Ex Parte Greene et al

Patent Trial and Appeal Board

Dec 21, 2015

12356023 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/356,023 01119/2009
92336 7590
Thomas E Lees, LLC
70 Rhoads Center Drive
Suite B
Dayton, OH 45458
12/21/2015
FIRST NAMED INVENTOR
Richard Greene
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.
GB9200801l1US 1 7985
EXAMINER
HE,WEIMING
ART UNIT PAPER NUMBER
2612
MAILDATE DELIVERY MODE
12/21/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD GREENE, CONOR P. BEVERLAND,
FLORENCE HIRONDEL, AILUN YI, and TIM KOCK
Appeal2013-008712
Application 12/356,023 1
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-11 and 14--22. Appellants have previously canceled
claims 12 and 13. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 5.
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Application 12/356,023
STATEMENT OF THE CASE2
The Invention
Appellants' claimed invention "relates generally to three-dimensional
environments. In particular, the present invention relates to quickly
modifying the style of three dimensional environments." Spec. i-f 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A method for changing three-dimensional virtual
world style, the method comprising:
loading, into memory, an object listing identifying
objects for a virtual world environment;
loading, into memory, a style sheet, separate from the
object listing, including at least one name-space, each name-
space having at least one mark-up tag for rendering objects
from the object listing, wherein the mark-up tag includes an
attribute and a modifier for the attribute, wherein the attribute
of the mark-up tag is not found in the object listing;
identifying objects at a top level of the virtual world
environment to be rendered;
identifying a top-level name-space to use for the objects
at the top level, where the identified name-space is within the
loaded style sheet; and
processing, with a processor, the top-level objects
according to the identified top-level name-space, the style sheet,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Feb. 26, 2013); Reply Brief ("Reply Br.," filed June 27, 2013); Examiner's
Answer ("Ans.," mailed Apr. 29, 2013); Final Office Action ("Final Act.,"
mailed Oct. 2, 2012); and the original Specification ("Spec.," filed
Jan. 19, 2009).
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and any modifiers associated with the top-level objects to
prepare the objects for rendering.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Gerhard US 2007/0168858 Al July 19, 2007
Foley, Computer Graphics: Principles and Practice, 2nd Ed., p. 725,
1992.
Yonghwan Kim, A Content-Based 3D Graphic Information
Retrieval System, Lecture Notes in Computer Science, LNCS 4182,
pp. 567-573, 2006.
Rejections on Appeal
RI. Claims 1--4, 6-11, 14--17 and 19-22 stand rejected under 35
U.S.C. 103(a) as being obvious over the combination of Kim and Gerhard.
Final i\.ct. 10.
R2. Claims 5 and 18 stand rejected under 35 U.S.C. 103(a) as being
obvious over the combination of Kim, Gerhard and Foley. Final Act. 18.
CLAIM GROUPING
Based on Appellants· arguments (App. Br. 20-51 ), we decide the
appeal of Rejection RI of claims 1--4, 6-11, 14--17 and 19-22 on the basis
of representative claim 1. We address the appeal of Rejection R2 of
dependent claims 5 and 18, not argued separately, infra. Dependent claims
not argued separately fall with the respective independent claim from which
they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants generally argue (App. Br. 28-51; Reply Br. 5-20) the
Examiner's rejection of representative claim 1 under 35 U.S.C. § 103(a) as
being obvious over the combination of Kim and Gerhard is in error.
In particular, Appellants contend, "[t]he Examiner apparently
concludes that 'modeling' a 3-D world is somehow analogous to changing, as
claimed. As noted in Section LC.I above, Kim discloses a search engine."
App. Br. 31.
Issue 1: Did the Examiner err in not giving patentable weight to the
words "changing a three-dimensional world" in claim 1 's preamble? See
Ans. 2.
We are not persuaded by Appellants' contentions and agree with the
Examiner that the disputed claim language "changing three-dimensional
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virtual world style" is recited only in the claim preamble and thus should not
be granted patentable weight. Our reviewing court guides in construing
claim preambles: "Generally," we have said, "the preamble does not limit
the claims." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346
(Fed.Cir. 2002). Nonetheless, the preamble may be construed as limiting "if
it recites essential structure or steps, or if it is 'necessary to give life,
meaning, and vitality' to the claim." Catalina Mktg. Int'!, Inc. v.
Coo/savings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002), quoting Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999).
