Ex Parte Glover

Patent Trial and Appeal Board

Sep 26, 2018

14841742 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/841,742 09/01/2015
103765 7590 09/28/2018
IBM Corp-Rochester Drafting Center
1701 North Street Building 256-3
Department SHCB
Endicott, NY 13760
FIRST NAMED INVENTOR
Raymond S. Glover
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GB920130084US2 3239
EXAMINER
MAZUMDER, SAPTARSHI
ART UNIT PAPER NUMBER
2617
NOTIFICATION DATE DELIVERY MODE
09/28/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rocdrctr@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND S. GLOVER
Appeal2018-002478
Application 14/841,742
Technology Center 2600
Before JASON V. MORGAN, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 11-22. Claims 1-10 are canceled. Appeal Br. 16. This
appeal is related to appeal number 2018-002342 (application number
14/087,123). See Appeal Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal2018-002478
Application 14/841,742
Invention
The Specification discloses configuration of a navigational system to
a control scheme based on fit and confidence scores calculated using
reference surfaces in a geometric environment. Abstract.
Illustrative Claim (key limitations emphasized)
11. A computer-implemented method fi..)r configuring a navigational
system for contro11ing motion of a synthetic camera within a
gemnetric environment; the method comprising:
obtaining a plurality of data points incorporated in a data set; the data
set being represented in the geometric environment;
forming a plurality of reference surfaces, the pluraHty of reference
surfaces having different groups of data points of the plurality of data
points as their respective vertices;
.forming a plurality {~{reference lines, each reference line being
normal to a corresponding reference swface {~{ the plura!i(y of
rr{erence swfaces;
calculating a geometric/it score based on an extent to vvhich the
plurality qf reference lines approach a conunon intersection point
with each other;
calculating a geometric cor?/ldence score based on a number qfthe
plurality of reference lines;
calculating a result of a computational operation on the geometric jzt
score and the geometric c011fidence score;
determining whether the result of the computational operation exceeds
a threshold; and
configuring, if the resuH of the computational operation exceeds the
threshold, the navigational system to a geometric control scheme;
wherein the gemnetric control scheme enables rotation of the
synthetic camera about the plurality of data points.
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Application 14/841,742
Rejection
The Examiner rejects claims 11-22 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 14--
18.
CLAIMS 11-13 and 15-22
Findings and Contentions
In rejecting claim 11 for insufficient written description support, the
Examiner finds the Specification fails to disclose any "specific formula to
define the geometric confidence score and geometric fit score." Final Act.
15. That is, the Examiner finds the Specification "does not disclose
specifically how the geometric fit score is calculated" and "how the
geometric confidence score is calculated." Ans. 4. Thus, the Examiner
finds the Specification fails to provide written description support for the full
scope of the recitations directed to "calculating a geometric fit score" and
"calculating a geometric confidence score." Final Act. 15.
The Examiner finds the "Specification has only support for 'addition'
or 'product' as a computational operation." Id. Thus, the Examiner finds
the Specification fails to provide written description support for the full
scope of the recitation directed to "[ c ]alculating a result of a computational
operation." Id.; see also Ans. 7-9.
The Examiner also finds the Specification discloses a "geometric
confidence score [that] is the number of both normal and non-normal
reference lines intersecting a point." Final Act. 17 (citing Spec. ,r 46). Thus,
the Examiner finds the Specification fails to provide written description
support for the calculating a geometric confidence score based on the
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Appeal2018-002478
Application 14/841,742
formation of a plurality of reference lines, each reference line being normal
to a corresponding reference surface. See Final Act. 16-17.
Appellant contends the Examiner erred because the Specification
would have conveyed to an artisan of ordinary skill that the inventor had
possession of the claimed invention at the time of filing. See Appeal Br. 9.
Specifically, Appellant notes that the Specification includes teachings
directed to:
1) "calculating a geometric fit score ... based on whether reference
lines 'intersect or approach intersection at an intersection point'"
(id. at 7 ( citing Spec. ,r 46) );
2) "calculating a geometric confidence score ... based on 'the
number of the reference lines [] used to calculate the geometric fit
score"' (Appeal Br. 7 (citing Spec. ,r 47));
3) a "computational operation [that] may be the product of the fit
score and the confidence score" or "the addition of the fit score and
the confidence score" (Appeal Br. 9 ( emphasis omitted) ( citing
Spec. ,r 39)); and
4) "reference lines 308 [that] are normal to one or more reference
surfaces 306" (Appeal Br. 11 ( citing Spec. ,r 46)).
Analysis
Under 35 U.S.C. § 112(a), the Specification must both provide "a
written description of the" claimed invention and "enable any person skilled
in the art ... to make and use the" claimed invention. The written
description requirement is separate from the enablement requirement. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). "[ A ]lthough written description and enablement often rise and fall
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Application 14/841,742
together, requiring a written description of the invention plays a vital role in
curtailing claims that do not require undue experimentation to make and use,
and thus satisfy enablement, but that have not been invented, and thus
cannot be described." Ariad, 598 F.3d at 1352. The written description
requires a "subjective inquiry about what the inventor possessed" as would
be understood by an artisan of ordinary skill. Id. at 1366 (Rader, J.,
dissenting-in-part and concurring-in-part); see also Manual of Patent
Examining Procedure§ 2171 (9th ed., rev. 08.2017) (Jan. 2018) (written
description is a subjective test "because it is dependent on what the inventor
... regards as his or her invention").
For a claim to be supported by adequate written description support,
the Specification must reasonably convey to an artisan of ordinary skill that
the inventor had possession of the claimed invention at the time the
application was filed. See Vasudevan Software, Inc. v. MicroStrategy, Inc.,
