Ex Parte Mortensen et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10621085 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN MORTENSEN and JAMES PATE
____________

Appeal 2009-005297
Application 10/621,085
Technology Center 2100
____________

Decided: April 22, 2010
____________

Before JOHN A. JEFFERY, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2009-005297
Application 10/621,085

2
STATEMENT OF THE CASE
Appellants invented a computer-aided design (CAD) management
system that manages data having different file types. See generally Spec. 1.
We reproduce claim 1 below with the key disputed limitations emphasized:
1. A method of managing CAD data in a plurality of disparate and
diverse databases comprising:
providing a first database located in a first location and further
being located behind a first firewall;
providing a second database located in a second location and
further being located behind a second firewall;
providing a clearinghouse server located outside of said first
firewall and said second firewall, said clearinghouse server having a
clearinghouse database comprising an index to at least a portion of
said CAD data in said first database and at least a portion of said CAD
data in said second database;
providing a workstation located behind said first firewall, said
workstation having a clearinghouse interface program;
establishing communications between said clearinghouse interface
program with said clearinghouse server;
transmitting a request for a requested file from said clearinghouse
interface program to said clearinghouse server;
determining that said requested file is located in said second
database by using said clearinghouse database;
sending a request from said clearinghouse server to said second
database for said requested file;
converting said requested file to a first transmittable format
without content change of said requested file; and
Appeal 2009-005297
Application 10/621,085

3
transmitting said requested file from said second database in said
first transmittable format.
The Examiner relies on the following as evidence of unpatentability:
Cianfrocca US 6,088,796 July 11, 2000

Ananian US 6,922,701 B1 July 26, 2005
(filed Aug. 3, 2000)

Shapiro US 2006/0005126 A1 Jan. 5, 2006
(filed Oct. 7, 2003 and
claiming priority to
Provisional App. No.
60/416,255, filed Oct.
7, 2002)

THE REJECTION
The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as
unpatentable over Cianfrocca, Ananian, and Shapiro. Ans. 4-13.1

CLAIM GROUPING
Although Appellants argue independent claim 1 (App. Br. 8-15)
separately from independent claim 7 (App. Br. 15-22), the arguments are
commensurate with those presented for claim 1. See App. Br. 8-22.
Regarding other contentions, Appellants group claims 1 and 7 together. See
App. Br. 22-27. As for dependent claims 2-6 and 8-11, Appellants rely on

1 Throughout this opinion, we refer to (1) the Appeal Brief filed February
28, 2008; (2) the Examiner’s Answer mailed April 29, 2008; and (3) the
Reply Brief filed June 30, 2008.
Appeal 2009-005297
Application 10/621,085

4
the arguments for claims 1 and 7. See App. Br. 22. Accordingly, we group
all claims together and select independent claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).

CONTENTIONS
Regarding representative independent claim 1, the Examiner finds that
Cianfrocca discloses the first five recited steps, except for having a
clearinghouse database comprising an index of CAD data for the databases.
Ans. 4-5. The Examiner relies on Ananian to teach (1) this missing
limitation and (2) the last five method steps of claim 1. Ans. 5-6.
According to the Examiner, Ananian’s format conversion (e.g., the plan set
standardization 60 function) teaches converting the requested file to a first
transmittable format step (Ans. 6), and also that the profiling engine 30 can
translate or convert information with CAD files into user-friendly format
(Ans. 14). The Examiner also relies on Shapiro to teach the step of
converting files without changing their content. Ans. 7-8.
Appellants argue that Ananian discloses enhancing the content of the
requested file during conversion and thus teaches away from “converting
said requested file to a first transmittable format without content change of
said requested file” as recited in claim 1. App. Br. 8-11; Reply Br. 4-5.
Appellants further assert that Shapiro does not teach converting the format
data without adding content (App. Br. 13), and Shapiro teaches away from
the claimed invention since the converted files are changed. App. Br. 13-14;
Reply Br. 8, 9 and 13-16.

Appeal 2009-005297
Application 10/621,085

5

The issues before us, then, are as follows:

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Cianfrocca, Ananian, and Shapiro collectively would have
taught or suggested converting a requested file to a first transmittable format
without content change?
(2) Does Ananian teach away from combining its disclosure with
Cianfrocca such that an ordinarily skilled artisan would have been
discouraged from following the path set out in Ananian?

