Ex Parte Fousek et al

Board of Patent Appeals and Interferences

Oct 5, 2009

10104045 (B.P.A.I. Oct. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL P. FOUSEK, BRADLEY N. WYCKHOUSE,
BETTY SUNG HUANG, and JAMES DARROW LINDER
____________________

Appeal 2009-004549
Application 10/104,045
Technology Center 2100
____________________

Decided: October 5, 2009
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and DEBRA K. STEPHENS,
Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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STATEMENT OF THE CASE
Introduction
According to Appellants, the invention is related to techniques for
developing and using custom drawing symbols in a computer-aided drawing
system (Spec. 1: ll. 1-2). Custom drawing symbols are created (Abstract).
These custom drawing symbols include geometric data created using the
system, and notes of different data types (id.). A user interface is
automatically generated and supports a variety of data types for the notes
(id.).

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A computer-implemented method for creating a user interface for a
drawing system, the method comprising:

receiving a symbol with at least one associated note,

receiving data defining each note included in the received symbol, and

automatically generating a symbol instance user interface to permit a
user to create a symbol instance, the symbol instance user interface being
generated based on the data defining each note.

Prior Art
Bhargava US 6,219,055 B1 Apr. 17, 2001
Bigelow US 6,647,305 B1 Nov. 11, 2003
(filed Jun. 19, 2000)

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Rejections
Claims 1-3, 6, 10-13, 16, 18-21, 24, 28-31, 34, and 36-38 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Bhargava.
Claims 8, 9, 17, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bhargava.
Claims 4, 5, 7, 14, 15, 17, 22, 23, 25, 26, 32, 33, and 35 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Bhargava and
Bigelow.1

GROUPING OF CLAIMS
(1) Appellants argue claims 1-3, 6, 10-13, 16, 18-21, 24, 28-31, 34,
and 36-38 as a group based on arguments set forth for independent claim 1
(App. Br. 3-7, § (7) a.). We will, therefore, treat claims 1-3, 6, 10-13, 16,
18-21, 24, 28-31, 34, and 36-38 as standing or falling with representative
claim 1.
(2) Appellants argue claims 8, 9, 17, and 27 as a group based on the
arguments set forth for independent claim 1 (App. Br. 8, § (7) b.). We will,

1 We note that both Appellants’ headings in the Appeal Brief titled
“Substitute Supplemental Brief on Appeal” filed February 25, 2008 (App.
Br. 3, §(6) c.) and App. Br. 8, §(7) c.) and the Examiner’s headings in the
Answer filed April 7, 2008 (Ans. 6, §(9)) mistakenly include claim 27 in
heading for the rejection under 35 U.S.C. § 103(a) as being unpatentable
over Bhargava and Bigelow. Claim 27 was not addressed in this section but
instead, was addressed in the rejection under 35 U.S.C. § 103(a) as being
unpatentable over Bhargava.
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therefore, treat claims 8, 9, 17, and 27 as standing or falling with
independent claim 1.
(3) Appellants argue claims 4, 5, 7, 14, 15, 17, 22, 23, 25, 26, 32, 33,
and 35 as a group based on the arguments set forth for independent claim 1
(App. Br. 8, § (7) c.). We will, therefore, treat claims 4, 5, 7, 14, 15, 17, 22,
23, 25-26, 32, 33, and 35 as standing or falling with independent claim 1.
We accept Appellants’ grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).

ISSUES
35 U.S.C. § 102(a): independent claim 1 and dependent claims 2, 3, 6, 10,
and 37
Appellants argue Bhargava does not describe, in the cited portions or
anywhere else, “automatically generating a symbol instance user interface to
permit a user to create a symbol instance, the symbol instance user interface
being generated based on the data defining each note included in the
received symbol” as recited in claim 1 (App. Br. 4, § (7) a.). Rather,
Appellants contend, Bhargava merely discloses a user interface for
manipulating features of a model or symbol to make corresponding changes
to the model or symbol (App. Br. 4-5, § (7) a.). Appellants contend neither
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Bhargava nor the Examiner differentiates between a symbol and a symbol
instance (App. Br. 5, § (7) a. and Reply 1-2).
In response, the Examiner maintains Bhargava indicates a symbol is
created in accordance with data values defined/included in the notes (Ans. 7,
§(10)). The Examiner finds that once the symbol and its associated notes or
data values are created and saved, when the symbol is retrieved later, the
associated data values would need to be included in the notes of the symbol
could be generated properly for display in the window (Ans. 8, §(10)).

Issue: Have Appellants met the burden of showing the Examiner
erred in finding Bhargava discloses automatically generating a symbol
instance user interface to permit a user to create a symbol instance, the
symbol instance user interface being generated based on the data defining
each note included in the received symbol?

