Ex Parte Ciscon et alDownload PDFPatent Trial and Appeal BoardMar 29, 201710209531 (P.T.A.B. Mar. 29, 2017) Copy Citation 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. 10/209,531 07/31/2002 Lawrence A. Ciscon 14335/002001 6785 22511 7590 03/31/2017 O SH ATT ANfi T I P EXAMINER TWO HOUSTON CENTER ARAQUE JR, GERARDO 909 FANNIN, SUITE 3500 HOUSTON, TX 77010 ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): docketing@oshaliang.com hathaway@oshaliang.com escobedo @ oshaliang. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAWRENCE A. CISCON, EUGENE P. GILES, DAVID E. EASTERBY, DONNA G. RABALAIS, BERNARD T. BARCIO, KETIH L. SMITH, and MARY T. FUZAT Appeal 2015-007287 Application 10/209,5311 Technology Center 3600 Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s non-final rejection of claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Trelligence Inc. as the real party in interest. Br. 4. Appeal 2015-007287 Application 10/209,531 SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants claim a method and system/device for leveraging functional knowledge in an engineering project. (Spec. 126.). Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method of leveraging functional knowledge in an engineering project, comprising: obtaining a first requirement of the engineering project, related to at least one style choice, from a customer, wherein the first requirement defines a first physical object for the engineering project and a first attribute associated with the first physical object; storing the first requirement in an applied functional knowledge (AFK) repository comprising: a functional data framework comprising an entity-relation-constraint data store and a geometric entity model, a domain framework comprising a taxonomy layer comprising an industry constraint and industry information, an output module comprising a tool interface and an interface driver, wherein the interface driver is configured to extract information from the AFK repository and present the information in a standard format to external systems, the at least one style choice made by the customer corresponding to the building, at least one non-structural relationship between a plurality of physical objects used to construct a building, and at least one of a plurality of non-structural constraints corresponding to the plurality of physical objects, wherein one or more of the plurality of 2 Appeal 2015-007287 Application 10/209,531 non-structural constraints comprise information about planned customer use of the building; creating, by a processor, a first entity corresponding to the first physical object; associating the first entity with the first attribute to obtain a first attributed entity; associating the first attributed entity with the first requirement to obtain a first attributed requirement; obtaining a second requirement of the engineering project, related to the at least one nonstructural relationship between physical objects of the building, from the customer, wherein the second requirement defines a second physical object for the engineering project and a second attribute associated with the second physical object; creating, by the processor, a second entity corresponding to the second physical object; associating the second entity with the second attribute to obtain a second attributed entity; associating the second attributed entity with the second requirement to obtain a second attributed requirement; obtaining a third requirement of the engineering project from the customer, wherein the third requirement defines at least one of the plurality of non structural constraints based on at least one of the first attributed requirement and the second attributed requirement; generating, by the processor and before using a computer aided design (CAD) program, a preliminary design using the first requirement and second requirement that satisfies the third requirement; modifying the first attributed requirement based on input from the customer; identifying, as the modification of the first attributed requirement is performed, a violation of at least one of the plurality of non-structural constraints; and modifying the first attributed requirement based on the violation, wherein the preliminary design is used to generate a detailed design when each of the plurality of non-structural constraints is satisfied, wherein the detailed design is used to perform the engineering project for the customer. 