Dassault Systemes

Patent Trials and Appeals Board

Jun 2, 2020

14629936 - (D) (P.T.A.B. Jun. 2, 2020)

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.
14/629,936 02/24/2015 Jean Hong 4201.1119-000 3710
21005 7590 06/02/2020
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
MAZUMDER, SAPTARSHI
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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.department@hbsr.com
helpdesk@hbsr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN HONG, MANFRED KÖHLER, LAURA PEYTHIEUX,
CHRISTOPHE BOYER, FRÉDÉRIC LETZELTER,
ROBERT BERAUD, and MATHIEU GUNTHER
____________

Appeal 2019-002381
Application 14/629,936
Technology Center 2600
____________

Before ERIC S. FRAHM, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Jurisdiction
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1–17 all pending claims. Appeal Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant states the real party in interest is
Dassault Systemes. Appeal Br. 3.
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Application 14/629,936

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We REVERSE.2
Summary of the Invention
The claims relate to a computer-implemented method for designing a
three dimensional modeled object in a three dimensional scene. See
Abstract.
Invention
Claims 1, 11, and 12 are independent. Appeal Br. 5. An
understanding of the invention can be derived from a reading of Claim 1,
which is reproduced in Table 1, infra.
References
Name Publication Number Date
Krishnan US 2008/0030500 A1 Feb. 7, 2008
Shimada US 2009/0284550 A1 Nov. 19, 2009
Joshi US 2013/0127836 A1 May 23, 2013
Bandyopadhyay US 2015/0354965 A1 Filed June 12, 2013

Eggli L, et al., Inferring 3D models from freehand sketches and constraints,
29(2) Computer-Aided Design, 101–112 (1997).

2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed August 28, 2018, “Appeal Br.”), ?), the
Reply Brief (filed January 29, 2019, “Reply Brief”), the Examiner’s Answer
(mailed November 29, 2018, “Ans.”), the Non-Final Action (mailed January
30, 2018, “Non-Final Act.”), and the Specification (filed February 24, 2015,
“Spec.”) for their respective details.
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Qin SF, Wright DK, Jordanov IN, From on-line sketching to 2D and 3D
geometry: a system based on fuzzy knowledge, 32 Computer-Aided Design,
851–866 (2000).
Heckbert PS, Garland M, Survey of Polygonal Surface Simplification
Algorithms, Carnegie-Mellon Univ., Pittsburgh Pa, School Of Computer
Science, 1997.
Rejections3
Claims Rejected 35 U.S.C. § References/Basis
1–17 101 Ineligible Subject Matter;
Non-Final Act. 3–9.
1, 2, 4–10, 13–17 103 Eggli, Qin, Joshi;
Non-Final Act. 10–25.
3 103 Eggli, Qin, Joshi, Shimada;
Non-Final Act. 25–26.
11 103 Eggli, Qin, Joshi, Krishnan,
Heckbert;
Non-Final Act. 27–30.
12 103 Eggli, Qin, Joshi, Krishnan,
Heckbert, Bandyopadhyay;
Non-Final Act. 30–31.

ANALYSIS
We have reviewed the rejections of Claims 1–17 in light of
Appellant’s arguments that the Examiner erred. We consider Appellant’s
arguments as they are presented in the Appeal Brief and the Reply Brief.
CLAIMS 1–17: INELIGIBLE SUBJECT MATTER

3 The Application was examined under the AIA first inventor to file
provisions. Non-Final Act. 2.
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Appellant argues the merits of the claims as a group with reference to
the limitations of Claim 1. See Appeal Br. 15. Therefore, we decide the
appeal of the § 101 rejection on the basis of illustrative Claim 1 and refer to
the rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
Based upon our review of the record in light of recent policy guidance with
respect to patent-eligible subject matter rejections under 35 U.S.C. § 101,4
we reverse the rejection of Claims 1–17 for the specific reasons discussed
below.
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes “[l]aws of nature,
natural phenomena, and abstract ideas” from the realm of patent-eligible
subject matter, as monopolization of these “‘basic tools of scientific and
technological work’” would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)); see also Mayo Collaborative Servs. v. Prometheus Labs.,

4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
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Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450 U.S. 175, 185
(1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellant’s claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental
processes), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of whether the claim:
3. adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
4. simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

A. Whether the claims recite a judicial exception
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract-idea
exception includes the following groupings of subject matter:
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(a) mathematical concepts,5 i.e., mathematical relationships, mathematical
formulas, equations,6 and mathematical calculations7; (b) certain methods of
organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions)8; and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).9
The preamble of independent Claim 1 recites: “A computer-implemented
method for designing a three dimensional modeled object in a three

