AUTODESK, INC.

Patent Trials and Appeals Board

Mar 25, 2022

2021001330 (P.T.A.B. Mar. 25, 2022)

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. 15/675,645 08/11/2017 Tovi GROSSMAN AUTO1406US1 1021 107456 7590 03/25/2022 Artegis Law Group, LLP John Carey 7710 Cherry Park Drive Suite T #104 Houston, TX 77095 EXAMINER HE, WEIMING ART UNIT PAPER NUMBER 2612 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): algdocketing@artegislaw.com jmatthews@artegislaw.com sjohnson@artegislaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOVI GROSSMAN and BENJAMIN LAFRENIERE Appeal 2021-001330 Application 15/675,645 Technology Center 2600 Before CAROLYN D. THOMAS, MICHAEL J. ENGLE, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1-21.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Autodesk, Inc. Appeal Br. 3. Appeal 2021-001330 Application 15/675,645 2 CLAIMED SUBJECT MATTER The claims “relate generally to a three-dimensional (3D) design application, and, more specifically, to techniques for transitioning from a first navigation scheme to a second navigation scheme.” Spec. ¶ 1. The Specification discloses that in 3D design applications, different types of navigation schemes can be used to navigate the 3D virtual environment. Spec. ¶ 3. The Specification further teaches that the 3D design application typically “implements a ‘standard’ navigation scheme using orbit, pan, and zoom navigation tools” which is “specifically optimized for object-centric navigation . . . that is particularly useful in 3D design applications.” Spec. ¶ 3. The Specification notes that this standard navigation scheme “has proven difficult for beginner users to use proficiently, and often results in beginners discontinuing use of the 3D design applications.” Spec. ¶ 3. Thus, 3D design applications are sometimes provided navigation schemes which are more intuitive for beginner users. One example described in the specification is a “first-person navigation scheme, including a set of navigation tools (such as camera position in camera orientation tools).” Spec. ¶ 26. The Specification discloses that a “3D design application may initially enable the first-person navigation scheme, whereby the user initially navigates through the 3D virtual environment and interacts . . . with the virtual objects using the first-person navigation scheme.” Spec. ¶ 26. The Specification further describes that there are certain navigation patterns in the first-person navigation scheme which can be performed more efficiently using the “standard” navigation scheme. Spec. ¶ 27. In these instances, “the 3D design application detects a predetermined pattern using the first-person Appeal 2021-001330 Application 15/675,645 3 navigation scheme [and] may . . . automatically switch the first-person navigation scheme to the standard navigation scheme.” Spec. ¶ 27. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for navigating a three- dimensional (3D) virtual environment that includes one or more objects, the method comprising: enabling a first navigation scheme for interpreting inputs and navigating the 3D virtual environment; receiving one or more inputs that, when interpreted using the first navigation scheme, cause a first navigation action to occur within the 3D virtual environment; receiving one or more other inputs that, when interpreted using the first navigation scheme, cause a second navigation action to occur within the 3D virtual environment, wherein the second navigation action is different from the first navigation action; determining that the first navigation action and the second navigation action form a navigation pattern of navigation actions that corresponds to a first navigation pattern included in a set of navigation patterns; and in response to determining that the first navigation action and the second navigation action form a navigation pattern of navigation actions that corresponds to the first navigation pattern, enabling a second navigation scheme for interpreting inputs and navigating the 3D virtual environment, wherein inputs are interpreted differently under the second navigation scheme than under the first navigation scheme. Appeal Br. 16 (Claims Appendix). Appeal 2021-001330 Application 15/675,645 4 REFERENCES2 The Examiner relies on these references: Name Reference Date Khan US 2004/0001110 A1 Jan. 1, 2004 Baneth US 2005/0268247 A1 Dec. 1, 2005 Safe 3D Navigation, published 12/7/2015, https://www.youtube.com/watch?v=WsvPhTC150M on 11/20/2018, last visited Feb. 2022, hereinafter “Safe 3D” REJECTIONS3 Claims 1-4, 7, 10-16, 19, and 21 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Khan. Final Act. 3. Claims 5, 6, 8, 17, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Khan and Safe 3D Navigation. Final Act. 8. Claims 9 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Khan and Baneth. Final Act. 12. ISSUE Has the Examiner erred in finding Khan discloses the disputed limitation: in response to determining that the first navigation action and the second navigation action form a navigation pattern of navigation actions that corresponds to the first navigation pattern, enabling a second navigation scheme for interpreting inputs and navigating the 3D virtual environment, wherein 2 Citations to the references are to the first named inventor/author only. 3 Claims 1-21 were rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 2-3. In the Answer, the Examiner withdrew the indefiniteness rejection and attempted to add a new rejection under § 112. Ans. 8. See section “Procedural Error with New Ground of Rejection” for further explanation. . Appeal 2021-001330 Application 15/675,645 5 inputs are interpreted differently under the second navigation scheme than under the first navigation scheme, as recited in claim 1? ANALYSIS The Examiner rejects claim 1 as anticipated by Khan. Final Act. 3-5; Ans. 3-8. With respect to the disputed limitation, the Examiner finds Khan’s description of a normal, model