A preamble is not regarded as limiting, however, "when the claim
body describes a structurally complete invention such that deletion of the
preamble phrase does not affect the structure or steps of the claimed
invention." Catalina, 289 F .3d at 809. Furthermore, the preamble has no
separate limiting effect if, for example, "the preamble merely gives a
descriptive name to the set of limitations in the body of the claim that
completely set forth the invention." IMS Tech., Inc. v. Haas Automation,
Inc., 206 F.3d 1422, 1434-35 (Fed.Cir.2000). See also Am. Med. Sys., Inc. v.
Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010).
We concur with the Examiner's conclusion that the preamble of
claim 1 is not limiting. Ans. 2. Our reviewing court guides: "[p]reamble
language that merely states the purpose or intended use of an invention is
generally not treated as limiting the scope of the claim." Bi con, Inc. v.
Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). A preamble is
generally not accorded any patentable weight where it merely recites the
purpose of a process or the intended use of a structure, and where the body
of the claim does not depend on the preamble for completeness but, instead,
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the process steps or structural limitations are able to stand alone. See In re
Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) andKropa v. Robie, 187
F.2d 150, 152, 88 USPQ 478, 481(CCPA1951).
Here, we conclude the contested claim language "a method for
changing three-dimensional virtual world style," as recited in the claim
preamble, is not positively recited as affecting the steps of claim 1, but
merely recites the intended purpose of the claimed method. Nor do we
conclude the "three-dimensional virtual world style" recited in the preamble
of claim 1 provides an antecedent basis for limitations recited in the claim
body, or for the claims which depend upon independent claim 1. 3
Given the aforementioned guidance of our reviewing court, we agree
with the Examiner the preamble of claim 1 is not entitled to patentable
weight. Ans. 2.
Issue 2: Did the Examiner err in finding the cited prior art
combination teaches or suggests the limitation of "loading, into memory, a
style sheet, separate from the object listing," as recited in claim 1?
Appellants contend, "[i]n Kim, objects and their corresponding style
are inextricably linked into a single file, loaded in a single operation." (App.
Br. 35), and "Kim is silent with regard to, and completely fails to teach or
suggest separating the object listing from the style for those objects into
separate files. To the contrary, Kim expressly integrates style attributes into
the very definitions of the objects in a single file." App. Br. 37. Appellants
3 Cf with Eaton Corp. v. Rockwell Intern. Corp., 323 F.3d 1332, 1339
(2003)("When limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act as a
necessary component of the claimed invention.")( citations omitted).
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further contend the "express verbiage of the claims themselves recite
loading, into memory, a style sheet, separate from the object listing. Thus,
the Examiner is wholly ignoring the clear and precise language of the claims
themselves." Reply Br. 11.
We disagree with Appellants' arguments, because the Examiner's
rejection is based on the combined teachings and suggestions of Kim and
Gerhard. The Examiner provided an articulated reasoning with a rational
underpinning to combine the references: 4
Kim doesn't explicitly describe loading the object listing and
loading style sheet to the same memory at the concurrent time
or simultaneously. Thus, Kim can teach loading object listing
and loading style sheet subsequently. Gerhard is further recited
to supplement teaching "loading style sheet separate from
object list" (Gerhard, Fig 7), which is admitted by appellant (p.
43-44 of Brief).
Ans. 4.
Moreover, we are of the view that loading a style sheet separate from
the object listing would have been obvious to try since there are only two
possible options: (1) load, into memory, a style sheet and an object listing
together or (2) load, into memory, a style sheet and an object listing
separately. Thus, where "the problem is known, the possible approaches to
solving the problem are known and finite, and the solution is predictable
4 The Examiner's articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006). The Supreme Court stated that
'"rejections 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'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d
at 988).
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through use of a known option," a solution that is obvious to try may indeed
be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed.
Cir. 2008), citing KSR, 550 U.S. at 398. See also Ortho-McNeil Pharm.,
Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (stating the number of
options must be "small or easily traversed").
Additionally, Appellants have presented no evidence that loading a
"style sheet" and an "object listing" separately would have been "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For these reasons, on this record, we are not persuaded the Examiner
erred.
Issue 3: Did the Examiner err in finding the cited prior art
combination teaches or suggests the disputed limitations "name-space,"
"mark-up tag", "attribute," and "modifier," as recited in claim 1?
