Ex Parte Putnam et al

Patent Trial and Appeal Board

Jul 18, 2013

10954529 (P.T.A.B. Jul. 18, 2013)

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.
10/954,529 09/29/2004 Christopher Eric Putnam G&C 30566.362-US-U1 3667
55895 7590 07/18/2013
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
HAJNIK, DANIEL F
ART UNIT PAPER NUMBER
2679
MAIL DATE DELIVERY MODE
07/18/2013 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 CHRISTOPHER ERIC PUTNAM and MARK W. ANDERSON
____________

Appeal 2010-005293
Application 10/954,5291
Technology Center 2600
____________

Before CAROLYN D. THOMAS, TREVOR M. JEFFERSON, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Autodesk, Inc.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-27, which are all the claims
pending in the application. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to a “CAD/GIS system that
“automatically generates faces[/parcels] within land site maps.” See Spec.,
Abstract.
Claim 1 is illustrative:
1. A method for creating faces in a computer assisted design
and geographic information (CAD/GIS) system, comprising:
defining a site map within the CAD / GIS system, where
the site map is defined by at least one boundary and encloses a closed
polygon;
defining a boundary of the site map within the CAD /
GIS system to be used as a reference boundary;
defining a start point on the reference boundary within
the CAD / GIS system;
receiving, via user input, a definition of an attribute in the
CAD / GIS system;
automatically, without additional user input, creating at
least one face with the CAD/GIS system within the site map, wherein
the face is a closed polygon, wherein the face is created by creating at
least one face boundary based on the start point and the attribute of
the face defined within the CAD/GIS system; and
displaying the face in the CAD / GIS system on a display
device.
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Appellants appeal the following rejections:

R1. Claims 1, 2, 4-6, 8-11, 13-15, 17-20, 22-24, 26, and 27 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Komornicki
(US Patent Pub. 2004/0004611 A1, published Jan. 8, 2004);
R2. Claims 3, 12, 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Komornicki and Anderson (US Patent Pub. 2003/0158668
A1, published Aug. 21, 2003); and
R3. Claims 7, 16, 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Komornicki and Harrison (US 7,054,741 B2, issued May
30, 2006).
Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Claims 1, 8-10, 17-19, 26, and 27
Issue 1: Did the Examiner err in finding that Komornicki teaches
and/or suggests a reference boundary, a start point on the reference
boundary, and automatically creating parcels, as set forth in claim 1?

Appellants contend that in Komornicki’s paragraph [0108], “such text
does not even remotely suggest or allude to a start point whatsoever” (App.
Br. 7), and that “Komornicki fails to teach, describe, or suggest the starting
point on a reference boundary as claimed” (id. at 8). Appellants further
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contend that “what is clearly and notoriously lacking from such a description
is the automatic creation of such a parcel occurring ‘without additional user
input’ (as explicitly required in the present independent claims). Instead,
these paragraphs explicitly require user input via the mouse” (App. Br. 10-
11).
The Examiner found “figure 92 shows that each line has starting and
ending points on their boundaries for individual parcels as shown. Starting
and ending lines along the reference boundary makes common sense” (Ans.
6). The Examiner further found that “it is obvious to start the automatic
parceling along a reference boundary such as a street” (Ans. 16). We agree
with the Examiner.
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 essentially for the reasons
indicated by the Examiner. Here, Komornicki discloses a system whereby
the coordinate design and information system (CDIS) “uses an object-
oriented and spatial-based approach in which all objects have a set of
attributes . . . with automatic parceling; for example, it allows a user of the
invention to quickly access all of the lots on a site, and then automatically
parcel the lots” (¶ [0002]). In Komornicki, “[s]tandard objects in CDIS
include points, lines, arcs, polylines . . .” (¶ [0102]), and “the actual end
points of the drawing data may be defined . . . The description could be as
simple as ‘lot corner’ . . .” (¶ [0106]). In addition, Komornicki looks at the
prospect that “the user needs to create a lot of a certain size along a street”
and that “[t]he requirements of each lot may include side boundaries
perpendicular to the street, have a back that is constrained by an existing
boundary line and have an area of 50,000 square feet” (¶ [0108]).
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In other words, Komornicki discloses a system for automatically
parceling lots based on defined end points (i.e., inherently including a
beginning and an end point), attributes set by the user (i.e., square footage),
and existing boundary lines (i.e., along a street and/or existing back
boundary line). Komornicki further states that “the user simply asks CDIS
to create lots that fit a particular size of area” (¶ [0108]).
Therefore, we find that Komornicki teaches and/or suggests defining a
boundary as a reference boundary, defining a start point on the reference
boundary, and automatically creating at least one parcel based on the start
point and the attribute, without additional user input (i.e., other than defining
the attributes).
As for Appellants’ contention that “Komornicki’s disclosure is not
enabling for the desired subject matter (i.e., for the lot creation capabilities)”
(App. Br. 13), we note that
[t]he enablement requirement is often more indulgent than the written
description requirement. The specification need not explicitly teach
those in the art to make and use the invention; the requirement is
satisfied if, given what they already know, the specification teaches
those in the art enough that they can make and use the invention
without ‘undue experimentation.’

