Ex Parte Shipman et al

Patent Trial and Appeal Board

Jun 3, 2013

11219448 (P.T.A.B. Jun. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/219,448 09/02/2005 Andy Shipman 14638-0001 1534
3490 7590 06/03/2013
DOUGLAS T. JOHNSON
MILLER & MARTIN
1000 VOLUNTEER BUILDING
832 GEORGIA AVENUE
CHATTANOOGA, TN 37402-2289
EXAMINER
KIM, EUNHEE
ART UNIT PAPER NUMBER
2123
MAIL DATE DELIVERY MODE
06/03/2013 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 ANDY SHIPMAN, JAMIE HARRISON, and
PATRICK HARRIS
____________________

Appeal 2011-000005
Application 11/219,448
Technology Center 2100
____________________

Before KALYAN K. DESHPANDE, PATRICK M. BOUCHER, and
STACEY G. WHITE, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claims
The disclosure relates to computer-simulated generation of surface
patterns (Spec. ¶2).
Claims 1 and 12 are illustrative and are reproduced below:
1. A method of distributing surface pattern simulations
comprising the steps of:
(a) creating a file containing color, texture and
manufacturing characteristics, and pattern information;
(b) transmitting the file to a user with access to viewing
software;
(c) operating the viewing software to open the file and
create a surface pattern simulation without reference to external
databases of color, texture or manufacturing characteristics.

12. A file for use with viewer software to generate surface
pattern simulations in an extensible format comprising a file
header, a first chuck header and an associated first chunk
containing at least one of color, texture and manufacturing
characteristics, and pattern information.

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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Birch US 4,659,602 Apr. 21, 1987
Jones US 2004/0034576 A1 Feb. 19, 2004

Essential Jpeg, http://www.obrador.com/essentialjpeg/HeaderInfo.htm
(1998), http://web.archive.org/web/20030109082035/http://
www.obrador.com/essentialjpeg/HeaderInfo.htm (last visited Jul. 11,
2008) (“Essential Jpeg”).

Rejections
The Examiner made the following rejections:
Claims 12–191 stand rejected under 35 U.S.C. § 101 as directed to
nonstatutory subject matter (Ans. 4).
Claim 12 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Essential Jpeg (Ans. 5).
Claims 1–6, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones in view of Essential Jpeg (Ans. 6).
Claims 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones in view of Essential Jpeg, and further in view of
Birch (Ans. 8).
Claims 12–17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones in view of Essential Jpeg, further in view of Official
Notice (Ans. 9).

1 The Appeal Brief also briefly addresses a rejection of claim 20 under 35
U.S.C. § 101, but that rejection was withdrawn by the Examiner (Ans. 3)
and is therefore not before us.
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Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Jones in view of Essential Jpeg, further in view of Official Notice (Ans.
11).

ANALYSIS
We have reviewed Appellants’ arguments in their Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellants’
arguments.

Issue 1
Rejection of claims 12–19 under 35 U.S.C. § 101

The rejection of claims 12–19 under 35 U.S.C. § 101 presents us with
the issue of whether the Examiner erred in finding a “file for use with viewer
software” to be outside the scope of patent-eligible subject matter.
Appellants contend that a “file” is an article of manufacture, citing In
re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) for the proposition that “data
structures for storing, using and managing data in a computer memory are
patentable subject matter” (App. Br. 5).
We disagree. Appellants’ reliance on Lowry is misplaced. Unlike
claims 12–19, the claims at issue in Lowry were directed to a “memory for
storing data” (emphasis added) that comprised a data structure, with our
reviewing court holding that the data structure recitations were entitled to
patentable weight when evaluating patentability under 35 U.S.C. §§ 102 and
103. See Lowry at 1583. The Examiner correctly concluded that because
the claims recite a “file” divorced from any recitation of an embodying
medium the claims are not directed to statutory subject matter (see Ans. 13).
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Appellants’ argument that “the file of [claims 12–19] is used with
view[er] software to generate surface pattern simulations and therefore
causes functional changes in the computer” (Rep. Br. 4) is unpersuasive
because the argument is not commensurate with the scope of the claim.
Functional changes in the computer are caused by the viewer software, not
by the claimed file.
We therefore sustain the Examiner’s rejection of claims 12–19 under
35 U.S.C. § 101.

