Ex Parte Floyd et al

Patent Trial and Appeal Board

Jan 29, 2019

15185785 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/185,785 06/17/2016
128836 7590 01/31/2019
WOMBLE BOND DICKINSON (US) LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
FIRST NAMED INVENTOR
Joseph Frank Floyd
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
B86918 2240US.l (0141.2) 5457
EXAMINER
WU,YANNA
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
patentadmin@Boeing.com
ipdocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH FRANK FLOYD, PA TRICK JAMES EAMES, BRENT
LOUIS HADLEY, ROBERT JAMES MARTIN, NICHOLAS SHEPHERD,
IV AN RUMSEY, and JEREMY DAVID SCOTT
Appeal2018-005549
Application 15/185, 785 1
Technology Center 3600
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and JENIFFER S. BISK,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, The Boeing Company is the real party in interest
(App. Br. 1 ).
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Application 15/185, 785
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Appellants disclose and claim an apparatus for ( claim 1 ), a method of
(claim 9), and a computer-readable storage medium for (claim 17), rendering
a scene including a three-dimensional (3D) model of a structure, such as "a
3D model of a large and complex structure such as an aircraft" (Spec. ,r 4).
See Title; Abstract; Spec. ,r,r 1--4. Using computer aided design (CAD)
software, digital design of a structure in 3D can be improved by using a
multi-pass rendering process. See Title; Abstract; Spec. ,r 3; Claims 1, 9, 17;
Fig. 2. Exemplary independent claim 1 under appeal, with emphases added,
reads as follows:
1. An apparatus for rendering a scene including a digital
three-dimensional (3D) model of a structure, the apparatus
comprising a processor and a memory storing
executable instructions that, in response to execution by the
processor, cause the apparatus to at least:
load a scene graph composed of a hierarchical group of
nodes representing respective 3D objects of the digital 3D
model;
traverse the scene graph and select nodes of the
hierarchical group of nodes, the nodes so selected representing
a plurality of 3D objects of the respective 3D objects of the
digital 3 D model;
add the plurality of 3D objects to a render queue; and
after the scene graph is traversed and the nodes are
selected and the plurality of 3D objects are added to the render
queue:
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perform a multiple-pass rendering of the plurality of 3D
objects from the render queue, the apparatus being caused to
perform the multiple-pass rendering including in a pass of a
plurality of passes, the apparatus being caused to render a
threshold portion but not all of the plurality of 3D objects to a
frame buffer for output to a display device, at least one of the
plurality of 3D objects being left in the render queue after
rendering the threshold portion.
Examiner's Rejections
(1) The Examiner rejected claims 1, 2, 4, 5, 9, 10, 12, 13, 17, 18, 20,
and 21 as being unpatentable under 35 U.S.C. § I03(a) over Berdardini (US
6,574,360 Bl; issued June 3, 2003), Davidson (US 8,576,228 B2; issued
Nov. 5, 2013), and Zhu (US 2012/0260157 Al; published Oct. 11, 2012). 2
Final Act. 3-12; Ans. 3-9.
(2) The Examiner rejected claims 3, 11, and 19 under 35 U.S.C.
§ I03(a) as being unpatentable over the base combination of Berdardini,
Davidson, and Zhu, taken with Levanon (US 2007/0182734 Al; published
Aug. 9, 2007). Final Act. 12-14.
(3) The Examiner rejected claims 6, 14, and 22 under 35 U.S.C.
§ I03(a) as being unpatentable over the base combination of Berdardini,
2 Appellants present general arguments as to claims 1-24 as a group without
discussing any particular claim, and primarily argue with regard to
independent claims 1, 9, and 17 that (i) Zhu is non-analogous art (App. Br.
7-10; Reply Br. 3-5); and (ii) there is no motivation to combine the
references (App. Br. 10-15; Reply Br. 6-7). Claims 1, 9, and 17 recite
similar subject matter pertaining to rendering a scene of a digital 3D model
of a structure by performing multiple-pass rendering on 3D objects after a
scene graph is traversed. We select independent claim 1 as representative of
the group of claims consisting of claims 1, 2, 4, 5, 9, 10, 12, 13, 17, 18, 20,
and 21.
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Davidson, and Zhu taken with Zimmennan (US 2013/0330055 Al;
published Dec. 12, 2013). Final Act. 14--16.
(4) The Examiner rejected claims 7 and 8 under 35 U.S.C. § I03(a) as
being unpatentable over the base combination of Berdardini, Davidson, and
Zhu taken with Bishop (US 4,910,683; issued Mar. 20, 1990). Final Act.