Amgen, Inc., v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed.
Cir. 2003). We find this to be the case here. Komornicki’s disclosure
discloses using coordinate geometry, spatial features, attributes, and defining
space and areas in parceling the lots. We find this to be sufficient for those
skilled in the art to make and use the invention without undue
experimentation.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
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disclosure of Komornicki, the Examiner’s 35 U.S.C. § 103(a) rejection of
representative independent claim 1, as well as claims 8-10, 17-19, 26, and 27
not separately argued by Appellants, is sustained.

Claims 2, 11, and 20
Issue 2: Did the Examiner err in finding that Komornicki teaches
and/or suggests rotating a line segment about the start point, as set forth in
claim 2?

Appellants contend that in the claimed invention “the rotation of the
line segment about the start point occurs automatically without user input.
. . . [S]uch text [in Komornicki] explicitly requires user interaction to create
the lines” (App. Br. 16). We agree with Appellants.
Here, the Examiner concedes that Komornicki discloses manual
rotation of a line segment using a mouse (Ans. 23), but rationalizes that such
a feature could also be done automatically. While we agree that “rotating a
line segment” could be done automatically, simply asserting this is
unsupported speculation by the Examiner, which does not amount to a
finding supportive of the Examiner’s obviousness conclusion. Komornicki
does indeed disclose automatically parceling the lots (see ¶ [0002]), but the
Examiner has directed our attention to Kormornicki’s disclosure of manual
manipulation of the mouse to create lines (see ¶ [0178]), with no suggestion
of doing this feature automatically. Claim 2 requires automatically
performing this feature (see independent claim 1). We are therefore
constrained by the record before us to find that the Examiner erred in
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rejecting dependent claim 2 and dependent claims 11 and 20 for similar
reasons.
Claims 4, 13, and 22
Issue 3: Did the Examiner err in finding that Komornicki teaches
and/or suggests a minimum size for the face, as set forth in claim 4?

The Examiner concluded that “[a] lot of a particular size is also a
minimum size” (Ans. 24). We agree with the Examiner.
While the Appellants contend that “a particular size is not a minimum
size as claimed[and] the use of an exact size would require additional user
input to determine what to do with any excess acreage” (App. Br. 18), we
find that a lot of “a particular size” includes a “minimum size.” “The law is
replete with cases in which the difference between the claimed invention and
the prior art is some range or other variable within the claims.” In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted). “In
cases involving overlapping ranges … even a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). Here, we find that a particular size overlaps a
minimum size.
While Appellants also argue that “additional user input to determine
what to do with any excess acreage” is required when using a particular size
(App. Br. 18), we find that such a requirement is not claimed. Furthermore,
Appellants have not shown that a “minimum size” is critical or achieves
unexpected results when creating at least one face. See Woodruff, 919 F.2d
at 1578 (“These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
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showing that the claimed range achieves unexpected results relative to the
prior art range.”).
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Komornicki, the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 4, as well as claims 13 and 22 for similar reasons, is sustained.

Claims 5, 14, and 23
Issue 4: Did the Examiner err in finding that Komornicki teaches
and/or suggests a minimum frontage along the reference boundary, as set
forth in claim 5?