FINDINGS OF FACT (FF)
Bhargava Reference
(1) Computer-aided design software can be used to construct and
manipulate computer drawings of objects referred to as "models" (col. 1, ll.
24-26).
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(2) A window 40 is presented that includes a modeling portion that
contains a three-dimensional model that can be constructed and modified by
the user (col. 6, ll. 28-32).
(3) The model is manipulated by accessing data indicative of
features and geometric characteristics of the model (col. 2, ll. 27-31). The
graphical data indicative of features of the model are presented via a window
84 when the user selects the edit definition option from a pop-up menu 80
(col. 8, ll. 59-61).
(4) The window 84 shows various parameters that are part of the
definition of the feature (col. 8, ll. 61-63), thereby allowing a user to
graphically manipulate features of the model (col. 2, ll. 32-33). Changes to
the model are reflected in the screen display of the model as the user makes
the changes or, alternatively, in response to the user issuing a specific
command to update the screen display of the model (col. 1, ll. 29-33).
(5) Different types of features will show different types of windows
when the edit definition feature is selected (col. 8, ll. 64-65). The specific
parameters that are provided for each type of feature is a design choice based
on a variety of functional factors familiar to one of ordinary skill in the art
(col. 8, ll. 65-67).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
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reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992)).
Of course, anticipation "is not an 'ipsissimis verbis' test." In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l
Trade Comm'n, 808 F.2d 1471, 1479 (Fed. Cir. 1986)). "An anticipatory
reference . . . need not duplicate word for word what is in the claims."
Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir.
1991).

ANALYSIS
We find Bhargava discloses a model that is provided to a user on a
display (FF 2). The model is manipulated using a graphical interface which
is presented based on the features and characteristics of the model (FF 3 and
FF 4). Based on the definition of the feature selected, a window will appear
(FF 4 and FF 5). The specific parameters that appear are based on the
feature (FF 5).
Thus, we find Bhargava describes a graphical interface (symbol
instance user interface) is automatically generated based on the features of
the model (symbol). We further find this user interface permits a user to
create a model instance (symbol instance) – a new version based on
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modifications made by the user. We additionally find the symbol instance
user interface is generated based on the data defining each note or, in other
words, the user interface is generated based on the features chosen (FF 5).
Accordingly, we find Bhargava discloses both a symbol and a symbol
instance and the recited limitation of automatically generating a symbol
instance user interface to permit a user to create a symbol instance, the
symbol instance user interface being generated based on the data defining
each note (see claim 1).

CONCLUSION
Based on the findings of facts and analysis above, we conclude
Appellants have not met the burden of showing the Examiner erred in
finding Bhargava discloses automatically generating a symbol instance user
interface to permit a user to create a symbol instance, the symbol instance
user interface being generated based on the data defining each note included
in the received symbol. Accordingly, we conclude Appellants have not met
the burden of showing the Examiner erred in rejecting independent claim 1
under 35 U.S.C. § 102(a) for anticipation by Bhargava. Since Appellants
did not separately argue dependent claims 2, 3, 6, 10, and 37, but instead
relied on the argument set forth for claim 1, we conclude Appellants have
not met the burden of showing the Examiner erred in rejecting dependent
claims 2, 3, 6, 10, and 37 under 35 U.S.C. § 102(e) for anticipation by
Bhargava.
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While Appellants separately, but nominally, argue independent claim
19 and dependent claims 20, 21, 24, 28, and 38, Appellants’ arguments
merely refer back to claim 1 for the basis of their arguments (App. Br. 6,
§ (7) a.). Therefore, based on the findings and analysis above, we conclude
Appellants have not met the burden of showing the Examiner erred in
rejecting independent claim 19 and dependent claims 20, 21, 24, 28, and 38
under 35 U.S.C. § 102(e) for anticipation by Bhargava.
Similarly, while Appellants separately, but nominally, argue
independent claim 11 and dependent claims 12, 13, 16, and 18 (App. Br. 6-7,
§ (7) a.) and separately, but nominally, argued independent claim 29 and
dependent claims 30, 31, and 34 (App. Br. 7, § (7) a.), each grouping’s
arguments merely refer back to claim 1 for the basis of their arguments
(App. Br. 6-7, § (7) a.). Therefore, based on the findings and analysis above,
we conclude Appellants have not met the burden of showing the Examiner
erred in rejecting independent claim 11 and dependent claims 12, 13, 16, and
18 and independent claim 29 and dependent claims 30, 31, and 34 under
35 U.S.C. § 102(e) for anticipation by Bhargava.

Obviousness Rejection Over Bhargava and Obviousness Rejection Over
Bhargava and Bigelow
Regarding the obviousness rejection of claims 8, 9, 17, and 27 under
35 U.S.C. § 103(a) as being unpatentable over Bhargava, we find that
Appellants have not persuasively rebutted the Examiner's prima facie case of
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obviousness for these claims, but instead, merely refer to the previous
arguments made in connection with claim 1 (App. Br. 8, §((7) b.). We
additionally find that, regarding the obviousness rejection of claims 4, 5, 7,
14, 15, 17, 22, 23, 25-26, 32, 33, and 35 under 35 U.S.C. § 103(a) as being
unpatentable over Bhargava and Bigelow, Appellants have not persuasively
rebutted the Examiner's prima facie case of obviousness for these claims, but
instead, merely refer to the previous arguments made in connection with
claim 1 (App. Br. 8, §((7) c.).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Since
Appellants did not particularly point out errors in the Examiner’s reasoning
to persuasively rebut the Examiner's prima facie case of obviousness, we
will sustain the rejection for the same reasons indicated previously.

DECISION
The Examiner’s rejection of claims 1-3, 6, 10-13, 16, 18-21, 24, 28-
31, 34, and 36-38 under 35 U.S.C. § 102(e) as being anticipated by
Bhargava is affirmed.
The Examiner’s rejection of claims 8, 9, 17, and 27 under 35 U.S.C.
§ 103(a) as being obvious over Bhargava is affirmed.
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The Examiner’s rejection of claims 4, 5, 7, 14, 15, 17, 22, 23, 25-26,
32, 33, and 35 under 35 U.S.C. § 103(a) as being obvious over Bhargava and
Bigelow is affirmed.
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.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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