5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
6 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
7 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas).
8 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see Revised Guidance, at 52 n.13 for a more extensive listing of
“[c]ertain methods of organizing human activity” that have been found to be
abstract ideas.
9 Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work’” (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
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dimensional scene in a system of computer-aided design (CAD), computer-
aided manufacturing (CAM) or computer aided engineering (CAE), wherein
the method comprises the steps of.” The limitations recited in the body of
the claim are analyzed in Table I against the categories of abstract ideas as
set forth in the Revised Guidance. As set forth in Table I below, we find
limitations [b] through [g] of independent Claim 1 recite abstract ideas, i.e.,
“mathematical concepts” and “mental processes.”
Table I
Claim 1 Revised Guidance
[a]10 providing a first curve in the
three dimensional scene;

An additional element that adds
insignificant extra-solution activity
to the judicial exception, i.e., mere
data-gathering. See Revised
Guidance 55.
[b] duplicating the first curve to
obtain a second curve in the three
dimensional scene;

Mathematical concepts, i.e.,
mathematical relationships,
mathematical formulas or equations,
mathematical calculations; See
Revised Guidance at 52.
[d] automatically, by a processor,
determining a set of at least one
starting point belonging to the first
curve;
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance at 52.11

10 Step designators, e.g., “[a],” were added to facilitate discussion.
11 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith the
exception of generic computer-implemented steps, there is nothing in the
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[e] automatically, by the processor,
determining a set of at least one
target point belonging to the second
curve, each target point being
associated at least one starting
point;

Mental processes.
[f] linking the relevant points with
their associated target points by
using at least a connecting curve;
Mental processes.
[g] applying at least a
transformation to the second curve,
this transformation being chosen
among axis rotation and stretching,
the transformation generating, by
the processor, a three dimensional
modeled object in the three
dimensional scene including the
first curve, the second curve, and
the connecting curve displaying the
three-dimensional modeled object
having the first curve, second curve,
and connecting curve in the CAD,
CAM, or CAE system.
Mathematical concepts.

claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.’’); Versata Dev. Grp. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.’’).

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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the “practical application” Step 2A(ii) wherein the “claims are
considered in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quotes and citation
omitted). This test determines whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
The Examiner finds the independent claims “correspond[]” to the
abstract idea of a mathematical relationship or formula in view of their
curve-generation limitations. Non-Final Act. 4. In view of limitations [b]
and [g], we agree the claims at least recite a mathematical relationship. The
Examiner further finds the claims correspond to an “idea of itself” because
the claims perform geometric operations which can be performed by a
human with pen and paper. Id. (citing Gottschalk v. Benson, 409 U.S. 63
(1972)).
Claim 1 recites, inter alia, “designing a [3D] modeled object in a [3D]
scene . . . in a [CAD, CAE, or CAM system].” Appellant contends a human
could not perform the claimed geometric operations inside a CAD/CAM 3D-
scene. Appeal Br. 14. Appellant argues the Examiner’s determination
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ignores the fact that a human, with pen and paper, cannot designed a 3D
modeled object within a 3D scene. Id.
The Examiner finds “generating a 3d model is an abstract idea
because generating a 3d model requires some input lines/curves and these
input lines/curves are organized to build a 3d model, which is a
mathematical or geometrical problem and a person can perform this using
pen and paper. Ans. 11.
Appellant contends the “recited practical application is more than a
drafting effort, as the recited ‘first curve’ and ‘second curve’ are recited to
be “in the three dimensional scene.” Reply Br. 3.
The question before us is whether the Examiner’s “pen and paper”
analogy is well-founded. See Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.’’). A sheet of paper is a two-dimensional surface having an area, but
lacking a three-dimensional volume. The rules of drawing allow us to
imagine what is drawn in the two dimensions of the paper exists in three-
dimensional space, but that is our imagination.
In SiRF Tech.12 the claims included limitations to, inter alia,
“calculating an absolute position of a GPS receiver,” “computing absolute
position,” and updating an “estimate of position of the GPS receiver.” SiRF
Tech., at 1332. In the abstract, “calculating,” “computing,” and “estimating”

