Ex Parte Kok et al

Patent Trial and Appeal Board

Jun 26, 2017

13787992 (P.T.A.B. Jun. 26, 2017)

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.
13/787,992 03/07/2013 Raymond Kok 2012P05675US01 1673
45113 7590 06/28/2017
Siemens Corporation
Intellectual Property Department
3501 Quadrangle Blvd Ste 230
Orlando, EL 32817
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND KOK, IAN FISHER, ERIC LEESON,
and ORI BEN-HAIM
Appeal 2016-005975
Application 13/7 87,9921
Technology Center 3600
Before LARRY J. HUME, JOHN D. HAMANN, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Siemens Product
Lifecycle Management Software Incorporated. App. Br. 4.
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STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate "to computer-
aided design, visualization, and manufacturing systems, product lifecycle
management ("PLM") systems, and similar systems[] that manage data for
products and other items (collectively, "Product Data Management" systems
or "PDM" systems)." Spec. 12.
Exemplary Claims
Claims 1 and 5, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A system for collaborative virtual product
development, comprising:
at least one processor;
a memory connected to the processor;
a collaborative design representing a virtual product, the
collaborative design comprising:
a plurality of design elements stored in the
memory, wherein the design elements represent units
of data;
a plurality of partitions generated by the
processor, the partitions defined as a hierarchical
organization of the design elements in the
collaborative design; and
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 6, 2015); Reply Brief ("Reply Br.," filed May 20, 2016); Examiner's
Answer ("Ans.," mailed Apr. 15, 2016); Final Office Action ("Final Act.,"
mailed May 15, 2015); and the original Specification ("Spec.," filed
Mar. 7, 2013).
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at least one works et generated by the
processor, the workset comprising a subset of the
design elements possessing membership in the
workset based on one or more predetermined rules,
the workset configured to enable a user to modify the
collaborative design,
wherein the processor is configured to search
the design elements and operable to generate the
subset based on the predetermined rules, and wherein
the design elements are stored in the memory.
5. The system of claim 1, wherein the subset is
defined by a mutual proximity of the design elements.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Charles et al. ("Charles") US 2006/0212821 A1 Sept. 21, 2006
Chen et al. ("Chen") US 2010/0299616 Al Nov. 25, 2010
Rejections on Appeal
Rl. Claims 1—26 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2; Ans. 2.3
R2. Claims 1—11, 14—22, 25, and 26 stand rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Charles. Final Act. 4; Ans. 5.4
3 We note the Examiner characterizes the § 101 Rejection Rl as being a
new ground of rejection, even though these claims were previously rejected
in the Final Action (2) under § 101. It appears the Examiner has merely
restated the rejection in the Answer to be in full accord with current USPTO
subject matter eligibility guidelines and the two step Alice analysis,
discussed infra.
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R3. Claims 12, 13, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Charles and Chen.
Final Act. 7; Ans. 5; see n.4.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 13—98; Reply Br. 10—59)
and the Examiner's findings, we decide the appeal of Rejections R1 through
R3 based upon the following claim groupings:
Rejection Claims Representative Claim
Rl 1-26 l4 5
R2 1, 14, 25, and 26 l6
2 and 15 2
3 and 16 3
4 and 17 4
6 and 18 6
7 and 19 7
4 In the Answer, the Examiner corrects an oversight in the Final Action in
which claims 13 and 24 were originally stated as being rejected under
Rejection R2 without detailed analysis, but which were later rejected in a
new ground of rejection in the Answer as being subject to rejection under
Rejection R3 along with claims 12 and 24. Compare Final Act. 4 with
Ans. 5.
5 Although Appellants state each of independent claims 1, 14, 25, and 26 is
separately argued under Rejection Rl, we note each of the actual arguments
presented are commensurate in scope and essentially equivalent to that
presented with respect to independent claim 1 such that we group claims 1—
26 together. Compare App. Br. 18—27 with App. Br. 28—35.
6 Appellants state each of independent claims 1, 14, 25, and 26 is separately
argued under Rejection R2. However, we note the actual arguments are
commensurate in scope and essentially equivalent to that presented with
respect to independent claim 1 such that we group claims 1,14, 25, and 26
together. Compare App. Br. 36-47 with App. Br. 63—68 and 80-93.
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Rejection Claims Representative Claim
R2 8, 9, 20, and 21 8
10 and 22 10
R3 12 and 23 12
13 and 24 13
Claims 5 and 11 in Rejection R2 are separately argued by Appellants.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to anticipation Rejection R2 of claim 5 for the specific reasons
discussed below.
