Ex Parte Baran et al

Patent Trial and Appeal Board

Apr 18, 2017

13585383 (P.T.A.B. Apr. 18, 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.
13/585,383 08/14/2012 Ilya BARAN DISN/0115 (053292) 2611
77754 7590 04/20/2017
DISNEY ENTERPRISES, INC.
c/o Patterson & Sheridan, LLP
24 Greenway Plaza
Suite 1600
Houston, TX 77046-2472
EXAMINER
JONES, HUGH M
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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):
PAIR_eOfficeAction@pattersonsheridan.com
PS Docketing @ pattersonsheridan .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ILYA BARAN, LINJIE LUO,
and WOJCIECH MATUSIK
Appeal 2016-007695
Application 13/585,3831
Technology Center 2100
Before MICHAEL J. STRAUSS, IRVIN E. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—6, 8—15, and 17—20.2 Wehavejurisdictionunder35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
Technology
The application relates to “recursively partitioning a 3D model of an
object into two or more components such that each component fits within a
predefined printing volume.” Spec. Abstract.
1 According to Appellants, the real party in interest is Disney Enterprises,
Inc., a subsidiary of The Walt Disney Company. App. Br. 3.
2 Independent claims 7 and 16 were indicated as allowable. Final Act. 13.
Appeal 2016-007695
Application 13/585,383
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A computer-implemented method for recursively partitioning
a 3D model of an object into two or more components such that
each component fits within a predefined printing volume,
comprising:
determining, via one or more processors, a set of planar
cuts, wherein each planar cut partitions the 3D model into at least
two components;
evaluating one or more objective functions for each cut in
the set of planar cuts;
selecting a cut from the set of planar cuts based on the
evaluations of the objective functions; and
upon determining that one or more of the at least two
components resulting from the selected cut does not fit within the
predefined printing volume, further partitioning the one or more
components that do not fit within the predefined printing volume.
Rejection
Claims 1—6, 8—15, and 17—20 stand rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Xin et al., Making Burr Puzzles from 3D
Models, ACM Transactions on Graphics, Vol. 30, No. 4, Article 97 (2011);
Medellin et al., Automatic Subdivision and Refinement of Large Components
for Rapid Prototyping Production, 7 J. Computing & Info. Sci. in Eng’g 249
(2007); Nguyen et al., Best Cuts of a Set of Hyperrectangles (Extended
Abstract), 9th Euro. Workshop on Computational Geometry CG ’93, pp. 1—5
(1993); and known practices in the art. Final Act. 2.3
3 The rejection under 35 U.S.C. § 102 was withdrawn. Ans. 3.
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Application 13/585,383
ISSUE
Did the Examiner err in finding the combination of Xin and Medellin
teaches or suggests “upon determining that one or more of the at least two
components resulting from the selected cut does not fit within the predefined
printing volume, further partitioning the one or more components that do not
fit within the predefined printing volume,” as recited in claim 1 ?
ANALYSIS
The Examiner relies on the combination of Xin and Medellin for
teaching the “upon determining” step in independent claims 1,11, and 19.
Ans. 10-12; Final Act. 7—8. However, we agree with Appellants that
“Medellin subdivides a component using a ‘regular 3D lattice.’” Reply Br. 9
(emphasis omitted). This 3D lattice “allows the component to be subdivided
into multiple pieces ... in one step,” as “shown in, e.g., Medellin figure
4(a).” Id. (emphasis added, original emphasis omitted). Thus, Medellin
selects and performs multiple simultaneous cuts once, whereas the claims
require selecting one cut, determining if further partitioning is necessary,
and performing further partitioning. See Medellin 251, Fig. 4(a).
The Examiner has not sufficiently explained whether or how Xin
cures this deficiency in Medellin. See Final Act. 7; Ans. 11—12.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1,11, and 19, and their dependent claims 2—6, 8—10, 12—
15, 17, 18, and 20.
REJECTION UNDER 37 C.F.R. § 41.50(b)
Using our authority under 37 C.F.R. § 41.50(b), independent claims 1,
11, and 19 are rejected in a new ground of rejection under 35U.S.C. § 101.
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Application 13/585,383
Section 101 defines patentable subject matter. However, the Supreme
Court has “long held that this provision contains an important implicit
exception” that “[l]aws of nature, natural phenomena, and abstract ideas are
not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 70 (2012) (quotation omitted). To determine patentable subject
matter, the Supreme Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014).
For computer-related technologies, “the first step . . . asks whether the focus
of the claims is on the specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool,” such as “adding
conventional computer components to well-known business practices.”