Issue 2
Rejection of claim 12 under 35 U.S.C. § 102(b)

The rejection of claim 12 under 35 U.S.C. § 102(b) presents us with
the issue of whether the Examiner erred in finding that Essential Jpeg
discloses “an associated first chunk containing at least one of color, texture
and manufacturing characteristics, and pattern information,” as recited in
claim 12.
Appellants urge construction of the limitation as requiring that the
first chunk contain: (1) pattern information; and (2) color, texture, or
manufacturing characteristics (App. Br. 6; Rep. Br. 3), while the Examiner
construes the limitation as requiring that the first chunk contain any one of
color, texture, manufacturing characteristics, and pattern information (Ans.
14). Appellants acknowledge that Essential Jpeg discloses color information
(App. Br. 6) and also acknowledge that the language of the limitation
contains a “latent ambiguity” that makes it amenable to multiple reasonable
constructions (Rep. Br. 6).
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Since “[d]uring patent examination the patent claims must be
interpreted as broadly as their terms reasonably allow” (In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989)), we find the Examiner’s construction to be both
reasonable and consistent with the Specification. Accordingly, we disagree
that the Examiner has erred in applying the broader construction.2
We therefore sustain the Examiner’s rejection of claim 12 under 35
U.S.C. § 102(b).

Issue 3
Rejection of claims 1–6, 8, and 11 under 35 U.S.C. § 103(a)

The rejection of claims 1–6, 8, and 11 under 35 U.S.C. § 103(a)
presents us with the issue of whether the Examiner erred in finding that the
combination of Jones and Essential Jpeg renders obvious “operating []
viewing software to open [a file containing color, texture and manufacturing
characteristics, and pattern information] and create a surface pattern
simulation without reference to external databases of color, texture or
manufacturing characteristics,” as recited in claim 1.
Appellants contend that Jones and Essential Jpeg are not analogous art
(App. Br. 8). We find that Jones discloses a system for presenting and
manipulating simulated designs that correspond to designs on carpeting,
carpet tiles, or other floor covering or surface products (Jones ¶4). It

2 In the event of further prosecution, we direct the Examiner’s attention to
the holding in Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential opinion), that “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”
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discloses an architecture in which subscribers may request and retrieve
design documents that include “surface designs, patterns, colors, textures,
and/or the like” (id. ¶18). Essential Jpeg discloses an image file format that
includes color information (Essential Jpeg, p. 1).
We disagree with Appellants’ contention because both Jones and
Essential Jpeg are reasonably pertinent to the particular problem with which
Appellants were concerned, namely the creation of a file used in computer-
simulated generation of surface patterns (see Spec. ¶2) (see also In re Clay,
966 F.2d 656, 658–59 (Fed. Cir. 1992)).
Although Appellants also contend that Jones requires users to interact
with external databases (App. Br. 6), they “concede that a Jpeg file can exist
without references to external databases of color, texture, or manufacturing
characteristics” (App. Br. 7). We conclude that one of ordinary skill in the
art would reasonably have understood from Essential Jpeg that image
information may be incorporated into appropriately formatted files so that
viewing software may be operated without reference to external databases.
As such, the incorporation of the information disclosed by Jones into a file
so that viewing software may be operated to create surface pattern
simulations without reference to external databases was obvious at the time
of the invention.
We therefore disagree that the Examiner has erred in finding claim 1
obvious over the combination of Jones and Essential Jpeg.
Claims 2–6, 8, and 11 depend from claim 1. While Appellants
provide cursory arguments that the additional recitations of these claims are
not taught by Jones, such arguments are incommensurate with the scope of
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the claims for the reasons given by the Examiner (Ans. 16–18), which we
adopt as our own.
We accordingly sustain the Examiner’s rejections of claims 1–6, 8,
and 11 under 35 U.S.C. § 103(a).