However, we disagree with Appellants' arguments with respect to
claims 1—4 and 6—26, and we incorporate herein and 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 and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments. We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
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1. $ 101 Rejection R1 of Claims 1—26
Issue 1
Appellants argue (App. Br. 18—27; Reply Br. 10—21) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter is in error. These contentions present us with the following
issue:
Did the Examiner err in concluding claim 1 is directed to a judicial
exception, i.e., an abstract idea, without "significantly more" as set forth by
the Supreme Court's Mayo!Alice analysis framework?7
Analysis
Appellants contend independent claims 1, 14, 25, and 26 "are directed
to a systems including a processor and memory, which is a machine and
therefore a statutory category of invention, to a statutory process, and to a
statutory manufacture. The Office Action errs in alleging that the claims are
directed to a 'judicial exception.'" Reply Br. 11. Further,
[I]t is immediately evident that even if the claim did recite a
judicial exception, the claim is not attempting to tie up any such
exception so that others cannot practice it. Using the Office
Action's allegations, it is clear that the instant claims do not
attempt to "tie up" either the field of collaborative virtual
product development or any "idea" of "gathering and
combining data." Thus, eligibility of these claims is self-evident
in the streamlined analysis, without needing to perform the full
eligibility analysis (e.g., Steps 2A and 2B). These claims are
patent eligible.
Reply Br. 11—12 (emphasis omitted).
7 See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012) and Alice Corp. Pty Ltd. v. CLS BankInt'l, 134 S. Ct. 2347 (2014).
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Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
566 U.S. at 71; Alice, 134 S. Ct. at 2354. Accordingly, laws of nature,
natural phenomena, and abstract ideas are not patent-eligible subject matter.
Id.
The Supreme Court's two-part Mayo!Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks and bracketing omitted).
First, we "determine whether the claims at issue are directed to [a] patent-
ineligible concept[]." Id. at 2355. If so, we "examine the elements of the
claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps8 of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea'" for the purposes of step one.
8 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353—54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must, therefore, ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 (citation omitted). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that step we must
"look with more specificity at what the claim elements add, in order to
determine 'whether they identity an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs,
838 F.3d at 1258 {quoting Elec. Power Grp. 830 F.3d at 1353).
Turning to the claimed invention, claim 1 recites a "system for
collaborative virtual product development." Claim 1 (preamble).9 The
9 Similarly, independent claims 14, 25, and 26 recite "[a] method for
collaborative virtual product development" (claim 14); "[a] data processing
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system claim limitations also require a processor and memory, and a
collaborative design that includes "design elements," plural "partitions," and
at least one "workset" that includes "a subset of the design elements
possessing membership in the workset" based upon one or more rules. The
processor searches the design elements and generates the subset of the
design elements, and the design elements are stored in the memory.
Claim 1.
Similarly, the Examiner finds:
Applicants' claims use a 'at least one processor,' 'memory
connected to the processor,' 'a non-transitory computer-readable
medium encoded with computer-executable instructions which
cause at least one data processing system to . . .' pertaining to an
abstract idea itself or the abstract idea of "organizing human
activities" involving a collaborative design including a plurality
of design elements, partitions and at least one workset. Here,
the claimed solution is directed to the abstract idea of
"organizing human activities" such as receiving, processing,
and storing data (See Alice Corp., 134 S. Ct. at 2360), and
electronic record keeping {See Alice Corp., 134 S. Ct. at 2359)
i.e. the generation and management of a collaborative design in
a memory based on predetermined rules. From the Alice
decision, the "organizing human activities" stemmed from the
series of steps on how hedge risk i.e. perform activities or steps
to analyze data to affect the outcome of a situation. The instant
claims simply describe the steps of how to apply the abstract
idea on a computer and that these steps are the human activities
which are organized.
Ans. 8 (emphasis added).
system for collaborative virtual product development" (claim 25); and "[a]
non-transitory computer-readable medium encoded with computer-
executable instructions for collaborative virtual product development."
Claim 26.
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Under step one, we agree with the Examiner that the inventions
claimed in claims 1, 14, 25, and 26 are directed to an abstract idea, i.e.,
organizing human activities pertaining to a collaborative virtual product
design involving receiving, processing, and storing data by using a
computer.
As the Specification itself observes, "[t]he present disclosure is
directed, in general, to computer-aided design, visualization, and
manufacturing systems, product lifecycle management ("PLM") systems,
and similar systems, that manage data for products and other items
(collectively, "Product Data Management" systems or "PDM" systems)."