Appellants contend that “creating a face that has a minimum frontage
along a particular boundary is completely and entirely lacking from
Komornicki. . . . you would only specify the total square footage” (App. Br.
20).
The Examiner found that “the minimum frontage (or length of the
street) for a parcel/lot is already a factor (or attribute) in the parcel creation
process” (Ans. 25).
In essence, the Examiner found that in Komornicki the “length of the
street” represents the claimed “minimum frontage along the reference
boundary” (id.). Specifically, Komornicki discloses requirements such as
“side boundaries perpendicular to the street,” “a back that is constrained by
an existing boundary line,” and “an area of 50,000 square feet” (¶ [0108]).
However, Komornicki does not disclose that the lot covers the length of the
street, as alleged by the Examiner. Above, we found that Komornicki
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discloses a “minimum size” (see analysis regarding claim 4), however, a
minimum size does not necessarily give one a minimum frontage along the
reference boundary, as 50,000 square feet can be represented by numerous
frontage areas along the reference boundary. As such, we find that the
Examiner has not shown a minimum frontage, as set forth in claims 5, 14,
and 23.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting dependent claims 5, 14, and 23.

Claims 6, 15, and 24
Issue 5: Did the Examiner err in finding that Komornicki teaches
and/or suggests that the attribute is a number of faces to be created, as set
forth in claim 6?

Appellants contend that “incremental numbering has nothing at all to
do with specifying the number of parcels to be created” (App. Br. 21).
The Examiner found that “the user can effectively set the number of
parcels to automatically be generated by placing size requirements for the
lots” (Ans. 26).
Although the Examiner states that the user in Komornicki can set the
number of parcels (id.), the Examiner has failed to show precisely where
such a feature is taught in Komornicki. Instead, the Examiner directs our
attention to Komornicki’s disclosure of providing “incremental numbering
with automatic parceling” (¶ [0002]). Such incremental numbering is
directed towards allowing a user to quickly access all of the lots on a site by
indicating a number, and then automatically parceling the lots. We find that
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this disclosure is not related to a number of faces/parcels to be created, but
rather identifying the lots.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting dependent claims 6, 15, 24.

Claims 3, 12, and 21
Issue 6: Did the Examiner err in finding that the combination of
Komornicki and Anderson teaches sliding a line segment along the reference
boundary, as set forth in claim 3?

Appellants’ arguments are similar to those made for claim 2 (App. Br.
22-23), which we found persuasive. However, here, the Examiner uses a
second reference, i.e., Anderson, and cites col. 17, lines 35-41 of Anderson
for teaching the argued limitation. However, as indicated by Appellants
(App. Br. 22), no such column and lines are found in Anderson’s
publication. As such, it is unclear to us what precisely in Anderson the
Examiner is relying on to teach this feature.
The one who bears the initial burden of presenting a prima facie case
of unpatentability is the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). A prima facie case is established when the party with the burden
of proof points to evidence that is sufficient, if uncontroverted, to entitle it to
prevail as a matter of law. See Saab Cars USA, Inc. v. U. S., 434 F.3d 1359,
1369 (Fed. Cir. 2006). Here, no such evidence has been clearly highlighted
in Anderson. As such, Anderson has not been shown to make up for the
deficiencies noted above in Komornicki.
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We are therefore constrained by the record before us to find that the
Examiner erred in rejecting dependent claims 3, 12, and 21.

Claims 7, 16, and 25
Issue 7: Did the Examiner err in finding that the combination of
Komornicki and Harrison teaches that an area of the face size is increased by
appending a remainder of area in the site map to the area of the face, as set
forth in claim 7?
Appellants contend that “Harrison completely and entirely fails to
describe increasing a size by adding the remainder of an area in a site map to
the area of the face” (App. Br. 25).
The Examiner found that Harrison discloses that “a parcel can be
adjusted to match a desired size by adjusting the location of the boundaries”
(Ans. 12). Specifically, Harrison discloses that one can “edit the boundary
in any desired manner. For example, . . . by relocating the parcel to a new
position . . . by adjusting the location of the boundaries . . . Also, the latitude
and longitude coordinates of the corner points of the land can be entered
which allows the drawing tool to circumscribe the boundaries of the land
automatically” (col. 17, ll. 39-50).
Claim 7 requires appending a remainder of the area to the area of the
face (see claim 7). In other words, a remainder of the area not used must be
calculated in order to be appended to the face size.
The Examiner has not established that Harrison contemplates
appending a remainder of area in the site map to the area of the face.
Instead, the portion of Harrison relied on by the Examiner merely allows the
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user to adjust a boundary by relocating it to a new position without regard to
the remainder.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting dependent claims 7, 16, and 25.

DECISION
We reverse the Examiner’s § 103 rejections of claims 2, 3, 5, 7, 11,
12, 14, 16, 20, 21, 23, and 25.
We affirm the Examiner’s § 103 rejection of claims 1, 4, 6, 8-10, 13,
15, 17-19, 22, 24, 26, and 27.
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.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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