Ex Parte Diguet et al

Patent Trial and Appeal Board

Jul 30, 2018

13948142 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/948,142 07/22/2013 Michael Diguet
21005 7590 08/01/2018
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
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.
4201.1081-000 9151
EXAMINER
MOLL, NITHYA JANAKIRAMAN
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
docketing.department@hbsr.com
helpdesk@hbsr.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DIGUET, MARIEM EL HANNAOUI and
ERWANVALLEE
Appeal2018-002047
Application 13/948, 142
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY,Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4---6, 8, and 10-15. Claims 2, 3, and 7 are cancelled. Claim 9 is
objected to by the Examiner. Final Act. 11. We have jurisdiction under 35
U.S.C. § 6(b).
We Affirm.
Appeal2018-002047
Application 13/948, 142
STATEMENT OF THE CASE
Appellants' claimed invention "relates to a computer-implemented
method for easing the design of a product." (Spec. if2).
Representative Claim
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A computer-implemented method of designing a product,
the product being composed of an assembly of components
organised hierarchically in a product tree, the method comprising
the steps of:
providing a graphical representation of the product;
initially selecting a first component on said graphical
representation of the product;
providing a graphical representation of the product tree;
determining a path comprising the product tree's
components located between the root of the product tree and the
initially selected first component;
selecting a single candidate second component by
scrolling sequentially through the path using a scrolling device
in order to select the single candidate second component among
the path's components;
activating at least one design functionality required for
modifying the selected single candidate second component; and
modifying the selected single candidate second
component using the activated design functionality, resulting in
formation of a design of the product.
Disputed limitations italicized. (Appeal Br. Claims Appendix, 17).
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Rejecti ans 1
A. Claims 1, 4---6, 10, and 15 are rejected under 35 U.S.C. § 103(a)
based upon the combined teachings and suggestions of Radet et al.,
(US 2011/0141109 Al; published June 16, 2011) (hereinafter
"Radet"), in view ofLadin et al., (US 2009/0064076 Al; publ.
Mar. 5, 2009) (hereinafter "Ladin"). See Final Act. 4--9.
B. Claim 8 is rejected under 35 U.S.C. § 103(a) based upon the
combined teachings and suggestions of Rad et, Ladin, and
Rosenberg et al., (US 6,128,006; iss. Oct. 3, 2000) (hereinafter
"Rosenberg"). See Final Act. 9.
C. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Radet, Ladin, and
Bisset et al. (US 5,825,352; iss. Oct. 20, 1998) (hereinafter
"Bisset"). See Final Act. 10-11.
Grouping of Claims
Based upon Appellants' arguments, we decide the appeal of
Rejection A of claims 1, 4---6, 10, and 15 on the basis of representative
independent claim 1. See37 C.F.R. §4I.37(c)(l)(iv). We address
RejectionB of claim 8 and Rejection C of claims 13 and 14 separately,
infra. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
1 Henceforth, we refer to the Specification, filed July 22, 2017 ("Spec.");
Final Office Action, mailed Dec. 28, 2016 ("Final Act."); Appeal Brief, filed
July 25, 2017 ("App. Br."); Examiner's Answer, mailed Oct. 20, 2017
("Ans."); and the Reply Brief, filed Dec. 19, 2017 ("Reply Br.").
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See 37 C.F.R. §4I.37(c)(l)(iv).
ANALYSIS
Issue: Under§ 103, did the Examiner err by relying upon
impermissible hindsight in providing a rationale to modify Radet with the
teachings ofLadin?
Appellants contend, inter alia, the Examiner's proposed combination
ofRadet and Ladin is improper, because "the Office attempts to piece
together Radet' s alleged teaching of' selecting all candidate components'
and Ladin's disclosure of 'sequential scrolling through a path of levels of
design' in order to reconstruct the aforementioned claim feature through
hindsight." App. Br. 10. Appellants further urge that combining the cited
references "would require a substantial and non-obvious change in the
function and purpose of [ these references]." App. Br. 13. Appellants further
contend: "[ n ]either reference suggests selecting a single component from the
hierarchyoflevels." App. Br. 11.
We are cognizant that our reviewing courts have not established a
bright-line test for hindsight. Prior to KSR International Co. v. Teleflex,
Inc., 550 U.S. 398 (2007), the Federal Circuit guided that"[ e ]ven when
obviousness is based on a single prior art reference, there must be a showing
of a suggestion or motivation to modify the teachings of [the] reference."