Spec.l 2. We find this type of activity, i.e., managing data for products and
other items includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson").10
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has altered the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
10 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101." CyberSource, 654 F.3d at 1373.
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Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(quoting Elec. Power Grp. 830 F.3d at 1354 (internal quotation marks and
citations omitted)).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and, thus, transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 73.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an "inventive concept" that
transforms the abstract idea of managing data for products and other items
into a patent-eligible application of that abstract idea. Ans. 7. We agree
with the Examiner because, as in Alice, we find the recitation of a computer
processor that searches the design elements and generates a subset of the
design elements is simply not enough to transform the patent-ineligible
abstract idea here into a patent-eligible invention. See Alice, 134 S. Ct. at
2357 ("[CJlaims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to non-statutory subject matter. Therefore, we sustain the
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Examiner's non-statutory subject matter rejection of independent claim 1,
and grouped claims 2—26 which fall therewith. See Claim Grouping, supra.
2. $ 102(b) Rejection R2 of Claims 1, 14, 25, and 26
Issue 2
Appellants argue (App. Br. 36-47; Reply Br. 22—36) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Charles is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a "system
for collaborative virtual product development" including "a collaborative
design representing a virtual product" that includes, inter alia,
[LI] a plurality of design elements stored in the
memory, wherein the design elements represent units
of data;
[L2] a plurality of partitions generated by the
processor, the partitions defined as a hierarchical
organization of the design elements in the
collaborative design; and
[L3] at least one workset generated by the
processor, the workset comprising a subset of the
design elements possessing membership in the
workset based on one or more predetermined rules,
the workset configured to enable a user to modify the
collaborative design,
[L4] wherein the processor is configured to search the design
elements and operable to generate the subset based on the
predetermined rules,
as recited in claim 1 (labeling added)?
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Analysis
Limitation LI: Charles Discloses the Claimed "[DJesign / I'd laments "
Appellants contend there is no teaching that Charles' "geometrical
features" are equivalent to the claimed "design elements," or that such
geometrical features "represent units of data", as recited in claim 1. App.
Br. 38. Appellants further contend the Examiner improperly took official
notice that "'[i]t is old and well known in the computing arts that a rendering
or modification of a feature represents a unit of data stored in a computing
environment,'" particularly because Charles' disclosed "feature" refers to
geometric features. App. Br. 39 (citing Final Act. 9). Appellants also
emphasize they traversed the Examiner's taking of official notice during
prosecution, without receiving a proper response from the Examiner
providing evidence that the claimed feature was well-known in the art. Id.
In response to Appellants' arguments, in particular the contention the
Examiner improperly invoked official notice, the Examiner finds:
The Examiner has broadly interpreted, as one of ordinary skill
in the art would do, the design elements that represent of units
of data as the features of the object i.e. the units of data are the
features that make up the entire object which can be isolated for
editing thus creating a smaller workspace and piece of data
representing that particular feature. The Examiner has only
articulated that one of ordinary skill in the art would interpret a
rendering or modification of a feature represents a unit of data
stored in a computing environment (as shown in 116 of
Charles). Furthermore, the Examiner notes that the rejection of
the independent claims 1, 14, 25 and 26 was a proper 102 and
that no official notice was taken. Since the Charles reference
discloses saving or storing geographical features as data units,
which is equivalent to design elements stored in a memory
which represent units of data, the reference reads on the claim
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limitations. Still further, the Examiner notes that the
specification in paragraph [0004] states "The collaborative
design includes a plurality of design elements representing units
of data, which include attributes, positions, and geometries of
the virtual product," paragraph [0032] wherein "Design
elements 308A-308N, which are also referred to as "design
data", may be units of data representing geometry of a part,
an object or an instance. It will be appreciated that an
instance is an occurrence or a copy of an object" and finally
paragraph [0064] "The collaborative design includes a plurality
of design elements representing units of data, wherein the
units of data define geometries of the virtual product." Again,
one of ordinary skill in the art would have interpreted the
geographic features as described by Charles, as the "Design
elements 308A—308N, which are also referred to as "design
data", may be units of data representing geometry of a part, an
object, or an instance" as described by paragraph [0032] of the
disclosure.
Ans. 9.
"In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (internal citations omitted). Absent an express intent to impart a
novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (internal citation omitted).
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We note Appellants have not cited to a definition of "a plurality of
design elements . . . [that] represent units of data" in the Specification that
would preclude the Examiner's broader reading.11 Ans. 9.
Accordingly, we agree with the Examiner's finding that Charles
discloses contested limitation LI.
