Autodesk, Inc.

Patent Trials and Appeals Board

Dec 22, 2021

2020006648 (P.T.A.B. Dec. 22, 2021)

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.
14/927,200 10/29/2015 Munindra Nath Chakravarty 30566.524-US-U1 2561
55895 7590 12/22/2021
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6060 CENTER DRIVE, SUITE 830
LOS ANGELES, CA 90045
EXAMINER
CHOWDHURY, RAYEEZ R
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MUNINDRA NATH CHAKRAVARTY
______________________

Appeal 2020-006648
Application 14/927,200
Technology Center 2100
____________________

Before JOHNNY A. KUMAR, JOHN A. EVANS, and JASON J. CHUNG,
Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1–4, 6–13, and 15–20, which constitute all pending claims on
appeal. Claims 5 and 14 have been cancelled. Reply Br. 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies Autodesk, Inc., as the real party in interest (Appeal Br. 1).
Appeal 2020-006648
Application 14/927,200

2
DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed invention is directed to a user interface for
navigating between components on a mobile device. Spec. ¶ 3.
Claim 1 is illustrative of the claimed subject matter:
1. A computer-implemented method for navigating
between components in a computer-aided design (CAD) mobile
drawing application, comprising:
opening a drawing in a schematic drawing view in the
CAD mobile drawing application on a mobile device, wherein:
the mobile device comprises a handheld mobile
device comprising a touch screen;
the drawing comprises multiple components;
the CAD mobile drawing application is different
from a desktop CAD application;
screen real estate on the touch screen of the mobile
device is limited relative to a desktop based device; and
the CAD mobile drawing application takes
advantage of mobile device based interaction and the
screen real estate of the mobile device via mobile device
hand gestures on the touch screen;
activating a navigation panel of the CAD mobile drawing
application on the touch screen of the mobile device, wherein:
the navigation panel enables navigation between
the components of the drawing via mobile device hand
gestures;
the navigation panel displays information about a
selected component; and
the navigation panel is a different panel from the
schematic drawing view;
selecting one of the components of the drawing in the
schematic drawing view;
in response to the selecting, displaying, within the
navigation panel on the touch screen, information about the
selected component, wherein the information is displayed using
an icon and text within the navigation panel;
Appeal 2020-006648
Application 14/927,200

3
selecting within the navigation panel, via the mobile
device hand gesture on the touch screen, an element of the
information;
utilizing the selected element as the selected component;
and
updating the navigation panel by displaying information
about the selected element.
Claims App. 1, 2.

REJECTIONS
The Examiner made the following rejections:
Claims 1–4, 9–13, and 18–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Nicol (US 2011/0214091 A1; pub. Sept 1, 2011) in
view of East (US 2015/0212698 A1; pub. July 30, 2015).
Claims 6, 7, 15, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nicol in view of East in further view of Chandhri (US
2008/0062141 A1; pub. Mar. 13, 2008).
Claims 8 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nicol in view of East in further view of Chandhri in
further view of DE (US 2015/0254373 A1; pub. Sept. 10, 2015).

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 9–
19) and Reply Brief (Reply Br. 1–10), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1–4, 6–13, and 15–20 under
35 U.S.C. § 103 as being unpatentable over the base combination of Nicol
and East, because there is not proper motivation to combine Nicol and East?
Appeal 2020-006648
Application 14/927,200

4
ANALYSIS
We have reviewed the Examiner’s rejections (see Final Act. 2–13) in
light of Appellant’s arguments that the Examiner has erred, as well as the
Examiner’s response to Appellant’s arguments in the Appeal Brief (see Ans.
3–8). Appellant’s contentions that the Examiner relies upon impermissible
hindsight to combine Nicol and East (see Appeal Br. 10–13; Reply Br. 2–4)
are persuasive. We provide the following explanation for emphasis.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see
also Metalcraft of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367
(Fed. Cir. 2017) (“Without any explanation as to . . . why the references
would be combined to arrive at the claimed invention, we are left with only
hindsight bias that KSR warns against. . . . [W]e cannot allow hindsight bias
to be the thread that stitches together prior art patches into something that is
the claimed invention.”). Further, the USPTO “must examine the relevant
data and articulate a satisfactory explanation for its action including a
rational connection between the facts found and the choice made” and that
articulation requirement “appl[ies] with equal force to the . . . motivation to
combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir.
2016). “The factual inquiry whether to combine references must be
thorough and searching and the need for specificity pervades our authority
on the . . . findings on motivation to combine.” Id. at 1381–82 (internal
quotation marks and citation omitted). When “motivation to combine . . . is
disputed,” the USPTO “must articulate a reason why a PHOSITA would
Appeal 2020-006648
Application 14/927,200