16-20.
Principal Issues on Appea/3
Based on Appellants' arguments (App. Br. 4--17; Reply Br. 1-9), the
following principal issue is presented:
Did the Examiner err in rejecting claims 1-24 as being unpatentable
under 35 U.S.C. § I03(a) over the base combination ofBerdardini,
Davidson, and Zhu as being obvious because the references are not properly
combinable and/or Zhu is non-analogous to Appellants' invention recited in
representative claim 1?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 3-20) in light
of Appellants' contentions in the Appeal Brief (App. Br. 4--17; Reply Br. 1-
3 Appellants rely on the arguments presented as to independent claims 1, 9,
and 17 with respect to the patentability of claims 3, 6-8, 11, 14, 19, and 22
depending respectively therefrom, and fail to present any separate
arguments with regard to the rejections of (i) claims 3, 11, and 19 under
§ I03(a) over Berdardini, Davidson, Zhu, and Levanon; (ii) claims 6, 14, and
22 under§ I03(a) over Berdardini, Davidson, Zhu, and Zimmerman; and/or
(iii) claims 7 and 8 under§ I03(a) over Berdardini, Davidson, Zhu, and
Bishop (see App. Br. 16; Reply Br. 7-8). Therefore, we will decide the
outcome for the rejections of claims 3, 6-8, 11, 14, 19, and 22 with the
outcome of claim 1 pertaining to the base combination of Berdardini,
Davidson, and Zhu.
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9) that the Examiner has erred, as well as the Examiner's response to
Appellants' arguments in the Appeal Brief (Ans. 3-9). We disagree with
Appellants' arguments and conclusions.
With regard to representative claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 3-7), as well as the Advisory Action mailed
October 27, 2017 (p. 2); and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 3-9). We
concur with the conclusions reached by the Examiner as to claim 1, and
highlight and address specific findings and arguments for emphasis as
follows.
Motivation
A rationale to support a conclusion that a claim would have been
obvious is that all the claimed elements were known in the prior art and one
skilled in the art would have combined the elements as claimed by known
methods with no change in their respective functions, and the combination
would have yielded nothing more than predictable results to one of ordinary
skill in the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 538, 416 (2007).
Such understandings about reasons to combine or countervailing reasons not
to combine could come from the knowledge, skill, and creativity of the
ordinarily skilled artisan. KSR, 550 U.S. at 418.
In the instant case, we agree with the Examiner's well-articulated
rationale for combining the teachings of Berdardini, Davidson, and Zhu (see
Final Act. 3-7; Ans. 3-9; Adv. Act. p. 2). Specifically, we agree with the
Examiner that (i) Davidson teaches a rendering queue (Final Act. 6);
(ii) Berdardini in view of Davidson teaches traversing a scene graph,
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selecting nodes, and adding 3D objects to a rendering queue to perform
rendering while traversing a scene graph (Final Act. 6); (iii) Zhu teaches
nodes are selected and objects are saved to perform rendering after a scene
graph is traversed (Final Act. 7); (iv) it would have been obvious to try
Zhu's method (performing rendering after scene graph traversal) from the
available options (i.e., during and after traversal). See Final Act. 7; Ans. 5.
Furthermore, we agree with the Examiner's response to Appellants'
arguments concerning the motivation to combine as stated at pages 3-9 of
the Answer, and specifically that (i) Zhu is analogous art (Ans. 3--4); (ii) it
would have been obvious to try Zhu's method of rendering after scene graph
traversal in place of Berdardini in view of Davidson's method of rendering
during scene graph traversal (Ans. 5); and (iii) it would have been obvious
to modify Berdardini's Process Octree Node procedure 304 to render
primitives assigned to current leaf nodes after the tree is traversed as shown
in Berdardini's Figure 8B (Ans. 7-9).
We agree with the Examiner (Ans. 7-9) that modifying Berdardini's
process shown in Figure 8B with Zhu's process of rendering after scene
graph traversal can be done by combining Zhu's teachings after step 3048
( which checks if the node is a leaf node) within Berdardini' s process shown
in Figure 8B, such that after a leaf node is discovered at step 3048, at step
3050 objects are saved in memory instead of being rendered, and then
objects saved in memory can be retrieved and rendered after the tree
traversal loop is finished, while still inserting valid occludes into an
occlusion map (see Ans. 8). Further, we agree with the Examiner's
explanation in the Advisory Action, as follows:
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Berdardini uses an on-line rendering method, i.e. the raw
3D objects are converted into a octree data struture, during
traversing the octree, when a leaf node that need to be rendered
is found, the method will render the leaf node immedially. By
combing the teachings of Berdardini, Davidson and Zhu, an
rendering queue is introduced, when a leaf node that need to be
rendered is found, this leaf node saved into the rendering queue.