Limitation L2: Charles Discloses Hierarchically Organized Partitions
Appellants contend Charles' disclosure that "[d]ata typically include
technical data related to the products said data being ordered in a hierarchy
of data and are indexed to be searchable" (App. Br. 41 (citing Final Act. 4
and Charles 1 8)) teaches "data in a database can be ordered in a hierarchy of
data, but does not describe any partitions defined as a hierarchical
organization of the design elements ('geometrical features') in the
collaborative design, as claimed. There is no such teaching in Charles, and
so the anticipation rejection is in error." App. Br. 43 (emphasis omitted).
In response to Appellants' contentions:
The Examiner notes that the specification states in paragraph
[0040]—[0041] "The design elements having membership in
function 404 are selected based on their general function while
those having membership in area 408 are selected based on
their location in a vehicle. It will be appreciated that the design
11 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description").
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elements may be partitioned based on many other criteria (e.g.,
module, system). The partition function 404 contains design
elements that are used in chassis 412, powertrain 416, and
safety 420. The design elements in powertrain 416 may be
further divided into transmission 424 and generation 428. The
partition area 408 contains design elements used in front 440,
back 444, interior 448, and roof 452. [0041] According to
disclosed embodiments, the organization of the in-context
design data occurs independently from the physical breakdown
through the notion of a partition scheme with associated
partitions. Partitions provide a grouping mechanism, which
provides a view specific presentation of the in-context design
data.
Ans. 10 (emphasis omitted).
In addition:
The Examiner has broadly interpreted, as one of ordinary skill
in the art would do, partitions defined as a hierarchical
organization of the design elements as the subsets of features
which represent the part or object as disclosed in Charles (i.e.
the tree structure will have different levels partitioned off based
on that level as it relates to the tree hierarchy of the entire part).
Both working examples from the specification and the Charles
reference discuss how parts from an automobile are able to be
"partitioned" or data displayed in the form of a "tree" wherein
an assembly has other parts separated from the larger assembly
or grouping. The Examiner notes that as currently claimed, the
limitation is broad and does not exclude the use of hierarchal
organization of databases which represent parts or objects
wherein the parts or objects have subsets of features.
Ans. 10-11.
We agree with the Examiner's findings because, under the broadest
reasonable interpretation, the recited "partitions defined as a hierarchical
organization of the design elements in the collaborative design" (claim 1)
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reads on Charles' disclosure of both functional and locational hierarchies of
automobile parts, as set forth by the Examiner. Ans. 11.
Limitation L3: Charles Discloses a Generated Workset as Claimed
Appellants contend:
Charles does not teach a workset as claimed. The Office
Action is correct that Charles describes that each workbench
comprises a different subset of software tools — but this does
not meet the claim limitation, which requires that a workset
comprises a subset of the design elements. Charles does not
teach any workset that comprises a subset of the design
elements ("geometrical features").
App. Br. 45 (emphasis omitted).
In response, the Examiner finds, and we agree, Charles paragraphs 26
and 70 disclose "a workbench suitable for editing geometrical features of the
modeled product." Ans. 11. Further to this point, the Examiner finds
Charles paragraph 72 discusses the feature tree of Figure 1 which:
pertains to a brake assembly including brake caliper and disc. It
is the product that breaks out into smaller parts which is
equivalent to the workset comprising a subset of design
elements (a brake which has a caliper and a disc, the caliper and
disc belonging to the brake due to some set of predetermined
rules) which is able to be modified, not the subset of software
tools as Appellant states.
Id.
We agree with the Examiner's interpretation of "workset" set forth
above. On this record, Appellants have not shown the Examiner's
construction is overly broad, unreasonable, or inconsistent with Appellants'
Specification.
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Limitation L4: Charles Discloses the Processor Searches the Design
Elements and Generates the Claimed Subset
Appellants contend:
Nothing in the[] paragraphs [of Charles cited by the
Examiner] teach or suggest any ability to search the design
elements ("geometrical features") — the only thing "indexed to
be searchable" is technical data related to products. A general
reference to database search capabilities is not the same as the
ability to search design elements that represent units of data and
are members of worksets based on predetermined rules, as
claimed. There is no such teaching in Charles, and so the
anticipation rejection is in error.
App. Br. 46-47.
In response to Appellants' contention the design elements of Charles
are not searchable, the Examiner finds "Charles discloses that users retrieve
database information primarily through queries" (Ans. 12), and broadly
interprets "the searchable design elements as the ability of users to query
using keywords and sorting commands in a database." Ans. 12.