facing orientation for viewing a 3D model (Khan ¶ 12) discloses a first navigation scheme, and object- centered/object-centric viewing (Khan ¶ 43) discloses a second navigation scheme. Final Act. 5. In the Answer, the Examiner adjusts his position, finding that Khan’s “camera position or camera orientation tool,” as described in paragraphs 13 and 38, discloses the recited “first navigation scheme.” Ans. 5. The Examiner also finds Khan’s “panning and zooming tool” discloses the recited “second navigation scheme.” Ans. 6 (citing Khan ¶¶ 46-48). Appellant offers several arguments alleging error in the findings made by the Examiner. We need only address one, which we find dispositive of the issues before us. Appellant contends: [E]ven if Khan disclosed a panning and zooming tool that could be equated to the claimed second navigation scheme, in order to meet the above limitations of the independent claims, Khan would need to disclose that the panning and zooming tool is enabled in response to determining that a first navigation action and a second navigation action form a navigation pattern of navigation actions that corresponds to a first navigation pattern. Importantly, Khan contains no such teachings. As previously noted, Khan discloses only that, in an object-centric viewing mode, the view point of a view of a model is moved according to two-dimensional input to simulate holding and turning an object. See [Khan ¶ 46]. Notably, Khan is completely silent with respect Appeal 2021-001330 Application 15/675,645 6 to the two-dimensional input or associated mechanisms being a navigation scheme that is enabled, in the first instance, in response to determining that a first navigation action and a second navigation action form a navigation pattern of navigation actions that corresponds to a first navigation pattern, as required by the language of claims 1, 10, and 19. Reply Br. 4 (emphasis added). Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top- U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the strict identity requirement for anticipation, all elements must be disclosed, in a single reference, in exactly the same way as they are arranged or combined in the claim. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Here, we agree with Appellant that the Examiner has failed to meet this exacting standard. Specifically, we agree that the Examiner makes no findings sufficient to demonstrate that Khan discloses that the panning and zooming tool (which the Examiner finds corresponds to the “second navigation scheme”) is enabled “in response to determining that the first navigation action and the second navigation action . . . correspond[] to the first navigation pattern,” as recited in the disputed limitation. At best, the Examiner’s findings with respect to Khan show that two different navigation schemes are utilized in Khan’s system, but there is no indication that navigation actions within one scheme cause the other scheme to be enabled. That is, we do not discern in Khan, in the cited portions or otherwise, any instance where navigation actions in one mode result in a switch to another mode. Because Khan does not disclose identically the disputed limitation, we do not sustain the anticipation rejection of claim 1. For the same reasons, Appeal 2021-001330 Application 15/675,645 7 we also do not sustain the rejection of claims 10 and 19, which also recite the disputed limitation. Remaining Claims The remaining claims are dependent, and stand together with their respective independent claims. See 37 C.F.R. § 41.37(c)(1)(iv). PROCEDURAL ERROR WITH NEW GROUND OF REJECTION In the Answer, the Examiner states that although the indefiniteness rejection is withdrawn, “[t]he correct rejection on claims 1-21 would be under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.” Ans. 8. It appears that the Examiner may have intended this statement as having the effect of entering a new ground of rejection pursuant to 37 C.F.R. § 41.39(a)(2). However, this statement does not meet the requirements for a new ground of rejection as set forth in MPEP § 1207.03, which state that “[a]ny new ground of rejection made by an examiner in an answer must be: (A) approved by a Technology Center (TC) Director or designee; and (B) prominently identified in the ‘Grounds of Rejection to be Reviewed on Appeal’ section and the ‘Grounds of Rejection’ section of the Answer.” MPEP § 1207.03. Here, the rejection is not identified in the “Grounds of Rejection to be Review on Appeal” section of the Answer (see Ans. 3), and the Answer includes no heading entitled “New Grounds of Rejection.” Moreover, there is no indication in the Answer that a TC Director (or a designee) approved a new ground of rejection under 35 U.S.C. § 112, first paragraph. Appellant does not respond in the Reply Brief to the Examiner’s indication that a written description rejection of the claims is appropriate, which suggests that as a result of the Examiner’s failure to include the Appeal 2021-001330 Application 15/675,645 8 required heading “New Grounds of Rejection,” Appellant was not afforded an opportunity to adequately respond. Given that the procedural requirements for a new ground of rejection have not been met, and given that Appellant did not respond, it would be unfair to Appellant to overlook the procedural missteps and treat the written description rejection as having been made. As such, we consider the indefiniteness rejection to have been withdrawn, and claims 1-21 are not currently rejected under either subsection of 35 U.S.C. § 112. We express no opinion on the merits of the Examiner’s proposed rejection for lack of written description. CONCLUSION We reverse the Examiner’s decision to reject the claims. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7, 10- 16, 19, 21 102(a)(1) Khan 1-4, 7, 10- 16, 19, 21 5, 6, 8, 17, 18 103 Khan, Safe 3D 5, 6, 8, 17, 18 9, 20 103 Khan, Baneth 9, 20 Overall Outcome 1-21 REVERSED