After the octree is traversed, the nodes are selected and the 3D
objects are added to the render queues, perform the rendering of
3D objects (leaf nodes). The occlusion map is just used to
decide which node is to be rendered, it does not control the
rendering time of a node. If the current leaf node is not rendered
during traversal before updating the occlusion map, and instead
is saved in a render queue. It still can be aquired from the
render queue later and be rendered.
Adv. Act. p. 2.
Reasonable Expectation of Success
Where there is a reason to modify or combine the prior art to achieve
the claimed invention, the claims may be rejected as prima facie obvious
provided there is also a reasonable expectation of success. In re Merck &
Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986); Amgen Inc. v. F. Hoffman-LA
Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) ("An obviousness
determination requires that a skilled artisan would have perceived a
reasonable expectation of success in making the invention in light of the
prior art.").
The "reasonable expectation of success" requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention, and does not look to whether one would reasonably expect the
prior art references to operate as those references intended once combined.
Instead, there must be a motivation to combine accompanied by a reasonable
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expectation of achieving what is claimed. The teachings of the prior art can
provide a sufficient basis for a reasonable expectation of success. In re
Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 2009). In the case before us,
the Examiner has met this burden in making findings about the teachings of
the individual references as they relate to the claimed subject matter.
Specifically, the Examiner makes findings as to why a person of ordinary
skill in the art would have a reasonable expectation of success, based on the
teachings of the references (see Final Act. 3-7; Ans. 3-9). See Merck &
Co., Inc., 800 F.2d 1091; see also Final Act. 3---6 (finding Berdardini and
Davidson are in the analogous art of rendering 3D objects of a 3D
image/model); Ans. 4 (Zhu is in an analogous art of objects rendering).
In addition, evidence showing there was no reasonable expectation of
success may support a conclusion of nonobviousness. In re Rinehart, 531
F.2d 1048 (CCPA 1976). In the instant case, Appellants have not provided
sufficient evidence or reasoning showing there was no reasonable
expectation of success. In light of our agreement with the Examiner's
articulation of the motivation and reasoning for modifying Berdardini's
process shown in Figure 8B with Davidson and Zhu discussed supra,
Appellants' contentions (see App. Br. 11-15; Reply Br. 6-7) do not
persuade us that the Examiner erred.
Analogous Art
Appellants do not dispute the Examiner's determination (see Final
Act. 3-7) that the combined teachings and suggestions of Berdardini
(method and apparatus for rendering a scene including a digital 3D model of
a structure), Davidson ( adding elements to a rendering queue for rendering
of 3D images), and Zhu (object rendering) render obvious the subject matter
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recited in representative claim 1. Instead, Appellants' arguments (App. Br.
8-10; Reply Br. 4--5) of record are primarily drawn to whether one of
ordinary skill in the rendering art would have looked to Zhu ( alleged to
relate to saving battery life in a mobile device during mobile browsing) to
improve object rendering in Berdardini (i.e., whether Zhu is analogous art).
For the reasons that follow, we find Zhu (as well as Berdardini and
Davidson, which are also drawn to object rendering of a 3D scene) to be
analogous to the subject matter recited in claim 1.
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MGA
Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
A reference is considered analogous prior art: ( 1) if the reference is from the
same field of endeavor as the claimed subjected matter, regardless of the
problem addressed, or (2) if "the reference still is reasonably pertinent to the
particular problem with which the inventor is involved," even though the
reference is not within the field of the inventor's endeavor. Bigio, 381 F.3d
at 13 2 5 ( emphasis added). 4
4 We agree with the Examiner (see Ans. 3--4) that the second step of the
correct test for analogous art is whether the reference is reasonably pertinent
to the particular problem with which the inventor's claimed invention is
involved, and not whether the reference is reasonably pertinent to the entire
problem with which the inventor's claimed invention is involved as asserted
by Appellants (see App. Br. 7; Reply Br. 4). And, notably, the PTAB
decision in Schott Gemtron Corp. v. SSW, Final Written Decision, IPR2014-
00367, 2015 WL 3430088, p. 17, 21 (PTAB May 26, 2015), cited by
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The "field of endeavor" test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Id. at 1325-27. It is necessary to
apply "common sense" in "deciding in which fields a person of ordinary skill
would reasonably be expected to look for a solution to the problem facing
the inventor." Id. at 1326 (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992)).