Appellants contend, in reference to Kim's Figure 2, " [a ]t section 1
identified by the Appellant, the scene (OFFICE_Ol) is defined. This is
nothing more than a label." App. Br. 35. However, Appellants also
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contend, "[i]n asserting the rejection, the Examiner argues that in Kim, the
label 'Office_Ol' is a name-space." App. Br. 38 5
Applying Appellants' own characterization of the labeled data
elements in Kim with arguments advanced regarding the various labeled
data limitations recited in claim 1 (e.g. "one name-space," "mark-up tag,"
and "attribute"), a question arises as to whether Appellants' claim includes
"nothing more than labels [for data]." App. Br. 35. Nevertheless, we agree
with the Examiner's findings that Kim's Office-01 teaches or suggests a
"name-space," "modifiers," and "attributes," as recited in claim 1. Ans. 6;
Kim, Fig. 2. Kim's Fig. 2's scene also shows that Office-01 includes
Aobjects /"mark-up tags" that include further "attributes" and "modifiers."
Id. The Examiner further finds Gerhard's style sheet 702 teaches claim l's
"style sheet." Ans. 6. The Examiner also finds, and we agree, Gerhard's
markup tag head and tail identifying a set of
elements (node O; 2; 3 etc.); as shown in Gerhard Fig 7; and transform
function 840, as shown in Gerhard Fig. 8, teaches or suggests claim l's
"modifiers" and "attributes." Ans. 6.
Issue 4: Did the Examiner err in finding proper motivation to
combine Kim and Gerhard in rejecting claim 1 under 103?
Appellants contend:
Because the intent in Kim is to consolidate a 3-D scene into a
single file for searching and responding to queries, any attempt
5 We note the Board, as well as Examiners, make findings of fact, reach
conclusions of law, and make decisions regarding the exercise of discretion,
but do not make "arguments " "contentions " "admissions " or "concessions "
' ' ' '
because neither the Examiner nor the Board are parties in any ex parte
proceeding.
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to modity Kim with Gerhard (or any other art that uses a
separate style sheet for that matter), must fail because it would
change the principle of operation of Kim. Moreover, any
attempt to modify Kim to include name-spaces in a style sheet
must fail. Again, the entire purpose of Kim is to model someone
else's 3-D scene so that visual queries may be run against the
objects in the scene.
App. Br. 47--48.
We are not persuaded by Appellants' contentions regarding the intent
and purpose of Kim. We agree with the Examiner's proffered rationale for
modifying Kim with the teachings of Gerard. 6 The reason or motivation to
modify a reference may often suggest what the inventor has done, but for a
different purpose or to solve a different problem. It is not necessary that the
prior art suggest the combination to achieve the same advantage or result
discovered by Appellants. See, e.g., In re Kahn, 441F.3d977, 987 (Fed.
Cir. 2006) (motivation question arises in the context of the general problem
confronting the inventor rather than the specific problem solved by the
invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not
see the identical problem addressed in a prior art reference to be motivated
to apply its teachings."); In re Linter, 458 F.2d 1013 (CCPA 1972); In re
Dillon, 919 F.2d 688, (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
6 The Examiner finds (Ans. 13): "It would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the method of
Kim with 'a style sheet separating from the object listing' of Gerhard so as to
provide user or developer the way to modify style definition and color
schemes at any time independent of the rendering of the diagram (Gerhard,
[0041])."
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Accordingly, we do not find Appellants' motivational arguments to be
persuasive.
Issue 5: Did the Examiner err in finding the cited prior art
combination teaches or suggests the disputed limitation "top-level objects,"
as recited in claim 1?
Appellants contend:
The Examiner . . . argues that Kim discloses identifying ". . . a
top-level name-space to use for objects at the top level, where
the identified name-space is "OFFICE 0 l ", which lists objects
AOO 1-AOlO in Fig 1. ). This argument is circuitous and fails to
draw any correlation between identifying objects at a top level
of the virtual world environment to be rendered and identifying
a top-level name-space to use for the objects at the top level,
where the identified name-space is within the loaded style
sheet, as claimed.
App. Br. 49--50.
In addressing this contention, our reviewing court guides: "In the
patentability context, claims are to be given their broadest reasonable
interpretations ... limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998). Absent an express intent to impart a novel meaning
to a claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
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LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
This reasoning is applicable here. As pointed out by the Examiner,
we note Appellants have not cited to a definition of "top level" in the
Specification that would preclude the Examiner's broader reading. Ans. 4.
We agree with Examiner's finding that Kim's semantics, as implied in
a 3D image, which include roles of component objects, semantic or spatial
relationships among objects and composition of hierarchies of objects, teach
or suggest a hierarchy of "objects," as recited in claim 1. Ans. 7, Kim,
p. 567. The Examiner further finds Kim's user retrieval of a scene based on
a hierarchical relationship among components of a 3 D scene teaches or
suggests the limitation in claim 1 of "processing ... top level objects."