FINDINGS OF FACT (FF)
(1) Ananian teaches an interactive profile system 10 useful in
estimation, design, and construction of a building, and is developed from a
plan set in CAD format having physical descriptions of a building. The
system 10 contains an application engine 20 and a profiling engine 30 that
are programs based within a computer or server. Ananian, col. 2, ll. 43-47,
col. 4, ll. 14-26, and col. 9, ll. 7-9; Fig. 1.
(2) When the user 25 submits the plan set, the plan set 50 is
standardized into standardized data set 65. The profiling engine 30 converts
the standardized plan set into an extracted data set 85, which develops the
architecturally correct plan set into the enhanced profile database 40 and is
in a format accessible by the query capabilities of the application engine 20.
The enhanced profile database 40 has a format compliant with an enhanced

Appeal 2009-005297
Application 10/621,085

6
data protocol and establishes a standard framework for the interrelationship
development of the building components. Ananian, col. 5, ll. 4-10 and
48-57; col. 8, ll. 1-27; Figs. 1 and 3.
(3) Ananian teaches that the user 25 interfaces with, and directs a
profile query 177 to, the application engine 202 using a web browser. The
application engine 20 directs the profile request 177 to the enhanced profile
database 40. The enhanced profile database creates a listing of at least one
of the enhanced profile database’s interrelated elements to the query, and the
application engine 20 returns the profile response 178 to the user’s web
browser. Ananian, col. 13, ll. 15-37 and col. 14, ll. 34-39; Fig. 1.
(4) In Ananian, the external databases 100 (e.g., databases 101-110)
interface with application engine 20 to develop links and relationships
between building components within the enhanced profile database 40. For
example, component pricing and regulatory data from the external databases
100 are linked to extracted CAD data set 85. As another example, the
application engine 20 can cross reference the enhanced profile database 40
with a reference database 107 or regulatory database 108 to check code
requirements or cost calculations. Yet another example includes accessing
the linked data when the user 25 modifies a component in a query. Ananian,
col. 8, l. 30-col. 9, l. 62, col. 11, ll. 4-20, and col. 22, ll. 36-39; Figs 1 and 3.

2 In one occurrence, Ananian misstates “application engine 10.” See col. 8,
l. 52. However, the application engine is labeled 20 in Figure 1 and
described as reference numeral 20 in the rest of the disclosure.
Appeal 2009-005297
Application 10/621,085

7
(5) Ananian teaches that assets that relate to components of the
enhanced profile database 40 can be tracked with data entered into an asset
profile database 128.3 Col. 22, ll. 7-61; Fig. 1.

PRINCIPLES OF LAW
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1. At the outset, we note that
Appellants have only challenged the Examiner’s finding that the cited
references teach converting the requested file to a first format without
changing the content of the file. See App. Br. 8-27; Reply Br. 2-16. We
thus adopt the Examiner’s finding that Ananian teaches the recited steps of:
(1) transmitting a request for a requested file from the clearinghouse
interface program to the clearinghouse server; (2) determining the requested
file is located in the second database by using the clearinghouse database,
and (3) sending a request from the clearinghouse server to the second

3 Although Ananian’s Figure 1 labels the asset profile database with
reference number 130, we nevertheless find that the proper reference number
for this element is 128, as used in the disclosure. See, e.g., col. 22, l. 9.
Reference numeral 130 is used to describe a project as shown in Figure 2.
See, e.g., col. 16, l. 57.
Appeal 2009-005297
Application 10/621,085

8
database for the requested file. See Ans. 5-7. Moreover, since the Examiner
admits that Cianfrocca does not disclose the converting step (Ans. 5), our
analysis will focus on Ananian and Shapiro.
Ananian’s interactive profile system 10 is useful in a building design
that contains programs including an application engine and a profiling
engine within a server. FF 1. In Ananian, the user interfaces with the
application engine by directing a profile query to the application engine
within a server or transmits a request for a file from the workstation (e.g.,
user’s web browser) to a clearinghouse server. FF 3. The application engine
20 within the server, in turn, directs the profile request to the enhanced
profile database 40. Id. The enhanced profile database creates the requested
file as a listing of at least one of the enhanced profile database’s interrelated
elements to the query, and the application engine returns the requested file to
the user’s web browser. Id. Thus, Ananian teaches transmitting a request
for a file (e.g., 177) from an interface program to a server.
Additionally, since the application engine 20 is a program that
interfaces with the enhanced profile database 40, the engine can be
considered as part of the clearinghouse database that indexes CAD data from
other databases. That is, database 40 indexes CAD data from: (a) plan set or
database (FF 2); (b) pricing and regulatory data of the external databases
linked to extracted CAD data set (FF 4); and (c) data related to the asset
profile database (FF 5). For example, the external databases 100 (e.g.,
databases 101-110) interface with application engine 20 to develop potential
links and relationships between building components within the enhanced
profile database 40 and thus create an index to CAD data in different
databases. Id. Nonetheless, we note also that the recitation to “CAD data”
Appeal 2009-005297
Application 10/621,085

9
in claim 1 merely pertains to its content and is therefore non-functional
descriptive material that entitled to no patentable weight. See In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004).
Furthermore, the clearinghouse database (e.g., 20 and 40) directs a
user’s request to these determined second database for information or the
requested file: (a) if a user requests the price of a building component (see
FF 4); (b) if a user modifies a query (see id.); or (c) for cross-referencing the
database to check code requirements or cost calculations (see id.).
Moreover, Ananian also suggests that the requested data in these databases
must be converted into an enhanced data protocol or format (FF 2) prior to
transmission back to the clearinghouse database (e.g., 20), so that a standard
framework for developing interrelationships and links between building
components can be accomplished. See FF 2 and 4. Ananian therefore at
least suggests that all the data that is transmitted from these databases must
be converted into a standard first transmittable format as recited in claim 1.
Also, contrary to the Appellants’ assertions (App. Br. 9 and 11; Reply
Br. 4), Ananian does not teach modifying or changing the requested file or
the content of requested information (e.g., a listing or data from external
databases 100). Rather, Ananian discusses adding links and
interrelationships to the database’s content and not the requested file. Thus,
even assuming, without deciding, that Ananian’s database 40 is modified or
the standardized data set 60 is different from that originally submitted by the
user (App. Br. 9-11; Reply Br. 4-5), Ananian still teaches the requested file’s
content is not changed during conversion. We therefore disagree with
Appeal 2009-005297
Application 10/621,085

10
Appellants (App. Br. 8-11) that Ananian fails to teach the step of
“converting said requested file to a first transmittable format without content
change of said requested file” as recited in claim 1.
Finally, we are not persuaded that combining Ananian with
Cianfrocca teaches away from Cianfrocca’s or Appellants’ invention, as
Appellants argue. App. Br. 11; Reply Br. 5. We find no evidence that one
skilled in the art would be discouraged from combining Ananian’s teachings
with Cianfrocca because Ananian teaches the database—not the requested
data—is enhanced. See Kahn, 441 F.3d at 990. As explained above,
augmenting a database does not teach that the requested file will be
converted to a format with content change, as Appellants contend. See App.
Br. 11. We therefore find that Ananian teaches the recited limitation of
converting the requested file to a first transmittable format without content
change as recited in claim 1.
Since Ananian teaches all the limitations missing from Cianfrocca,
Shapiro is cumulative. We therefore need not address Appellants’
arguments directed to Shapiro’s purported deficiencies. See App. Br. 11-15.
For the foregoing reasons, Appellants have not shown error in the
obviousness rejection of independent claim 1 based on the combination of
Cianfrocca, Ananian, and Shapiro. We will therefore sustain the rejection of
claim 1, and claims 2-11 which fall with claim 1.

CONCLUSION
The Examiner did not err in rejecting claims 1-11 under § 103.

Appeal 2009-005297
Application 10/621,085

11
ORDER
We affirm the Examiner’s decision rejecting claims 1-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

COCHRAN FREUND & YOUNG LLC
LSI CORPORATION
2026 CARIBOU DRIVE
SUITE 201
FORT COLLINS, CO 80525