Ex Parte Ciscon et al

Patent Trial and Appeal Board

Mar 29, 2017

10209531 (P.T.A.B. Mar. 29, 2017)

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
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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.
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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
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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
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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
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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.,
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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 combination”’
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
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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 pleasing”).
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
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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
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§ 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.”). 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
repository”, a “processor”, 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.
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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 software”. 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.
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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
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