We agree with the Examiner's claim construction and reading of the
claim onto the cited prior art.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the disclosure of the
cited prior art to disclose the disputed limitations of claim 1, nor do we find
error in the Examiner's resulting finding of anticipation. Therefore, we
sustain the Examiner's anticipation rejection of independent claim 1, and
grouped claims 14, 25, and 26. See Claim Grouping, supra.
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3. $ 102(b) Rejection R2 of Claim 5
Issue 3
Appellants argue (App. Br. 53—54; Reply Br. 43 44) the Examiner's
rejection of claim 5 under 35 U.S.C. § 102(b) as being anticipated by
Charles is in error. This contention presents us with the following issue:
Did the Examiner err in finding the cited prior art discloses the system
of claim 1, "wherein the subset is defined by a mutual proximity of the
design elements," as recited in claim 5?
Analysis
Appellants contend "[tjhere is certainly no subset defined by a mutual
proximity of the design elements, as required by this claim." App. Br. 54
(emphasis added).
We have reviewed paragraph 14 of Charles cited by the Examiner
(Final Act. 5) as purportedly disclosing the contested limitation of claim 5,
and we find no disclosure, teaching, or suggestion of any such feature where
a subset is defined by a mutual proximity of any of the design elements.12
12 The cited portion of Charles states:
For example, the user may wish to know where a product, e.g. a
braking pedal, is also used, that is, in which other models it is
embedded. A standard CAD tools enable a user to navigate
between parts or products mainly according to the "is composed
of' relation. Databases used in PDM systems enable queries to
be made on various types of relation between parts or product
and the scope of navigation of the databases is the widest
possible. In practice, the user can have access to all the parts,
products or assemblies.
Charles 114.
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Application 13/787,992
Accordingly, on this record, we are persuaded the Examiner erred,
and, thus, cannot sustain the Examiner's anticipation rejection of dependent
claim 5.
4. Rejection R2 of Claims 2—11 and 15—22
While Appellants raised additional arguments (App. Br. 47—62; Reply
Br. 36—54) for patentability of separately argued claim 11, and
representative claims 2—8 and 10 (see Claim Grouping, supra), rejected on
the same basis as claim 1 under Rejection R2, we find the Examiner has
rebutted each of those arguments in the Answer by a preponderance of the
evidence, as identified in the following table:
Claims Relevant Findings
2 and 15 Final Act. 5; Ans. 12
3 and 16 Final Act. 5; Ans. 12
4 and 17 Final Act. 5; Ans. 13
6 and 18 Final Act. 5; Ans. 13
7 and 19 Final Act. 5; Ans. 13—14
8, 9, 20, and 21 Final Act. 6; Ans. 14
10 and 22 Final Act. 6; Ans. 14
11 Final Act. 6; Ans. 14—15
Accordingly, we are not persuaded by Appellants' arguments, and we
adopt the Examiner's findings and underlying reasoning, which we
incorporate herein by reference. Consequently, we find no reversible error
in the Examiner's rejection of claims 2—11 and 15—22.
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Application 13/787,992
5. Rejection R3 of Claims 12, 13, 23, and 24
While Appellants raised additional arguments (App. Br. 94—97; Reply
Br. 55—58) for patentability of representative claims 12 and 13 (see Claim
Grouping, supra), rejected under Rejection R3, we find the Examiner has
rebutted each of those arguments in the Answer by a preponderance of the
evidence, as identified in the following table:
Claims Relevant Findings and Conclusions
12 and 23 Final Act. 7; Ans. 15
13 and 24 Ans. 5, and 15—16
Accordingly, we are not persuaded by Appellants' arguments, and we
adopt the Examiner's findings, underlying reasoning, and legal conclusions
which we incorporate herein by reference. Consequently, we find no
reversible error in the Examiner's rejection of claims 12, 13, 23, and 24.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 7—59) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to non-statutory subject
matter Rejection R1 of claims 1—26 under 35 U.S.C. § 101, and we sustain
the rejection.
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Application 13/787,992
(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1—4, 6-11, 14—22, 25, and 26 under 35 U.S.C. § 102(b) over
the cited prior art of record, and we sustain the rejection.
(3) The Examiner erred with respect to anticipation Rejection R2 of
claim 5 under 35 U.S.C. § 102(b) over the cited prior art of record, and we
do not sustain the rejection.
(4) The Examiner did not err with respect to obviousness Rejection
R3 of claims 12, 13, 23, and 24 under 35 U.S.C. § 103(a) over the cited prior
art combination of record, and we sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner's decision rejecting claims 1—26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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