references teach or
suggest (a) offering merchandise to customers; (b) obtaining digital data
from a customer defining a space in which the customer wishes to determine
if the merchandise will fit in that space; and (c) inputting that obtained
digital data into a computer system as claimed, and
(2) whether the Examiner’s reason to combine the teachings of
MacInnes and Bodor is supported by articulated reasoning with some
rational underpinning to justify the Examiner’s obviousness conclusion.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
MacInnes
1. MacInnes discloses an interior design system that utilizes a client-
server computing environment for generating and rendering a photorealistic
three-dimensional (3D) perspective view of a 3D object selectively
positioned within a 3D scene (MacInnes, Abstract; ¶ 0036).
2. Manufacturers can use this system to showcase their products by
allowing end users to see a manufacturer’s products in full, realistic, 3D with
the ability to change the texture of the product (MacInnes, ¶ 0037).
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3. Interior designers can also use MacInnes’ system to permit interior
designers and their clients to select, customize, and rearrange groupings of
furnishings to see how they may look within the client’s actual room in a
“What You See is What You Get” (WYSIWYG) environment (MacInnes, ¶
0041).
4. Using MacInnes’ system, merchants 24, 24’ can upload 3D models
(objects) 33 of their products to a server 18 for integration into an object
library 19 (MacInnes, ¶ 0048; Figs. 1, 2).
5. Merchants can also upload product ordering information such as
available options, availability, manufacturing lead times, etc., for storage
with the 3D models in the library 19 to enable users to accurately specify
and subsequently order their products (MacInnes, ¶ 0048).
6. Users (or clients) access the system via client applications that
reside on their computers 14, 14’, etc. These applications are connected to
the server 18 (and the object library 19) via a network. As such, users can
selectively access the server 18 and/or development center 20 to download
objects for importation to, and manipulation within, a scene at the client
application (MacInnes, ¶¶ 0047, 0053-54; Fig. 1).
7. Users can upload their own 3D models to the development center
(MacInnes, ¶ 0049).
8. Users can create their own rooms using the client application 12.
To this end, the user can generate a 2D plan from a blank document 114
(i.e., by entering the room’s coordinates (x, y, z dimensions)) and edit the
room plan as desired (MacInnes, ¶¶ 0064, 0092; Fig. 5 (Steps 114 and 116)).
9. The actual plan of the room can be drawn based on user-supplied
room dimensions (MacInnes, ¶ 0093).
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10. Users’ client applications include product ordering functionality.
This capability enables users to not only view an object’s ordering and
purchasing information (e.g., cost, etc.), but also enables users to order
products directly from the manufacturer (MacInnes, ¶¶ 0119-21).
11. Figures 17 and 18 illustrate the placement of a selected object 43
in a room created by a user and its relative orientation with respect to the
room layout (MacInnes, ¶ 0155; Figs. 17, 18).
12. Client applications can also include “Snap and Glue” and
“Collision Detection” functionality that applies predetermined constraints to
objects to help prevent them from being placed at inappropriate locations in
the scene (MacInnes, ¶ 0103).

Bodor
13. Bodor generates a model entirely from images in which all
physical/proportional information about the object including its shape, size,
dimensions, proportion, and structure is derived from the images used to
construct the model (Bodor, col. 4, ll. 34-37).
14. Bodor notes that these images can be generated via a scanner or
digital photographs (Bodor, col. 4, ll. 37-40).
15. Bodor’s system uses spatial information contained in the
photographs to determine the relative dimensions of the object being
modeled (e.g., a room). To this end, the system can correlate pixels to
dimensions (e.g., feet) in the image (Bodor, col. 5, ll. 10-33, col. 14, ll. 1-16;
Fig. 2).

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007), explains that if the claimed subject matter cannot be
fairly characterized as involving the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement, a holding of obviousness can be
based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” Id. at 1740-41. Such a showing
requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . [H]owever,
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 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
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ANALYSIS
We find no error in the Examiner’s obviousness rejection of
representative claim 36 based on the collective teachings of MacInnes and
Bodor. First, MacInnes amply teaches marketing merchandise to customers.
As the Examiner indicates (Ans. 10-12), MacInnes expressly states that
manufacturers can use the interior design system to showcase their products
(FF 2). Notably, MacInnes’ system enables the user to (1) view an object’s
ordering and purchasing information (e.g., cost, etc.), and (2) order products
associated with the stored objects (FF 5, 10)—including directly from the
manufacturer (FF 10). As such, MacInnes not only teaches offering
merchandise to customers, but also selling merchandise to customers. This
commercial aspect of MacInnes’ system therefore amply teaches marketing
merchandise as claimed.
Furthermore, since users in MacInnes can create their own room plans
via the client application based on user-supplied dimensions (FF 8-9),
MacInnes teaches or suggests obtaining digital data defining a space in
which the customer wants to determine if the merchandise will fit, as
claimed. As noted previously, users can download stored objects and import
them into scenes at the client application residing on the clients’ computers
(FF 6). This capability enables, among other things, manipulating and
rearranging objects (e.g., furnishings) to see how they may look within the
client’s actual room (FF 3). Assessing the relative orientation of the objects
with respect to the user-defined room layout (see FF 11) would enable
determining whether the object corresponding to the merchandise will fit in
that space. That the client application includes a collision detection function
that prevents placing objects at inappropriate locations (FF 12) as the
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Examiner indicates (Ans. 9-10) only bolsters our conclusion that proper
placement and fitting of the objects within the user-defined space is
contemplated by MacInnes.
Lastly, we find no error in the Examiner’s reliance on Bodor for the
teaching of using a digital camera or scanned film image to obtain digital
data pertaining to the user-defined space noted above. Bodor generates a
model entirely from images in which all physical/proportional information
about the object including its shape, size, dimensions, proportion, and
structure is derived from the images used to construct the model (FF 13). As
the Examiner indicates (Ans. 8-9), these images can be generated via a
scanner or digital photographs (FF 14). Since Bodor teaches using these
images to determine the relative dimensions of an object to be modeled (FF
15), we see no reason why such images could not be used to acquire the
dimensional data used to create a representation of a room in MacInnes (see
FF 8). That Bodor’s extracted spatial information actually corresponds to a
room as shown in Fig. 2 of that reference (FF 15) only bolsters this
conclusion.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 36. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 3 and 6-12 which
fall with claim 36.5

5 Although Appellant argues in the Reply Brief that MacInnes fails to
disclose using edge location software (Reply Br. 2), this argument is not
germane to representative claim 36, but rather independent claim 6 which
was not separately argued in the Appeal Brief. See App. Br. 3-9. Since this
argument was raised for the first time in the Reply Brief, the argument is
waived. See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d
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CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 3,
6-12, and 36 under § 103.

ORDER
The Examiner’s decision rejecting claims 3, 6-12, and 36 is affirmed.

978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
opening brief ... is waived.”) (citations and quotation marks omitted). In any
event, even if the argument were timely raised, it does not persuasively rebut
the Examiner’s findings pertaining to this limitation on Pages 5 and 6 of the
Answer.

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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)(iv).

AFFIRMED

ELD

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