As to the "reasonably pertinent" test: A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem. Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve. If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in
an obviousness rejection. An inventor may well have been motivated to
consider the reference when making his invention. If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it. Clay, 966 F .2d at 659.
In the instant case, we agree with the Examiner (Ans. 3--4) that Zhu is
analogous art to Appellants' claimed invention. Specifically, we agree with
the Examiner that Appellants' invention ( recited in claim 1 - an apparatus
Appellants for support (App. Br. 7; Reply Br. 4), is not a precedential
decision, and therefore not binding in this case.
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for rendering of 3D objects) and Zhu (also an apparatus for rendering
objects, albeit on a mobile phone) are both directed to rendering objects (see
e.g., Zhu ,r,r 48, 49 (describing layered rendering in Z-coordinates by
traversing rendering trees 230). We also agree with the Examiner that Zhu
relates to the same problem as the claimed invention of "how to effectively
reduce the complexity of rendering processing" (see Ans. 5).
In view of the foregoing, we agree with the Examiner (Ans. 3--4) that
Zhu (as well as Berdardini and Davidson), are analogous to the subject
matter recited in representative claim 1 ( objects rendering to produce a 3D
image), and thus, are properly combinable.
Obvious to Try
Appellants contend, with respect to combining Zhu with Berdardini
and Davidson, it would not have been obvious to try using Zhu's process of
performing rendering after traversing a scene graph in place of Berdardini in
view of Davidson's process of doing so during traversal of a scene graph
(see App. Br. 10-11).
The Federal Circuit has previously identified two categories of
impermissible "obvious to try" analyses that run afoul of KSR and § 103:
when what was "obvious to try" was (a) to vary all parameters or try every
available option until one succeeds, where the prior art gave no indication of
critical parameters and no direction as to which of many possibilities is
likely to be successful; or (b) to explore a new technology or general
approach in a seemingly promising field of experimentation, where the prior
art gave only general guidance as to the particular form or method of
achieving the claimed invention. See In re Kubin, 561 F.3d 1351, 1359
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(Fed. Cir. 2009) (quoting In re O 'Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988)). We have neither case here before us.
In KSR International Co. v. Teleflex Inc., 550 U.S. 398,421 (2007),
the Federal Court explained that "obvious to try" may apply when "there are
a finite number of identified, predictable solutions" to a known problem.
The Court explained that when the path has been identified and "leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense." Id. This court has elaborated that the identified
path must "present a finite ( and small in the context of the art) number of
options easily traversed to show obviousness." Ortho-McNeil Pharm., Inc.
v. Mylan Labs., Inc., 520 F. 3d 1358, 1364 (Fed. Cir. 2008). This is the case
before us. Namely, we agree with the Examiner (Ans. 5) that we have two
specific and limited options to choose from: (1) performing rendering while
traversing a scene graph (as in Berdardini in view of Davidson), or
(2) performing rendering after traversing a scene graph (as in Zhu). One of
ordinary skill in the art would understand that performing rendering before
traversing a scene graph would not be an option since no data would be
available yet for rendering.
Summary
In view of the foregoing, the references are properly combinable and
are analogous to Appellants' recited invention, and as a result, Appellants
have not sufficiently shown that the base combination of Berdardini,
Davidson, and Zhu fails to teach or suggest apparatus for rendering a scene
by performing multiple-pass rendering after the scene graph is traversed, as
recited in representative claim 1. Therefore, we sustain the Examiner's
obviousness rejection of claim 1 over the base combination of Berdardini,
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Davidson, and Zhu, as well as claims 2, 4, 5, 9, 10, 12, 13, 17, 18, 20, and 21
grouped therewith. And, for the same reasons as provided for claim 1, we
also sustain the Examiner's remaining obviousness rejections over the same
base combination taken with either Levan on ( claims 3, 11, and 19),
Zimmerman ( claims 6, 14, and 22), or Bishop ( claims 7 and 8).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-24 as being
obvious over the base combination of Berdardini, Davidson, and Zhu.
(2) The Examiner has provided sufficient motivation to combine
Berdardini, Davidson, and Zhu.
(3) Zhu is analogous art as it pertains to the subject matter recited in
representative claim 1; therefore, the Examiner did not err in rejecting
claims 1-24 as being obvious over the base combination of Berdardini,
Davidson, and Zhu because the references are properly combinable and are
analogous to Appellants' recited invention.
DECISION
The Examiner's rejections of claims 1-24 under 35 U.S.C. § 103(a)
are 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)(l)(iv).
AFFIRMED
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