3 Appeal 2015-007287 Application 10/209,531 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Pray US 4,885,694 Dec. 5, 1989 Kemp US 2001/0047251 Al Nov. 29, 2001 Akasaka US 2007/0250199 Al Oct. 25, 2007 The following rejections are before us for review. Claims 1—22 are rejected under 35U.S.C. § 101. Claims 1—9, 11—20, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Akasaka (US 2007/0250199 Al, published Oct. 25, 2007) in view of Kemp (US 2001/0047251 Al, published Nov. 29, 2001). Claims 10 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Akasaka, Kemp and in further view of Pray (US 4,885,694 issued Dec. 5, 1989). ANALYSIS 35 U.S.C. § 103 REJECTION Each of the independent claims before us, namely, claims 1,11 and 22 requires, in one form or another, “at least one of the first attributed requirement and the second attributed requirement; generating, by the processor and before using a 4 Appeal 2015-007287 Application 10/209,531 computer aided design (CAD) program, a preliminary design using the first requirement and second requirement that satisfies the third requirement;... The Examiner found that Akasaka discloses the AFK depository citing to: (Col. 6-7 Lines 36 -15; Col. 8 Lines 30 - 60; Col. 9 Lines 17 - 40; Col 9 -10 Lines 50 - 2; Col. 10 -11 Lines 24- 23; Col. 11 -12 Lines 35-41; Figs. 23- 26, 28, 29, 31, 32 wherein the system includes a database of information for assisting a user in the generation of a project, e.g., elevator construction and installation. The database includes information pertaining to, but not limited to, industry standard symbols (CAD symbols) that have a corresponding geometric shape and constraint information so as to allow the system and user to determine whether there will be any issues regarding interference. (Non-Final Act. 5, emphasis original). Appellants argue however, Akasaka is completely silent with regards to generation of a preliminary design before a CAD system is used. In fact, as mentioned above, the portion of the requirement of independent claim 1 requiring that the preliminary design be generated before a CAD system is used appears to have been completely ignored by the Examiner in the Action, which is improper. Appellant asserts that Akasaka is largely concerned with using a CAD system to generate elevator designs. The Examiner appears to understand this, as the rejection of claim 1 includes an explanation of how CAD symbols are 5 Appeal 2015-007287 Application 10/209,531 manipulated in a database. Contrast this with the claimed invention, in which a preliminary design is generated, at least in part, using information stored in an AFK repository, and which occurs before a CAD program is used. (Appeal Br. 15). We agree with Appellants. Our review of Akasaka at the sections cited by the Examiner in the Action at page 5, reveals that Akasaka discloses, “The database server 12 is provided with an external storage 9 that stores a drawing database. This drawing database registers a CAD symbol of each product.†Akasaka para. 76. The database which relates to the claimed AFK repository merely registers a CAD symbol of each product whereas the claim requires a first requirement related to at least one style choice be obtained by a customer and stored in the AFK. In Akasaka, the CAD symbols are pre-formed and are not obtained by a customer and are stored regardless of whether each is obtained or not by the customer. The Examiner also found: Kemp clearly demonstrates that it is old and well- known in the art to generate a preliminary design by, at least, collecting information pertaining to an engineering project in order to create an initial, i.e. preliminary, design before using a CAD program, wherein the use of the CAD program results in generating the final design, schematics, blueprints, or the like that are used in order to actually build the engineering project. The Examiner asserts that the invention, as claimed, is broad as to the metes and bounds of what the appellant considers to be a "preliminary design" and, consequently, one of 6 Appeal 2015-007287 Application 10/209,531 ordinary skill in the art, in the broadest reasonable interpretation, would have found it obvious that the questions that are being provided to the user, sketches, and etc. are equivalent to the claimed "preliminary design" and, as is further demonstrated by Kemp, this "preliminary design" serves as the starting points, basis, or the like for generating the more finalized design in CAD which the project will work from. (Answer 12, emphasis original). We disagree with the Examiner because while Kemp does disclose generating a preliminary design, the preliminary design is still part of the CAD program. The Examiner does not explain nor is it apparent how one having ordinary skill in the art would know to modify the database server 12 of Akasaka to include inputs for the preliminary design features of Kemp. Accordingly, we will not sustain the rejection of independent claims 1,11 and 22. Since claims 2-10, and 12-21, depend from claims 1 and 11, respectively, and since we cannot sustain the rejection of claims 1 and 11, the rejection of claims 2-10, and 12 -21 likewise cannot be sustained. 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1—22 under 35 U.S.C. § 101. The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., 7 Appeal 2015-007287 Application 10/209,531 Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.†Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,†id., e.g., to an abstract idea. If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combinationâ€â€™ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.†Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.†Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Applying the framework set forth in Alice, and as the first step of that analysis, we find that the claims are directed to the abstract idea of an engineering process solution where parameters are set out by a user and violations thereof are determined as part of the process— a finding that also is fully consistent with the Specification (see Spec. 11 (stating that in the 8 Appeal 2015-007287 Application 10/209,531 Background, “engineering process strives to produce a solution that satisfactorily performs the required functions while using a minimum of materials, minimizing costs, and still being aesthetically pleasingâ€). Claim 1, for example, recites a method comprising the core steps of: (1) obtaining a first requirement of the engineering project, related to at least one style choice, from a customer, wherein the first requirement defines a first physical object for the engineering project and a first attribute associated with the first physical object, (2) the at least one style choice made by the customer corresponding to the building, at least one non-structural relationship between a plurality of physical objects used to construct a building, and at least one of a plurality of non-structural constraints corresponding to the plurality of physical objects, wherein one or more of the plurality of non-structural constraints comprise information about planned customer use of the building; (3) creating a first entity corresponding to the first physical object; associating the first entity with the first attribute to obtain a first attributed entity; associating the first attributed entity with the first requirement to obtain a first attributed requirement; (4) creating a second entity corresponding to the second physical object; associating the second entity with the second attribute to 9 Appeal 2015-007287 Application 10/209,531 obtain a second attributed entity; associating the second attributed entity with the second requirement to obtain a second attributed requirement; (5) obtaining a third requirement of the engineering project from the customer, wherein the third requirement defines at least one of the plurality of non-structural constraints based on at least one of the first attributed requirement and the second attributed requirement; (6) modifying the first attributed requirement based on input from the customer; identifying, as the modification of the first attributed requirement is performed, a violation of at least one of the plurality of non-structural constraints; and modifying the first attributed requirement based on the violation... . These are the core steps of the claims and all involve acts that could be performed by a human, i.e., either mentally, or manually using pen and paper, without the use of a computer or any other machine, i.e., determining qualifying items based on a set of criteria. The thought process involved here results in “leveraging functional knowledge in an engineering project.†Specification 126. This furthers the bidding process for the design. See Specification 16. We find that furthering a bidding process is a fundamental economic practice. The law is clear that “[a] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under 10 Appeal 2015-007287 Application 10/209,531 § 101.†CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372— 73 (Fed. Cir. 2011); see also Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“[phenomena of nature . . ., mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.â€). Moreover, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.'’’’). Turning to the second step of the Alice analysis, because we find that the independent claims are directed to an abstract idea, the claims must include an “inventive concept†in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to “significantly more†than the abstract idea itself. Here, claim 1, at best, “adds†only a “functional knowledge repositoryâ€, a “processorâ€, a “module†with a “tool interface and driver†i.e., all generic computer components, which does not satisfy the inventive concept. “[Ajfter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm is beside the point.†DDR Holdings, LLC v. 11 Appeal 2015-007287 Application 10/209,531 Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks omitted). Nothing in claims 1, 11 or 22 purports to improve computer functioning or “effect an improvement in any other technology or technical field.†Alice, 134 S. Ct. at 2359. Other than connecting the AFK repository (database) to the output module, the output module is merely recited as presenting data in standard format, which format the Specification describes as being unspecified “third party softwareâ€. Specification | 68. As the Federal Circuit has made clear, “the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium.†See CyberSource, 654 F.3d at 1375—76 (citing In reAbele, 684 F.2d 902 (CCPA 1982)). Because we find that dependent claims 2—10, and 12—21 lack additional elements that would render the claims patent-eligible, we affirm the rejection to these claims as well. CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 1-22 under 35 U.S.C. § 103. We conclude the Examiner did not err in rejecting claims 1-22 under 35 U.S.C. § 101. 12 Appeal 2015-007287 Application 10/209,531 DECISION The decision of the Examiner to reject claims 1-22 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation