Ex Parte Park et al

Patent Trial and Appeal Board

Mar 22, 2018

14576527 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/576,527 12/19/2014
30868 7590 03/26/2018
KRAMER & AMADO, P.C.
330 JOHN CARLYLE STREET
3RDFLOOR
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Dale Park
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.
LGL3009 6056
EXAMINER
CHEN, FRANKS
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
03/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@krameramado.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DALE PARK, JEFF HAZELTON, and
LAWRENCE KIEY
Appeal2017-007079
Application 14/576,527 1
Technology Center 2600
Before BRADLEY W. BAUMEISTER, IRVINE. BRANCH, and
NABEEL U. KHAN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to three-dimensional model rendering and
manipulation using a user input device. Spec. Abstract.
1 According to Appellants, the real party in interest is Lucid Global, Inc.,
App. Br. 1.
Appeal2017-007079
Application 14/576,527
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A non-transitory machine-readable storage medium
encoded with instructions for execution by a processor, the
medium comprising:
instructions for displaying a three-dimensional model,
wherein the three-dimensional model is associated with a first
property and a second property;
instructions for modifying the appearance of the three-
dimensional model in a first manner based on a change to a value
of the first property and in a second manner based on a change to
a value of the second property;
instructions for displaying a pad user-interface element,
wherein the pad user-interface element includes an area for
receiving a user selection;
instructions for receiving a user selection of the pad user-
interface element, the user selection being associated with an first
axis coordinate and a second axis coordinate;
instructions for changing the value of the first property
based on the first axis coordinate; and
instructions for changing the value of the second property
based on the second axis coordinate.
Rejections
Claims 1-5, 7-12, and 14--19 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Shukla (US 2011/0161854 A 1,
pub. June 30, 2011), Molesky (US 2014/0095972 Al, pub. Apr. 3, 2014),
Liang (US 2009/0142740 Al, pub. June 4, 2009), and Champion
(US 7,562,310 B2, issued July 14, 2009). Final Act. 3-36.
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Application 14/576,527
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Shukla, Molesky, Liang, Champion,
and Kaula (US 2014/0344740 Al, pub. Nov. 20, 2014). Final Act. 36-45.
PRINCIPLES OF LAW
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. See In re
American Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In the absence of an express definition of a claim term in the specification or
a clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007); see also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner can satisfy this burden by showing "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 In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). "The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." Leapfrog Enters., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR,
550 U.S. at 416).
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of [those]
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Application 14/576,527
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining
the teachings of references does not involve an ability to combine their
specific structures."). Rather, "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 obvious
unless its actual application is beyond his or her skill." KSR, 550 U.S. at
417.
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR, 550 U.S. at 418. Further, one cannot show non-
obviousness by attacking references individually when the rejection is based
on a combination of references. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986); see also Keller, 642 F.2d at 425.
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"It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Further,
[i]f ... the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention's limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of
no significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999).
If the Examiner's burden is met, the burden then shifts to appellants to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill in the
art at the time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a reconstruction is
proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Citing a large number of references does not negate the obviousness
of the combination when the prior art uses the various elements for the same
purposes as they are used by appellants, making the claimed invention as a
whole obvious in terms of 35 U.S.C. § 103. In re Gorman, 933 F.2d 982,
987 (Fed. Cir. 1991).
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ANALYSIS 2
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments (App. Br. 5-
11; Reply Br. 2-11 ), but we do not find them persuasive of error. We
provide the following explanation for emphasis.
Appellants argue error because the Examiner incorrectly finds
"Shukla discloses systems and methods of providing visual representations
of a patient's anatomy, such [as] changing the spacing between a plurality of
body system graphical objects." Reply Br. 3 (alteration in original) (quoting
Ans. 3). This argument is unpersuasive of error because Shukla states "the
anatomical views 131-134 can be combined into a single composite view
from which the individual body system views 131-134 can be separated or
isolated for viewing." Shukla i-f 47. As such, Shukla discloses changing the
spacing from a composite view (i.e., no spacing) to separated, or non-zero
spacmg.
Appellants argue that, "[b ]ecause Shukla provides a mechanism to
expand and contract the images, there would be no reason for one skilled in
the art to attempt to use a slider bar of Molesky to separate the body views
when this is already disclosed by Shukla." Reply Br. 5; see also id. at 7-8.
This argument is unpersuasive of error. While Shukla undisputedly
discloses changing the anatomical views from a composite view to a
separated view, Shukla does not necessarily disclose varying the separation
2 Appellants argue the rejections of all claims based on arguments presented
with respect to the rejection of claim 1. See App. Br. 10-11. Accordingly,
our decision turns on our analysis of the rejection of claim 1, and, except for
our ultimate decision, we do not further address the remaining claims.
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between those views. Shukla i-f 4 7. Molesky introduces varying the spacing
between the two views disclosed by Shukla. Molesky Fig. 3. Accordingly,
we see no error in the Examiner's finding that the combination of Shukla
and Molesky teaches "instructions for modifying the appearance of the
three-dimensional model in a first manner based on a change to a value of
the first property." Final Act. 3-6.
Appellants dispute the Examiner's determination "that Shukla
discloses, 'the horizontal distances between the body systems graphical
objects are increased and decreased in a first manner."' Reply Br. 6 (quoting
Ans. 5). Appellants' disagreement, amplified by the ensuing discussion (id.
at 6-7), is unpersuasive of error because it overlooks the Examiner's
statement at the opening line of the paragraph that the "Examiner would like
to discuss the anatomical views 131-134 of Shukla and the manner in which
they are separated in view of Malesky" (Ans. 5 (emphasis added)).
Appellants' arguments throughout the Reply Brief are generally
unpersuasive of error because, as here, Appellants attack the references
individually when the rejection is based on the references' combined
teachings and what the combined teachings would have taught or suggested
to one of ordinary skill in the art. See Merck, 800 F .2d at 1097.
Appellants' remaining arguments (Reply Br. 8-11) also do not
persuade us of error in view of the Examiner's findings and conclusion that
claim 1 is unpatentable (Final Act. 3-9), the Principles of Law we provide
above, and the Examiner's response to Appellants' arguments (Ans. 3-13),
which Appellants do not persuasively rebut.
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DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-2 0.
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.
§ 41.50(±).
AFFIRMED
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