Ex Parte Ferren et al

Patent Trial and Appeal BoardSep 18, 2014

10909132 (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRAN FERREN and CLARENCE T. TEGREENE ____________ Appeal 2012-005741 Application 10/909,132 Technology Center 2100 ____________ Before JOSEPH F. RUGGIERO, JOHN A. EVANS, and MINN CHUNG, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review2 under 35 U.S.C. § 134(a) of the Examiner’s final rejection of Claims 22–30 and 33–543 as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.4 1 The Real Party in Interest is Searete, LLC. 2 We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). 3 App. Br. 12. 4 Our Decision refers to Appellants’ Supplemental Appeal Brief filed September 22, 2011 (“App. Br.”); Reply Brief filed February 29, 2012 Appeal 2012-005741 Application 10/909,132 2 STATEMENT OF THE CASE The claims relate to a method for producing a model of an interior configuration of one or more three-dimensional objects within a three- dimensional interior space. See Abstract. Claims 22, 33, 41, and 48 are independent. The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(iv). An understanding of the invention can be derived from a reading of exemplary Claim 22, which is reproduced below: 22. A system for use in design of a space, comprising: [a] one or more computer storage media configured to store one or more representations of one or more items to fit within the space; [b] user interface configured to receive input indicative of at least one user selected item drawn from the one or more items to fit within the space said user interface operably coupled with at least one of the one or store computer storage media, [c] a fabrication device operative to receive at least one representation of the at least one user selected item drawn from the one or more items to fit within the space and produce one or more three dimensional objects representative of the at least one user selected item, said fabrication device operably coupled with at least one of the one or more computer storage media; [d] a placement device configured to receive at least one of the one or more three dimensional objects representative of the at least one user selected item produced by said fabrication device and to place the one or more three dimensional objects representative of the at least one user selected item in the space; (“Reply Br.”); and the Examiner’s Answer mailed December 29, 2011 (“Ans.”). Appeal 2012-005741 Application 10/909,132 3 and [e] an imaging system aligned to capture a representation of the space and the at least one of the one or more three dimensional objects placed by the placement device in the space. References and Rejections Claims 22–30 and 33–54 stand rejected under 35 U.S.C. § 103(a) as obvious over MacInnes (US 7,277,572 B2; pub. Oct. 2, 2007, filed Oct. 10, 2003), Farren (US 6,665,574 B2; Dec. 16, 2003), and Baumberg (US 2003/0218607 A1; Nov. 27, 2003). Ans. 5–12.5 ANALYSIS INDEPENDENT CLAIMS 22, 33, 41, AND 48 Appellants group independent Claims 22, 33, 41, and 48 together. App. Br. 12–13. The Examiner finds that the combined teachings of MacInnes, Farren, and Baumberg meet each limitation of all the claims under appeal. Ans. 5–12; 12–17. We find that the Examiner has made a prima facie case of obviousness regarding the claims under appeal. Thus, the burden of persuasion passes to Appellants. Appellants set forth certain recitations of Claim 22 and then state that the Examiner finds that Farren teaches at least some of the text of Claim 22, but has not provided any objectively verifiable evidence supporting these 5 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). Appeal 2012-005741 Application 10/909,132 4 assertions and the Examiner fails to provide the broadest reasonable interpretation consistent with the specification of independent Claim 22 through its unreasonable mapping of the claim onto MacInnes. App. Br. 40. Moreover, Appellants quote § 37 C.F.R. to support their proposition that Appellants’ Brief “notes instances in which the Patent Office did not follow the prescribed rules . . .” App. Br. 40, n. 8. We find that Appellants have failed to present substantive arguments and supporting evidence persuasive of Examiner error regarding the aforementioned disputed limitation. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Our finding is informed by Appellants’ admission that they have no duty to produce evidence until the examiner has established a prima facie case of the unpatentability of any claim at issue, so until the Board rules on the appealed prima facie case issues, it is unclear as to whether the function of Examiner fact finding will/should ever be reached. Reply Br. 5, n. 3. Furthermore, Appellants admit “this document notes instances in which [Appellants allege] the Patent Office did not follow the prescribed rules rather than interpreting claims and/or to adducing evidence on the Patent Office’s behalf.” App. Br. 100, n. 24. In view of the foregoing, we are not persuaded that the Examiner has erred in finding Claims 22–30 and 33–54 to be obvious over the prior art. Appeal 2012-005741 Application 10/909,132 5 DECISION The rejection of Claims 22–30 and 33–54 under 35 U.S.C. § 103 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 tj