5
combine the prior art references.” Id. We will not resort to speculation or
assumptions to cure deficiencies in the Examiner’s fact finding or reasoning.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
With respect to independent claim 1, the Examiner’s explanation for
the motivation to combine Nicole and East is that “[i]t would have been
obvious to one of ordinary skill in the art before the filing date of the
invention to modify Nicol invention with the teaching of East because doing
so would result in effectively allowing the user easily and precisely selecting
an object displayed on the screen.” Final Act. 7.
Appellant contends:
Applicant further notes that while it is obvious that a
mobile device is different from a desktop computer, it is not
obvious that applications executing on the different devices
would be different, specifically CAD applications. The originally
filed specification pointed out the rationale for why the
operations on a mobile device needed to be different from that of
a desktop application (see [0004]-[0005] of the originally filed
specification)[]
. . . .
The present invention is specifically designed for
navigating on mobile devices in order to provide functionality
that is similar to that a desktop application but suitable for a
mobile device – capabilities that were not possible in the past
(see [0036]-[0048] of the originally filed specification).
In contrast to such noted differences, and the specific
rationale for why different applications are needed (between
desktop computer and mobile devices), the Office Action simply
states it would be obvious to have different applications. Such a
statement relies on impermissible hindsight only available based
on the present specification. In fact, Applicant notes that the East
application specifically describes the Bentley Navigator V8i
application as the CAD application that is being executed on the
mobile device (see East [0025]). Applicant notes that the Bentley
Navigator V8i application is not different than a desktop
Appeal 2020-006648
Application 14/927,200

6
application but instead is used on both a desktop and a mobile
device – i.e., the SAME application is used on both desktop
computers and mobile devices in Bentley.

Appeal Br. 10, 11 (emphases added).

Appellant also contends:
While the Examiner feels that such a use of different applications
would be obvious, such different applications is NOT what East
describes. In fact, East merely describes using the same
application on both mobile and desktop. Further, the Examiner's
conclusion that it would be obvious relies on impermissible
hindsight only available based on the present application. The
Examiner has failed to recite any reference that shows the use of
two different applications as required in the claims.
Reply Br. 3 (emphasis added).
We agree with Appellant (see Reply Br. 3) that East provides no
explanation or reasoning for concluding that one of skill in the art would
have modified Nicol with East to produce the claimed invention.2
Without any explanation as to how or why the references would be
combined to arrive at the claimed invention, we are left with only hindsight
bias that KSR warns against. See KSR, 550 U.S. at 421. And while we
understand that “[t]he obviousness analysis cannot be confined by a

2 “Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)).

Appeal 2020-006648
Application 14/927,200

7
formalistic conception of the words teaching, suggestion, and motivation,”
we also recognize that we cannot allow hindsight bias to be the thread
that stitches together prior art patches into something that is the claimed
invention. See KSR, 550 U.S. at 419, 421. In view of the foregoing, the
Examiner’s broadly-stated conclusion suffers from hindsight bias. See,
e.g., In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (reversing
affirmance of examiner’s obviousness determination where the Board’s
analysis “contained no explanation why or how [a skilled artisan] would
modify” the prior art to arrive at the claimed invention); In re Rouffet,
149 F.3d 1350, 1358 (Fed. Cir. 1998).
In the case before us, we find the Examiner’s logic to be conclusory
and unsupported by the evidence of record (see Final Act. 5–7; Ans. 3–6).
“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless
the prior art suggested the desirability of the modification.” Fritch, 972 F.2d
at 1266 (citing Gordon, 733 F.2d at 902). “It is impermissible to use the
claimed invention as an instruction manual or ‘template’ to piece together
the teachings of the prior art so that the claimed invention is rendered
obvious.” Fritch, 972 F.2d at 1266.
In this light, we are persuaded by Appellant’s arguments that the
Examiner employed impermissible hindsight and used knowledge gleaned
only from the present application that was not within the level of ordinary
skill at the time the claimed invention was made. See Appeal Br. 9–13;
Reply Br. 1–5; see also In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
Appeal 2020-006648
Application 14/927,200

8
In view of the foregoing, Appellant’s arguments that the Examiner
relies upon speculation and impermissible hindsight in modifying Nicol and
East (see Appeal Br. 9–13; Reply Br. 1–5) are persuasive. Because the
Examiner has not properly set forth articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness as required by
KSR (see KSR, 550 U.S. at 418) for claims 1 and 10, we are constrained by
the record to reverse the Examiner’s rejections of claims 1–4, 6–13, and 15–
20 over the base combination of Nicol and East. See Warner, 379 F.2d at
1017 (we will not resort to speculation or assumptions to cure deficiencies in
the Examiner’s fact finding or reasoning).

CONCLUSION3
For the reasons explained above, we do not sustain the rejections of
claims 1–4, 6–13, and 15–20 under 35 U.S.C. § 103 as being unpatentable
over the base combination of Nicol and East.

3 We recognize that Appellant’s arguments present additional issues (see
e.g., Appeal Br. 9–19; Reply Br. 1–10). Because we are persuaded of error
by the issue regarding impermissible hindsight, we do not reach the
additional issues. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (explaining an administrative agency is at liberty to reach a
decision based on “a single dispositive issue”).
Appeal 2020-006648
Application 14/927,200

9
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–13,
18–20
103 Nicol, East 1–4, 9–13,
18–20
6, 7, 15, 16 103 Nicol, East, Chandhri 6, 7, 15, 16
8, 17 103 Nicol, East, Chandhri,
DE
8, 17
Overall
Outcome
1–4, 6–13,
15–20

REVERSED