Ans. 7; Kim p. 572, line 6-7. Furthermore, Gerhard's objects at each
hierarchy level teach or suggest the disputed limitation "identifying objects
at a top level" as recited in claim 1. Ans. 7, c1tmg Gerard i143, Fig. 5-8.
Gerard's object 612 at the top level, being assigned to node 0, teaches or at
least suggests the disputed claim limitation "top-level name-space."
Therefore, under the broadest reasonable interpretation standard, we agree
with the Examiner's claim construction.
Although Appellants advance additional arguments urging the
patentability of claim 1 (App. Br. 20-51, Reply Br. 4--20), we find the
Examiner has rebutted each of those arguments in the Answer by a
preponderance of the evidence. Ans. 2-8. Therefore, we adopt the
Examiner's findings and underlying reasoning, which we incorporate herein
by reference.
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As a matter of claim construction, and in further support of the
Examiner's factual findings and legal conclusion of obviousness, we
conclude claim 1 as a whole is directed to the intended rendering of data
(objects) which is non-functional descriptive material (NFDM). We further
conclude the claim as a whole is directed to conveying a message or
meaning to a human viewer or reader where the recited variety of data
rendered is NFDM. 7 Moreover, the "rendering" is not positively recited as
actually being carried out, nor is the recited "processing ... [for the intended
purpose] to prepare the objects for rendering" (claim 1) positively recited as
actually altering or changing any machine or computer function.
Our predecessor Board has issued binding precedent upon this panel
in decisions regarding claims that differ from the prior art based only on
NFDM which is data. See Ex parte Nehls, 88 USPQ2d 1883, 1889
(BP AI 2008) (precedential) (" [T]he nature of the information being
manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process."); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) ("[N]onfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art."), afld, 191 Fed. Appx. 959 (Fed. Cir.
2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) ("Nonfunctional descriptive material cannot render
7 See MPEP 2111.05, 8th ed., Rev. 9, Aug. 2012 ("[W]here the claim as a
whole is directed conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists.").
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nonobvious an invention that would have otherwise been obvious."), aj]'d,
No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36). 8
Following the aforementioned guidance, if the claimed contested data
elements are positively recited: (1) as actually being used to change or affect
a machine function (for apparatus claims), or (2) as actually being used to
change or affect the manner in which a step or act is performed (for method
or process claims), then such elements are generally considered by the
USPTO to be functional descriptive material and are given full patentable
weight.
Here the "objects" (data) intended to be prepared for rendering are not
claimed as executable code or otherwise being executed, nor are the recited
"objects" of claim 1 data structures positively recited as imparting
functionality to a machine or computer, within the broad scope of claim 1.
Therefore, we conclude method claim 1, when considered as a whole, is
merely intended to prepare data for rendering (i.e., "objects"), where such
"objects" are ultimately intended for human perception. See n.9 supra. We
conclude such data "objects" which are intended to be prepared for
"rendering" are not positively recited as actually being used to perform any
function, within the scope of claim 1.
Therefore, based upon our claim construction and the findings above,
on this record, we are not persuaded of error regarding the Examiner's
8 Cf In re Distefano, No. 15-1453 (Ct. Appeals, Fed. Cir. Opinion
December 17, 2015) (precedential) (While the content of claimed
information is not granted patentable weight, "the Board erred in finding that
the origin of the web assets[information] constituted printed matter in the
claims at issue and erred in assigning the origin no patentable weight under
the printed matter doctrine in finding anticipation.").
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reliance on the combined teachings and suggestions of the cited prior art to
render obvious the contested limitations of claim 1, nor do we find error in
the Examiner's resulting legal conclusion of obviousness.
Accordingly, on this record, Appellants have not provided sufficient
evidence or argument to persuade us of any reversible error in the
Examiner's reading of the contested limitations on the cited prior art, or in
the Examiner's proffered rationale to combine the references. Therefore, we
sustain the Examiner's obviousness rejection of representative independent
claim 1 and grouped claims 2--4, 6-11, 14--17, and 19--22, which fall
therewith. See Claim Grouping, supra.
Because Appellants have not provided any separate or substantive
arguments with respect to dependent claims 5 and 18 (Rejection R2), we
similarly sustain the Examiner's rejection of these claims under 35 U.S.C.
§ 103(a). Dependent claims not argued separately fall with the respective
independent claim from which they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4--20) not in response to a shift in the Examiner's position
in the Answer, we note that arguments raised in a reply brief that were not
raised in the appeal brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSION
The Examiner did not err with respect to obviousness rejections of
claims 1-11 and 14--22 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-11 and 14--22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
dw
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