In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
In KSR, the U.S. Supreme Court guides that "[a] factfmder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning." KSR, 5 5 0 U.S. at 4 21
(citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
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The Supreme Court also qualified the issue of hindsight by stating: "[ r ]igid
preventative rules that deny factfinders recourse to common sense, however,
are neither necessary under our case law nor consistent with it." Id.
KSR guides that to be nonobvious, an improvement must be "more than the
predictable use of prior art elements according to their established
functions." KSR, 550 U.S. at 417.
More recently, the Federal Circuit provided additional guidance to the
Board, cautioning against an overly expansive application of common sense:
Absent some articulated rationale, a finding that a combination
of prior art would have been "common sense" or "intuitive" is no
different than merely stating the combination "would have been
obvious." Such a conclusory assertion with no explanation is
inadequate to support a fmding that there would have been a
motivation to combine. This type offmding, without more, tracks
the ex post reasoning KSR warned of and fails to identify any
actual reason why a skilled artisan would have combined the
elements in the manner claimed. See 550 U.S. at 418,421, 127
S.Ct. 1727.
In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017).
Here, the Examiner fmds Radet teaches all that is claimed, except the
disputed "selecting a single candidate second component by ... scrolling
sequentially" limitation ( claim 1 ). See Final Act. 6. The Examiner fmds
Ladin teaches this limitation. Final Act. 6-7. The Examiner fmds both
Ladin and Radet are analogous art; therefore, it would have been obvious to
one of ordinary skill in the art at the time the invention was made to add
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Ladin's teachings to Radet's method for "an easy interface to allow the user
to traverse design hierarchies." Final Act. 7. 2
The Examiner buttresses these findings in the Answer by finding
Radet' s step of selecting a level ( among levels identified in the simple path
in the hierarchy using an interactive graphical tool) teaches or at least
suggests the contested step of "selecting a single candidate second
component by scrolling sequentially through the path using a scrolling
device," as recited in claim 1. See Ans. 3--4.
Although Appellants assert the Examiner has relied upon
impermissible hindsight in formulating the rejection, no evidence is
provided in support. 3 In particular, Appellants have not provided objective
evidence of secondary considerations (e.g., unexpected results, long-felt but
2 The Examiner's articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977,988 (Fed. Cir. 2006). The Supreme Courtreaffrrmed:
'" [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, 550 U.S. at 418 ( quoting Kahn, 441 F .3d at 988).
3 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. InreGeisler, 116F.3d1465, l470(Fed.Cir. l997);seealsoinre
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). Thus, counsel's arguments cannot take the place of factually
supported objective evidence. See In re Huang, 100 F.3d 135, 139--40 (Fed.
Cir. 1996). See also Manual of Patent Examining Procedure (MPEP) § 2145
(9th ed. Nov. 2015) ("Attorney argument is not evidence unless it is an
admission, in which case, an examiner may use the admission in making a
rejection.").
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unmet need, commercial success), which "operates as a beneficial check on
hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
725 F.3d 1341, 1352 (Fed. Cir. 2013). Nor do Appellants provide any
evidence that the elements taught by the cited references are anything other
than elements which would have been familiar to artisans of ordinary skill at
the time of the invention. 4
The Supreme Court guides: "a combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR, 550 U.S. at 401. Moreover,
substitution of components does not destroy the principle of operation where
it does not destroy the overall principle of operation of the device. In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Appellants' challenge to the references individually (App. Br. 10-12,
Reply Br. 2---6) is not convincing of error in the Examiner's legal conclusion
of obviousness, because all of the features of the secondary reference need
not be bodily incorporated into the primary reference. Consideration should
be given to what the combined teachings, knowledge of one of ordinary skill
in the art, and the nature of the problem to be solved as a whole would have
suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d
413,425 (CCP A 1981). The artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
4 "The person of ordinary skill in the art ['PHOSITA'] is a hypothetical
person who is presumed to know the relevant prior art." In re GPAC, 57
F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-
Allanindus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
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independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F .2d
881,889 (Fed. Cir. 1984).
The Supreme Court provides additional guidance that the conclusion
of obviousness can be based on the interrelated teachings of multiple
patents, the effects of demands known to the design community or present in
the marketplace, and the background knowledge possessed by a person
having ordinary skill in the art, and an obviousness "analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR, 550 U.S. at 418.
See alsoDystar Textilfarben GmbH & Co. DeutschlandKGv. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Further, Appellants have not provided persuasive evidence that
combining the respective teachings of Radet and Ladin ( as proffered by the
Examiner - Final Act. 7, Ans. 2---6) would have been "uniquely challenging
or difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Appellants have not identified 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 In re McLaughlin, 443 F.2d 1392
(CCPA 1971).
