Ex Parte Ghantous et al

Patent Trial and Appeal Board

Feb 28, 2014

11339423 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMI GHANTOUS and BO NOREN
____________________

Appeal 2011-0100751
Application 11/339,423
Technology Center 2100
____________________

Before JEAN R. HOMERE, BRUCE R. WINSOR, and LARRY J. HUME,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Autodesk, Inc. (App. Br. 3.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 2-5, 8, 10-13, 16, 18-21, 27, 29, and 31.
Claims 1, 6, 7, 9, 14, 15, 17, 22-26, 28, 30, and 32-34 are canceled (App. Br.
5, 17-22). We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method and system for creating a computer
aided design (CAD) model (120) of a pipe network (201). (Spec. [0002],
Figs. 1-2.) In particular, upon receiving from a designer routing
characteristics defining the topology of the network, and routing
specifications (140) defining the type, the location, the orientation, and the
range of physical values associated with each element in a first set of
network elements, a CAD application program (105) selects each network
element from a catalog (130) of network elements that meet the user’s
specifications, and inserts them in the CAD model (120). Upon detecting
that the characteristics of a previously inserted network element of the first
set do not exist in a second set of network elements, the network element is
removed from the CAD model, and replaced with another element of similar
characteristics from the second set. (Spec. [0008], [0017], [0045].)
Illustrative Claim
Independent claim 27 further illustrates the invention. It reads as
follows:
27. A computer-implemented method for constructing a
computer-aided design (CAD) model of a utility network, the
method comprising:
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receiving a selection of a first routing specification that
corresponds to the utility network and includes a first set of
network elements, wherein each network element in the first set
of network elements is associated with a network element type
and one or more physical attributes;
receiving one or more routing characteristics that define a
topology for the utility network, the topology specifying one or
more locations and orientations associated with different
network elements included in the utility network;
receiving a selection of a range of values of a first
physical attribute associated with a first network element type;
selecting a first network element from the first set of
network elements based on the first network element type and
the one or more routing characteristics, wherein at least one
physical attribute associated with the first network element
matches a first value in the selected range of values of the first
physical attribute;
inserting the first network element in the CAD model of
the utility network;
receiving a selection of a second routing specification
that corresponds to the utility network and includes a second set
of network elements;
determining that the first network element does not exist
in the second set of network elements;
automatically removing the first network element from
the CAD model;
selecting a second network element from the second set
of network elements based on the first network element type
and the one or more routing characteristics, wherein at least one
physical attribute associated with the second network element
matches the first value in the selected range of values of the
first physical attribute; and
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inserting the second network element in the CAD model
of the utility network.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Normann US 5,557,537 Sep. 17, 1996
Dessureault US 7,065,476 B2 Jun. 20, 2006

Orange Technologies Inc., CADPIPE P&ID (2004) (“Cadpipe”)

Rejection on Appeal
The Examiner rejects claims 2-5, 8, 10-13, 16, 18-21, 27, 29, and 31
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Normann, Cadpipe, and Dessureault.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 14-15, and the Reply Brief, pages 5-6.

Dispositive Issue: Under 35 U.S.C. § 103(a), did the Examiner err in
finding that the combination of Normann, Cadpipe, and Dessureault teaches
or suggests upon determining that a network element from a first set of
network elements previously inserted in a CAD model does not exist in a
second set of network elements, removing the network element from the CAD
model, and replacing it with another network element from a second set of
network elements, as recited in claim 27?

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Appellants argue the proffered combination does not teach or suggest
the disputed limitations emphasized above. (App. Br. 14-15; Reply Br. 5-6.)
In particular, Appellants argue Cadpipe discloses modifying out-of-spec
network elements to conform to a new specification. (App. Br. 14.)
According to Appellants, Cadpipe’s disclosure of modifying an object
within the CAD model does not teach or suggest removing the object from
the model, and replacing it with a different object. (App. Br. 15.)
Appellants submit while Cadpipe’s disclosed modification pertaining to a
single object with existing relationships may (or may not) necessitate
removing or creating new relationships between the object and other objects,
the claimed steps of removing and inserting the object necessarily involve
two different objects. (App. Br. 15.)
In response, the Examiner finds, because Appellants’ arguments focus
solely on Cadpipe’s disclosure, and fail to address the combination of
Normann, Cadpipe, and Dessureault, the latter reference being particularly
relied upon for the disputed limitations, Appellants’ arguments are not
responsive to the Examiner’s rejection. (Ans. 17.) Further, the Examiner
concludes because a person of ordinary skill would recognize Cadpipe’s
disclosure of modifying a 1/2” pipe to a 6” pipe in CAD tool can be
construed as removing the 1/2” pipe and replacing it with a 6” pipe, Cadpipe
taken in combination with Dessureault teaches the disputed limitations.
(Ans. 20.)
On the record before us, we find no error in the Examiner’s
obviousness rejection. We note at the outset Appellants’ failure to address
the combination of Normann, Cadpipe, and Dessureault in the initial Brief.
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As observed by the Examiner, Appellants’ arguments focus exclusively on
Cadpipe while the Examiner relied upon the combination of the cited
references, and in particular upon Dessureault to teach the disputed
limitations. (Ans. 15.) Because Appellants’ belated arguments presented in
the Reply Brief are not in response to new evidence or arguments proffered
by the Examiner in the Answer, those arguments are waived. In particular,
we find no justification on this record as to why Appellants could not have
raised earlier the arguments about Dessureault’s teachings and its alleged
improper combinability with Cadpipe. (Reply Br. 5-6.) We have held that
new arguments in the Reply Brief are inappropriate and will not be
considered. See 37 C.F.R. § 41.52(a)(1). Belated arguments are waived.
See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
Further, we note Appellants do not dispute the Examiner’s finding
that Cadpipe discloses modifying a pipe by replacing a 1/2” pipe with a 6”
pipe. We find such replacement of the pipe necessarily involves removing
the 1/2” pipe before putting the 6” pipe in its place. Additionally, we note
Appellants’ statement that Cadpipe’s disclosure of modifying a network
object may (or may not) necessitate any relationships between the modified
object and other objects in the CAD model to be removed or created. (App.
Br. 15.) We find the possibility that modifying the object may involve
removing the object from the CAD model to be sufficient under an
obviousness standard to support the Examiner’s finding that Cadpipe teaches
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or suggests removing and replacing the object. We are therefore satisfied
that, in light of the cited findings, by removing the 1/2” pipe, and replacing it
with a 6” pipe in the CAD network, Cadpipe teaches or strongly suggests the
disputed limitations. It follows Appellants have not shown error in the
Examiner’s rejection of claim 27.
Regarding claims 2-5, 8, 10-13, 16, 18-21, 29,2 and 31, Appellants
reiterate substantially the same arguments submitted for patentability of
claim 27 above. As discussed above, these arguments are not persuasive.
See 37 C.F.R. § 1.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejection of claims 2-5, 8, 10-13, 16, 18-21,
27, 29, and 31 as set forth above.
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

msc

2 Claims 29, 10-13, and 16 recite a computer-readable medium storing
instructions. However, Appellants’ Specification does not provide a
definition for computer-readable (storage) medium. In the event of further
prosecution, the Examiner should consider entering a nonstatutory subject
matter rejection against those claims. An expanded PTAB panel recently
held in an appeal involving the same issue (Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential)), that where Appellants’
Specification fails to define a computer-readable storage medium, the term
must be broadly and reasonably construed according to its ordinary and
customary meanings to a person of ordinary skill in the art to encompass
both non-transitory and transitory media.