Issue 4
Rejection of claims 7, 9, and 10 under 35 U.S.C. § 103(a)

The rejection of claims 7, 9, and 10 under 35 U.S.C. § 103(a) presents
us with the issue of whether the Examiner erred in finding claims 7, 9, and
10 obvious over the combination of Jones, Essential Jpeg, and Birch.
Appellants’ argument that “Birch does not teach the inclusion of yarn
texture characteristics in an image file” (App. Br. 9) attacks Birch
individually when the Examiner has, in fact, relied on the combination of
Jones, Essential Jpeg, and Birch to support the rejection under 35 U.S.C.
§ 103(a). Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior-art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In light of Birch’s disclosure of yarn texture characteristics as
relevant in simulating patterns, color, and texture (see Birch, col. 5, ll. 57–
60), we conclude that the Examiner has not erred in finding claims 7, 9, and
10 obvious over the combination of Jones, Essential Jpeg, and Birch.
We accordingly sustain the Examiner’s rejections of claims 7, 9, and
10 under 35 U.S.C. § 103(a).

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Issue 5
Rejection of claims 12–17, 19, and 20 under 35 U.S.C. § 103(a)

The rejection of claims 12–17, 19, and 20 under 35 U.S.C. § 103(a)
presents us with the issue of whether the Examiner erred in finding claims
12–17, 19, and 20 obvious over the combination of Jones, Essential Jpeg,
and Official Notice.3
Appellants’ arguments substantially reiterate the arguments we
consider supra that the combination of Jones and Essential Jpeg fails to
suggest a file “that encapsulates the entirety of the data required by []
viewing software to create [a] surface pattern simulation” (App. Br. 10). For
the reasons we have expressed supra, we disagree that the Examiner has
erred. With respect to Appellants’ assertions regarding dependent claims
13–17 and 19, we agree with the Examiner’s reasoning (Ans. 20–21), which
we adopt as our own.
We accordingly sustain the Examiner’s rejections of claims 12–17,
19, and 20 under 35 U.S.C. § 103(a).

Issue 6
Rejection of claim 18 under 35 U.S.C. § 103(a)

The rejection of claim 18 under 35 U.S.C. § 103(a) presents us with
the issue of whether the combination of Jones, Essential Jpeg, and Official
Notice renders obvious “a second chunk header and an associated second

3 The Examiner takes Official Notice that “the use of the header associating
data in a file system was well known at the time the invention was made in
the analogous art of a simulation system” (Ans. 12), but associates that
taking of Official Notice with the rejection of claim 18 rather than with the
rejection of claims 12–17, 19, and 20. This apparently inadvertent
misassociation is harmless error.
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chunk containing at least one of intellectual property notices, encryption
information, watermarks, password information, auditing information, and
pattern version control information.”
In addition to disclosing pattern information, Jones teaches a system
that enables multiple versions of designs through customization,
manipulation, and other techniques (Jones ¶40). Appellants do not challenge
the Official Notice that “the use of the header associating data in a file
system was well known at the time the invention was made” (Ans. 12) and
do not contest the Examiner’s identification of the rationales provided in
connection with Issues 3 and 5 as relevant to the limitation (Ans. 21). We
therefore sustain the Examiner’s rejection of claim 18 under 35 U.S.C.
§103(a).

CONCLUSION
On the record before us, we conclude the following:
(1) The Examiner did not err in rejecting claims 12–19 under 35
U.S.C. § 101.
(2) The Examiner did not err in rejecting claim 12 under 35 U.S.C.
§102(b).
(3) The Examiner did not err in rejecting claims 1–17, 19, and 20
under 35 U.S.C. §103(a).
(4) The Examiner did not err in rejecting claim 18 under 35 U.S.C.
§ 103(a).

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DECISION
The Examiner’s decision rejecting claims 1–20 is affirmed.
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

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