Applying this reasoning here, and based upon our review of the
record, we fmd the Examiner set forth sufficient articulated reasoning with
rational underpinnings to support the proposed combination of Radet and
Ladin. See Final Act. 4---6, Ans. 2---6. Further, we fmd the Examiner
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provided sufficient evidence of a predictable result from combining the
familiar elements of Radet and Ladin, which we find outweighs any
purported indicia of impermissible hindsight.
We are also not persuaded by Appellants' additional argument that
combining the cited references would require a substantial and non-obvious
change in the function and purpose of these references.
As explained in KSR, 550 U.S. at 420, it is error to assume that a
person of ordinary skill attempting to solve a problem will be led only to
those elements of the prior art designed to solve the same problem. Rather,
[ c ]ommon sense teaches ... that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person
of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle .... A person of ordinazy
skill is also a person of ordinary creativity, not an automaton.
Id. at 420-21. See also KSR at 419: "[NJ either the particular motivation nor
the avowed purpose of the [ Appellant] controls" in an obviousness analysis."
Our reviewing court further guides it is irrelevant that the prior art and
the present invention may have different purposes. See Nat 'l Steel Car, Ltd.
v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A
finding that two inventions were designed to resolve different problems ...
is insufficient to demonstrate that one invention teaches away from
another."). It is sufficient that references suggest doing what Appellants did,
although the Appellants' particular purpose was different from that of the
references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re
Gershon, 372 F.2d 535,539 (CCPA 1967)). Thus, for a prima facie case of
obviousness to be established, the reference need not recognize the same
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problem solved by the Appellant. See In re Kemps, 97 F .3d 1427, 1430 (Fed.
Cir. 1996).
On this record, we find Appellants have not shown that the invention
as recited in claim 1 is "more than the predictable use of prior art elements
according to their established functions" so as to be non-obvious under the
guidance of KSR, 550 U.S. at 417. Therefore, for the reasons discussed
above, Appellants have not provided arguments supported by a
preponderance of the evidence to persuade us the Examiner erred.
Accordingly, for essentially the same reasons articulated by the
Examiner, we sustain the Examiner's rejection A of representative
independent claim 1. Grouped claims 4---6, 10, and 15 (not separately
argued) fall with claim 1. See Grouping of Claims, supra.
Rejection B of Dependent Claim 8
Regarding claim 8, Appellants contend:
Rosenberg's interface device with a "rotatable wheel having
force feedback" fails to cure the deficiencies of the proposed
combination ofRadet and Ladin as argued above. The combined
art, with Rosenberg's interface device, does not teach or suggest
Appellant[s'] claimed ''selecting a single candidate second
component by scrolling sequentially through [a} path using a
scrolling device in order to select the single candidate second
component among the path's components, "where the path is of
the product tree (i.e., "comprising the product tree's
components") separate and distinct from the claimed graphical
representation of the product. As such, Appellants respectfully
submit[] that Claim 8, which depends from independent Claim
1, includes the same elements as the claim from which it
depends, and the Office has erroneously applied the combined
art to support an obviousness rejection of Claim 8 at least for the
same reasoning as presented above.
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App. Br. 15.
However, we fmd no deficiencies regarding the base combination of
Radet and Ladin, for the same reasons discussed above regarding rejection A
of claim 1. Therefore, we sustain the Examiner's rejection B of claim 8.
Rejection C of Dependent Claims 13 and 14
Regarding the rejection of claims 13 and 14, Appellants similarly
contend:
Bisset's "[m]ethod and apparatus for detecting an operative
coupling between one or more fmgers" fails to cure the
deficiencies of the proposed combination of Radet and Ladin as
argued above. The combined art, with Bisset's method and
apparatus, does not teach or suggest Appellant[ s '] claimed
''selecting a single candidate second component by scrolling
sequentially through [a] path using a scrolling device in order
to select the single candidate second component among the
path's components. "As such, Appellant[ s] respectfully submit[]
that Claims 13 and 14, which depends from independent Claim
1, include[ s] the same elements as the claim from which it
depends, and the Office has erroneously applied the combined
art to support an obviousness rejection of Claims 13 and 14 at
least for the same reasoning as presented above.
App. Br. 15-16.
However, we fmd no deficiencies regarding the base combination of
Radet and Ladin, for the same reasons discussed above regarding rejection A
of claim 1. Therefore, we sustain the Examiner's rejection C of claims 13
and 14.
Conclusion
The Examiner did not err in rejecting claims 1, 4---6, 8, and 10-15
under35 U.S.C. § 103(a).
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DECISION
We affrrm the Examiner's rejections of claims 1, 4---6, 8, and 10-15
under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(±).
AFFIRMED
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