Ex Parte Huang et al

Patent Trial and Appeal Board

Dec 1, 2014

11837371 (P.T.A.B. Dec. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIANBING HUANG, MICHAEL B. CARTER,
ANDREAS JOHANNSEN and BRETT HARPER
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Appeal 2012-005609
Application 11/837,371
Technology Center 2600
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Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 7–9, and 15.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 The real party in interest identified by Appellants is Siemens Product
Lifecyc1e Management Software Inc. See Appeal Br. 4.
2 Claims 4–6 and 10–12 were indicated as allowed in the Advisory
Action after amendments were entered. Id. at 6. Claims 13–14 are
cancelled. Id.
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STATEMENT OF THE CASE
Introduction
In the Technical Field portion of the Specification, Appellants
describe the present invention as follows:
The presently preferred embodiment of the innovations
described herein relate generally to computer graphics
software applications. More specifically, the presently
preferred embodiment relates to system and method to
organize topology elements for better compression.
Spec. ¶ 3.
Claims 1, 7, and 15 are independent claims.
Rejection on Appeal
Claims 1–3, 7–9, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over MacPherson (US 6,772,175 B2, issued Aug. 3, 2004),
Sandwith (US 7,181,685 B2, issued Feb. 20, 2007), Wittenbrink (US
6,961,469 B2, issued Nov. 1, 2005), and Park (Seok-Min Park et al.,
Volumetric Multi-Texturing for Functionally Gradient Material
Representation, ACM, 216244, 218 (2001)). See Appeal Br. 12; Ans. 4–8.
Illustrative Claim
Claim 1 is illustrative and provides as follows:
1. A method for organizing elements for compression,
the method performed by a computing device,
comprising:

nesting a hierarchical topological structure having
a plurality of elements;

arranging said plurality of elements in a pattern to
facilitate data compression;

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representing said pattern as four arrays, the four
arrays consisting of a shell array, a face array, a
loop array, and a coedge array; and

compressing said plurality of elements from said
arrays.

Issue on Appeal
Appellants’ arguments in the Appeal Brief3 and Reply Brief present us
with the following dispositive issue:
Is the Examiner’s conclusion that claim 1 would have been
obvious to a person of ordinary skill in the art in view of the
combination of MacPherson, Park, Sandwith, and Wittenbrink
based on impermissible hindsight?

ANALYSIS
Appellants contend that none of the references, individually or
in any combination, teaches “arranging [a] plurality of elements in a
pattern to facilitate data compression” and “representing [the] pattern
as four arrays, the four arrays consisting of a shell array, a face array,
a loop array, and a coedge array,” as recited in claim 1. See Appeal
Br. 17, 22; Reply Br. 12–13, 18. Appellants also contend that the
Examiner erred by attempting to demonstrate that each of the claim

3 Our Decision refers to Appellants’ Appeal Brief, filed on Sept. 13,
2011 (“Appeal Br.”), the Examiner’s Answer, mailed on Dec. 16,
2011 (“Ans.”), Appellants’ Reply Brief, filed on Feb. 1, 2012 (“Reply
Br.”), and the original Specification, filed on Aug. 10, 2007 (“Spec.”).

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elements was independently known in the art “without showing any
teaching that they could be combined as claimed, or that any person of
skill in the art would recognize that the claim elements would function
as claimed.” See Appeal Br. 22; Reply Br. 18, 20. Appellants further
assert that “[t]he rejection appears to be a classic hindsight
reconstruction.” Id.
In the Answer, the Examiner sets forth findings in regard to the
teachings of the prior art references, individually and in certain
combinations, and explains the rationale for combining each of Park,
Sandwith, and Wittenbrink with MacPherson. See Ans. 8–10. In regard to
Appellants’ argument that the Examiner’s conclusion of obviousness is
based on improper hindsight reasoning, the Examiner, citing In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971), states the following:
[I]t must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning. But so long as it takes
into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was
made, and does not incude knowledge gleaned only from
the [Applicants’] disclosure, such a reconstruction is
proper.
See Ans. 10.
Although the Examiner is correct about taking into account only
knowledge which was within the level of ordinary skill, we find that the
Examiner has not articulated a sufficient reason for combining the applied
prior art absent the use of impermissible hindsight. It is well recognized that
“[o]bviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg., Inc. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore
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& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851(1984) ). “It is impermissible to use the claimed
invention as an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is rendered obvious.”
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933
F.2d 982, 987 (Fed. Cir. 1991)).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), the
Supreme Court said that “when the question is whether a patent claiming the
combination of elements of prior art is obvious . . . a court must ask whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” The Supreme Court also said that
“[a] factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the
teachings of the invention in issue” and instructing courts to “ ‘guard against
slipping into use of hindsight’ ” (quoting Monroe Auto Equip. Co. v.
Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (C.A.6 1964))).
After reviewing the respective teachings and suggestions of the cited
references, and the Examiner’s reasoning for making the combination, we
agree with Appellants and conclude that a person of ordinary skill in the art
would not have combined the references in the manner proferred by the
Examiner without having the benefit of Appellants’ disclosure. For
example, the Examiner’s proposed modification selectively adds some
elements while omitting other elements to construct a process that arguably
has all the elements and limitations of claim 1, without a persuasive
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explanation as to why. See Ans. 8–10. In particular, we agree with
Appellants that the Examiner has not provided persuasive reasoning with
some rational underpinning to support the reason “to store the pattern of
elements in the specific types of claim arrays before compression” or “that
the pattern of elements could be represented in the four arrays as claimed.”
See Reply Br. 20. The Examiner further does not persuade us that the
combination of steps of claim 1 is merely the predictable use of prior art
elements according to their established functions or that the combination of
MacPherson and Park, or any of the other references, teaches or suggests
arranging a plurality of elements in a pattern consisting of only a shell array,
a face array, a loop array, and a coedge array, as recited in claim 1.4 Thus,
we conclude the Examiner’s conclusion that claim 1 is obvious is based on
impermissible hindsight because it is not based only on the prior art, but also
uses the claimed invention as an instruction manual or template to piece
together the teachings of the prior art. See In re Fritch, 972 F.2d at 1266.
Accordingly, we do not sustain the rejection of claim 1. For the same
reasons, we do not sustain the rejection of independent claims 7 and 15 or
the rejection of dependent claims 2–3 and 8–9.

DECISION

4 “Closed” transition phrases such as “consisting of,” as used in claim
1, are understood to exclude any elements, steps, or ingredients not
specified in the claim. See AFG Industries, Inc. v. Cardinal IG Co.,
239 F.3d 1239, 1245 (Fed. Cir. 2001); see also, Conoco, Inc. v.
Energy & Environmental Int’l, L.C., 460 F.3d 1349, 1360 (Fed. Cir.
2006).
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The Examiner’s decision rejecting claims1–3, 7–9, and 15 is
reversed.

REVERSED

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