Ex Parte Jannott et al

Board of Patent Appeals and Interferences

Jan 26, 2012

10448857 (B.P.A.I. Jan. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/448,857 05/29/2003 Frederick P. Jannott A15.001 5514
28062 7590 01/27/2012
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
CUMARASEGARAN, VERN
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
01/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FREDERICK P. JANNOTT and WILLIAM JANNOTT
____________

Appeal 2010-000351
Application 10/448,857
Technology Center 3600
____________

Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000351
Application 10/448,857

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2 and 4-7, 9-13 and 21-30. Claims 3, 8 and 14-20
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim a system and method presenting one or more
construction specifications to user upon user input (Spec. 1 ¶ [0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A system for generating a construction specifications file
from a predetermined
list of construction specifications, the system responsive to a
user selection comprising:
a user computer; a database manipulated by said user computer,
the database comprising at least one construction product file
associated with a construction product, a user selection, an
indication, a product choice, a first product file, and a list of
construction specifications consisting of written construction
specifications;
an indication specific to the construction product, the indication
generated by the user computer;
a first abstract layer for generating a query environment
responsive to at least one instruction data block, the first
abstract layer executing cooperatively with a second abstract
layer on the user computer;
a first product file for populating the query environment, the
first product file including at least one instruction data block
and at least one second data block, the instruction data block
executable in the first abstract layer for generating at least one
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interactive menu in the query environment, the second data
block executable in the first abstract layer for presenting the
construction product choice in the interactive menu; a user
selection associated with the construction product choice, the
user selection generated by the interactive menu upon input by
a user, the user selection received by the host; and
a construction specifications file generated by the host by
manipulating the list of construction specifications responsive
to the user selection;
wherein the first product file further includes a third block, the
third data block executable in the first abstract layer for
generating at least one format choice, a format selection
associated with the format choice associated, the format
selection generated by the format choice upon input by the user,
the format selection received by the host, the construction
specifications file responsive to the format selection.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Nicastro US 2002/0077939 A1 Jun. 20, 2002

The following rejection is before us for review.
The Examiner rejected claims 1, 2, 4-7, 9-13, and 21-30 under 35
U.S.C. §103(a) as being unpatentable over Nicastro.
ISSUE
The issue of obviousness turns on whether Nicastro’s teaching of
offering the user the option to select formats before generating a schedule
for specific items provides a sufficient teaching to provide the user with a
formatting selection for a generated a construction specification.
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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
We adopt the Examiner’s findings as presented on pages 3-12 of the
Answer.
ANALYSIS
We affirm the rejection of claims 1, 2, 4-7, 9-13, and 21-30 under 35
U.S.C. §103(a).
Appellants argue that:
… Nicastro fails to disclose that the user may
select a format in which a construction
specification will be generated. Rather, Nicastro
discloses that the system may generate a
"specification for an item," however, nowhere is it
disclosed or taught that the format of the
"specification for an item" (as illustrated in FIG. 1)
may be selected by the user during, for example,
the process of building/generating the
specification.
(Appeal Br. 10).
The Examiner however found that :
“In paragraphs 166-172, Nicastro et al. show user
being able to select different specification types
‘...allow users to create two different types of item
specification...’ where the two different types of
item specification is considered to be different
formats of specification. It is further shown that
‘…the user has the option of slecting formatting
options…’”
(Answer 11-12).
We agree with the Examiner. We are not persuaded by Appellants’
assertion that nowhere is it taught that “the ‘specification for an item’ (as
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illustrated in FIG. 1) may be selected by the user during, for example, the
process of building/generating the specification”. This is because Nicastro
at ¶ [0166] explicitly discloses that the “specifcation for the item” is selected
during (occurs throughout the entire project) generating the specification.
More specifically, the passage from Nicastro at ¶ [0166] states:
The Schedule Builder tool enables one to schedule each
instance in which the item specification occurs throughout the
entire project and allows one to define an instance schedule
report.

We thus find that because Nicastro discloses that the Schedule Builder tool
allows an item specification to be documented “throughout the entire
project”, it is self-evident that the Item Specification Builder is used during
the process of building /generating the overall specification. (Nicastro, ¶
[0166]).
Even if this distinction were not present in Nicastro, we nevertheless
find that Nicastro’s teaching of offering the user, for specific items, the
option to select formats before generating a schedule (¶ [0167]) provides a
sufficient teaching to provide the user with a formatting selection for a
generated overall construction specification. This is particularly so because
the Examiner found (Answer 4-5) that the list of construction specifications
in Nicastro includes items which are ideally suited for selection by listing as
options, such as “delivery requirements, special instructions, vendor terms,
or any other information that needs to be communicated to the vendor.”
(Nicastro, ¶ [0136]). “For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
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obvious unless its actual application is beyond his or her skill.” See KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We are also not persuaded by Appellants’ argument that “Nicastro fails
to disclose a configured specification consisting of written construction
specifications as variously recited in all of the pending claims.” (Appeal Br.
13). This is because the Examiner found (Answer 4-5) that the list of
construction specifications includes “delivery requirements, special
instructions, vendor terms, or any other information that needs to be
communicated to the vendor.” (Nicastro, ¶ [0136]). Any argument by
Appellants that these items are not construction specifcations within the
context of industry standards goes to the content of the item, which we
decline to give patentable weight. Nonfunctional descriptive material cannot
render nonobvious an invention that would have otherwise been obvious. In
re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability).
Finally, Appellants maintain that using the vendor notes as construction
specifications as proposed by the Examiner would foreclose the system from
allowing “the user to attach any images or documents to the item spec".
(Appeal Br. 13).
We disagree with Appellants because the use of notes as prescribed by
Nicastro could include the images because the notes are described to include
“any other information that needs to be communicated to the vendor.”
(Nicastro, ¶ [0136]).
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Accordingly we affirm the Examiner’s rejection of claims 1, 2, 4-7, 9-
13, and 21-30 under 35 U.S.C. §103(a),

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 4-7, 9-
13, and 21-30 under 35 U.S.C. §103(a).

DECISION
AFFIRMED

MP