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335—36, 1338 (Fed. Cir.
2016). “[T]he claims are considered in their entirety to ascertain whether
their character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Here, we find that independent claims 1,11, and 19 are directed to the
abstract idea of determining how to divide a three-dimensional object into
smaller pieces to fit within a given three-dimensional volume. Spec. 11
(“this disclosure presents techniques to partition 3D objects into smaller
components so that each component can be printed by a 3D printer having
limited printing volume”), Abstract. We therefore proceed to the next step.
In the second step of the Alice/Mayo framework, we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
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Application 13/585,383
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78). The Supreme Court has “described step two of this
analysis as a search for an inventive concept—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the ineligible concept
itself.” Id. (quotation omitted). For computer-related technology, a claim
may pass the second step if “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology].” DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
Here, we cannot say that either the problem or the solution is rooted in
computers. For example, the same problem of how to divide a 3D object
would be faced by a human chef deciding how to cut leftover brisket or ham
to fit into smaller storage containers. Likewise, the solution to keep cutting
until all pieces are small enough to fit applies equally to the human chef.
Thus, whether in the kitchen or a 3D printer, how to divide a large object to
fit into smaller volumes is not specific to computers.
Limiting the claims to 3D printing does not rescue them from § 101.
As the Supreme Court has said, “limiting the use of an abstract idea to a
particular technological environment” cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358
(quotation omitted); Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1259 (Fed. Cir. 2016).
Similarly, “the mere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134
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S. Ct. at 2358. Here, the claims do no more than recite generic computer
components performing their ordinary function. For example, a memory
(claim 19) or storage medium (claim 11) are merely used to store a program
(i.e., what a memory normally does); the processor only is used for
“determining, via one or more processors, a set of planar cuts,” but the
claims provide no guidance or limitation on how the processor determines
that set of cuts or why a human could not make that same determination; and
the 3D printer is not used at all other than providing a “volume” that the
resulting components need to fit within. Thus, “with 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.” Intellectual Ventures ILLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016).
To the contrary, in the Background section of the Specification, the
“Description of the Related Art” expressly states, “One approach to printing
objects that do not fit within a given printing volume is for a user to
manually partition 3D models of those objects. The 3D printer then prints
the components resulting from the manual partitioning.” Spec. 13
(emphasis added). Thus, the Specification recognizes that manual
partitioning of 3D objects was known. That same paragraph goes on to
explain that “manual partitioning is often a laborious process which does not
guarantee that resulting components can be assembled, that the partitioned
components can be printed, or that the components, once printed and/or
assembled, will be structurally sound.” Id. However, no limitation in claims
1, 11, or 19 necessarily avoids the problems described for manual
partitioning. For example, nothing in the claimed method recites a new
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technique guaranteeing structurally sound components capable of being
printed and assembled. “[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012). Thus, aside
from generic computer components, claims 1,11, and 19 attempt to preempt
and claim a process that the Specification recognizes can be done manually.
We therefore reject claims 1,11, and 19 under 35 U.S.C. § 101 for
being directed to unpatentable subject matter.
Although we have rejected some claims under 37 C.F.R. § 41.50(b),
we have not reviewed the remaining claims to the extent necessary to
determine whether those claims are unpatentable for similar reasons. We
leave it to the Examiner to determine the appropriateness of any further
rejections based thereon.
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 1—6, 8—15, and 17—20.
In a new ground of rejection, we reject independent claims 1,11, and
19 under 35 U.S.C. § 101.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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Application 13/585,383
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
REVERSED:
37 C.F.R, $ 41.50(B)
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