782 F.3d 671,682 (Fed. Cir. 2015) (citingAriad, 598 F.3d at 1351). While
"[t]here is no rigid requirement that the disclosure contain 'either examples
or an actual reduction to practice,'" the written description requirement
requires the Specification set forth "an adequate description that 'in a
definite way identifies the claimed invention' in sufficient detail such that a
person of ordinary skill would understand that the inventor had made the
invention at the time of filing." Allergan, Inc. v. Sandoz Inc., 796 F.3d
1293, 1308 (Fed. Cir. 2015) (citingAriad, 598 F.3d at 1352).
"A claim will not be invalidated on section 112 grounds simply
because the embodiments of the specification do not contain examples
explicitly covering the full scope of the claim language." LizardTech, Inc. v.
Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) (citing
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Appeal2018-002478
Application 14/841,742
Union Oil Co. v. Atl. Riclifield Co., 208 F.3d 989, 997 (Fed. Cir. 2000)).
The "patent specification is written for a person of skill in the art, and such a
person comes to the patent with the knowledge of what has come before."
LizardTech, 424 F.3d at 1345 (citing In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995)).
Here, Appellant has identified sufficient evidence showing the
Specification would have reasonably conveyed to an artisan of ordinary skill
that the inventor had possession of the claimed invention at the time the
application was filed. See Appeal Br. 6-12. The Examiner's findings fail to
show lack of written description support. See Final Act. 14--18; Ans. 3-9.
Rather, the Examiner presents findings that would be more applicable to
ascertaining whether the Specification would have enabled an artisan of
ordinary skill to make or use the full scope of the claimed invention.
The Examiner, however, does not reject the claimed invention for a
lack of enablement. Moreover, the Examiner's findings and analysis would
still be incomplete had the rejection's basis been lack of enablement.
In the event of further prosecution, the Examiner should
systematically ascertain whether undue experimentation would have been
needed to practice the invention by considering factors including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Because the Examiner presents insufficient findings or analysis
showing lack of written description support for the recitations at issue, we do
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Application 14/841,742
not sustain the Examiner's 35 U.S.C. § 112(a) rejection of claim 11, and
claims 12, 13, and 15-22, which are similarly rejected. Final Act. 15.
CLAIM 14
Findings and Contentions
In rejecting claim 14 for insufficient written description support, the
Examiner finds the Specification's description and depiction of reference
lines touching or intersecting triangular surfaces fails to disclose "each
reference line being normal to a center of a corresponding triangular
reference surface" in the manner claimed. Final Act. 17-18 ( emphasis
omitted). In particular, the Examiner finds the Specification merely
discloses reference lines normal to the reference surfaces (id. at 17 ( citing
Spec. ,r,r 45--46, Fig. 3)) and that "it is not clear that reference lines 308 are
normal to the centers of the triangular reference surfaces 306" (Ans. 10) in
the Specification's Figure 3, reproduced below.
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Application 14/841,742
308.....r,.,
306
z
?308
I "
/<.__ 308
/
/
302
FIG. 3
V
The Specification's Figure 3 depicts an image of a data set in a
geometric environment having reference surfaces 306 and reference lines
308 normal to the reference surfaces. Spec. ,r 13; see also id. ,r,r 46-47.
Figure 3 depicts a four-sided pyramid with seemingly equal-size triangular
reference surfaces and reference lines, normal to said surfaces, approaching,
within distance 309, intersection point 310, the center of what would be the
base of the pyramid. See id. ,r 46.
Appellant contends the Examiner erred because although the
Specification "does not explicitly state that the reference lines are normal to
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Application 14/841,742
the centers" of the surfaces, the Specification's Figure 3 depicts them as
such. Appeal Br. 14; see also Reply Br. 11.
Analysis
"[P]atent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue." Hockerson-Halberstadt, Inc.
v. Avia Grp. Int'!, Inc., 222 F.3d 951,956 (Fed. Cir. 2000). Nonetheless,
"under proper circumstances, drawings alone may provide a 'written
description' of an invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1565 (Fed. Cir. 1991). Appellant argues that the Specification's Figure 3
provides written description support for the formation of reference lines
normal to the centers of corresponding reference surfaces. See Appeal Br.
14. The Examiner finds that Figure 3 is unclear in this regard. See Ans. 10.
We agree with the Examiner that Figure 3 is not completely clear. Id.
In particular, it is unclear what definition of a center would correspond to
each intersection point. Classic definitions of a triangle's center-such as
the centroid, circumcenter, orthocenter, and incenter-fail to match up with
each of the intersection points for the reference lines and reference surfaces.
Nonetheless, while Figure 3 is flawed in terms of precision, it still illustrates
each reference line intersecting a reference surface at a respective canonical
reference point on each reference surface. Thus, Figure 3 would have
conveyed to an artisan of ordinary skill that the inventor had a central point
on each surface in mind-perhaps chosen from the over twenty-three
thousand recognized definitions for the center of a triangle (see Clark
Kimberling, Encyclopedia of Triangle Centers - ETC, Univ. of Evansville,
available at http://faculty.evansville.edu/ck6/encyclopedia/ETC.html (last
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Appeal2018-002478
Application 14/841,742
updated Sept. 15, 2018) (last visited Sept. 20, 2018)}-as the canonical
reference point for purposes of forming the reference lines.
The lack of precision in the Specification's Figure 3, and the lack of
disclosure directed to the meaning of "a center of a corresponding triangular
reference surface," raise questions of enablement and definiteness with
respect to claim 14. However, we agree with Appellant that the
Specification's Figure 3 provides sufficient written description support for
claim 14.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112(a)
rejection of claim 14.
DECISION
We reverse the Examiner's decision rejecting claims 11-22.
REVERSED
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