12 SiRF Technology, Inc. v. International Trade Com’n, 601 F.3d 1319
(2010).
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are mental process involving mathematical concepts. However, the Federal
Circuit found:
We are not dealing with a situation in which there is a method
that can be performed without a machine. Contrary to
appellants’ contention, there is no evidence here that the
calculations here can be performed entirely in the human mind.
Here, as described, the use of a GPS receiver is essential to the
operation of the claimed methods.
SiRF Tech., at 1333. Similarly, we find the claimed 3D rendering cannot be
performed by a human on a 2D surface.
In Research Corp., 13 the Court observed that the claimed methods
incorporate algorithms and formulas that control the process for rendering a
halftone image, but that the claimed algorithms and formulas which form a
significant part of the claimed combination, do not bring this invention even
close to the degree of abstractness that would override the statutory
categories and context. Research Corp., at 869. The instant application
claims a method for rendering and “displaying [a] three-dimensional
modeled object having the first curve, second curve, and connecting curve in
the CAD, CAM, or CAE system.” Similarly, we find the mathematical
concepts which underlie the claimed invention “do not bring this invention
even close to abstractness that would override the statutory categories and
context.” Research Corp., at 869.
In view of the foregoing, we conclude that Appellant’s claims do, in
fact, integrate the judicial exception into a practical application. We,

13 Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859
(2010).
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therefore, decline to sustain the rejection of Claims 1–17 under 35 U.S.C. §
101.

CLAIMS 1–17: OBVIOUSNESS OVER EGGLI, QIN,
AND VARIOUS SECONDARY REFERENCES
Appellant argues the merits of the claims as a group with reference to
the limitations of Claim 1. See Appeal Br. 13. Therefore, we decide the
appeal of the § 103 rejection on the basis of illustrative Claim 1 and refer to
the rejected claims collectively herein as “the claims.” See 37 C.F.R. §
41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Duplicating the first curve to obtain a second curve.
Claim 1 recites, inter alia, “providing a first curve in the three
dimensional scene; duplicating the first curve to obtain a second curve in the
three dimensional scene.”
The Examiner finds Eggli teaches a first curve, in a bold line,
duplicated into a second curve, in a light line. Non-Final Act. 12 (citing
Eggli, Fig. 11). The Examiner finds Eggli is silent regarding determining
one starting point and one target point by a processor. Id. The Examiner
finds Qin teaches determining a starting point, i.e., a corner point, and a
target point, i.e., a corner point of a different curve. Id. Thus, the Examiner
finds “one point of a curve is the claimed starting point and starting point of
another curve is the target point.” Non-Final Act. 12.
Appellant contends Qin teaches a method that segments a single curve
and finds corner points and inflection points of a single curve instead of
points on the claimed first and second curve. Appeal Br. 11. Appellant
argues the combination of Eggli and Qin does not teach or suggest the
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claimed “linking the relevant points with their associated target points by
using at least a connecting curve” because the points of Qin are the points of
a same curve. Id.
The Examiner finds Qin segments a 2d curve and where a curve is
segmented at least two curves are created. Ans. 5. The Examiner finds
Eggli teaches the claimed “linking the relevant points with their associated
target points by using at least a connecting curve.” Ans. 6.
Appellant contends Qin’s segmentation method finds corner and
inflection points in the same 2D curve, instead of separate first and second
curves as recited in Claim 1. Appeal Br. 11. Appellant argues:
It is unclear how this combination is compatible with Appellant’s
Claim 1, which recites “duplicating the first curve to obtain a
second curve” and “automatically ... determining a set of at least
one target point belonging to the second curve.” Instead, such a
combination divides one curve, as disclosed in Qin, to reach two
independent curves, and therefore, the resulting combination is
distinct from Appellant’s Claim 1.”
Reply Br. 2.
Even if we were to accept, arguendo, Qin’s teaching of segmenting a
first curve into first and second curves, the “second” curve thereby produced
is not a duplication of a first curve, as claimed. Therefore, any “target” point
found on the “second” curve would not be a point of a curve that is
duplicative of the claimed first curve. The Examiner finds Joshi is not used
to rejecting the argued limitation, nor does the Examine apply any of the
secondary references against this limitation. Ans. 6. Thus, we find the
claimed limitation is not taught by the prior art. In view of the foregoing, we
decline to sustain the rejection of Claims 1–17 under 35 U.S.C. § 103.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 101 Eligibility 1–17
1, 2, 4–10,
13–17
103 Eggli, Qin, Joshi, -- 1, 2, 4–10,
13–17
3 103 Eggli, Qin, Joshi,
Shimada
-- 3
11 103 Eggli, Qin, Joshi,
Krishnan, Heckbert
-- 11
12 103 Eggli, Qin, Joshi,
Krishnan, Heckbert,
Bandyopadhyay
-- 12
Overall -- 1–17

REVERSED