Ex Parte Ghantous et al

Patent Trial and Appeal BoardMar 13, 2014

11340123 (P.T.A.B. Mar. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SAMI GHANTOUS, THORD BACKE, and BO NOREN ________________ Appeal 2011-009774 Application 11/340,123 Technology Center 2600 ________________ Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and JENNIFER L. McKEOWN, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009774 Application 11/340,123 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-7 and 12-25. All of the claims stand rejected under 35 U.S.C. § 112, ¶ 1, for failing to comply with the written description requirement, as well as under 35 U.S.C. § 112, ¶ 2, for failing to particularly point out and distinctly claim the subject matter that Appellants regard as the invention. We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445) (Fed. Cir. 1992)). We reverse. STATEMENT OF CASE Appellants describe the present invention as follows: Embodiments of the invention provide a technique for rendering components included in a computer-aided design (CAD) drawing of a utility network, such as system of pipes and related equipment. Display settings may specify whether a particular component should be rendered using 2-line, 1-line or graphical 1-line display representations, based on the size of that component in the CAD drawing. (Abstract). Appeal 2011-009774 Application 11/340,123 3 Independent claim 1 is illustrative: 1. A method for generating a computer-aided design (CAD) drawing of a utility network performed by a computer system programmed to generate the CAD drawing by executing a CAD application, the method comprising: receiving, from a user-input device, a command to add a component to the CAD drawing, wherein a representation of the CAD drawing is displayed in a graphical user interface (GUI) of the CAD application executing on the computer system; selecting, by the CAD application without requiring a user to redraft the CAD drawing, a first display representation to use in rendering a display of the component when a size associated with the component is greater than a user-specified size setting; selecting, by the CAD application without requiring the user to redraft the CAD drawing, a second display representation to use in rendering the display of the component when the size associated with the component is less than the user-specified size setting; parsing, by the CAD application, the CAD drawing to determine that the size associated with the component is greater than the user-specified size setting; displaying, by the CAD application, the component on a display screen using the first display representation; receiving a modification that modifies either the user- specified size setting or the size associated with the component; in response to receiving the modification, parsing, by the CAD application, the CAD drawing to determine that the size associated with the component is less than the user-specified size setting; and displaying, by the CAD application, the component on the display screen using the second display representation. Appeal 2011-009774 Application 11/340,123 4 THE 35 U.S.C. § 112, ¶ 2, INDEFINITENESS REJECTIONS I. The Examiner finds the following limitation, which appears in each of independent claims 1, 12, and 19, to be unclear: “in response to receiving the modification, parsing, by the CAD application, the CAD drawing to determine that the size associated with the component is less than the user- specified size setting.” More specifically, the Examiner states “it is unclear if the [sic] ‘the size’ and ‘the user-specified’ is [sic] the size before or after modification.” Ans. 5. Appellants contend that “[n]othing about these specific limitation [sic] is ambiguous.” App. Br. 15. We agree. The claim recites the steps of parsing to determine the component’s original size; receiving a modification to either the user-specified size setting or the component size; and in response to the modification, parsing again to determine whether the component is less than the user-specified size setting. Common sense dictates that the only reasonable interpretation is that “the size” being referenced within the limitation in question is the size of the component in relation to the user-specified size setting after the modification. Section 112, paragraph 2, does not require exact precision in claim language – only reasonable precision such that “those of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). II. The Examiner also finds the claims indefinite because while each of the independent claims recites “parsing, by the CAD application, the CAD Appeal 2011-009774 Application 11/340,123 5 drawing to determine that the size associated with the component is greater than the user-specified size setting” (emphasis added), it is unclear what the claim covers in the alternative situations that “the size associated with the component is ‘less than’ or ‘equal.’” Ans. 6. The Examiner likewise finds that while each of the independent claims recites “in response to receiving the modification, parsing, by the CAD application, the CAD drawing to determine that the size associated with the component is less than the user- specified size setting” (emphasis added), it is unclear what the claim covers in the alternative situations that “the size associated with the component is ‘greater than’ or ‘equal.’” Id. Appellants argue that “[h]aving the size associated with the component be equal to the user-specified size setting is simply not within the scope of claim 1, as posited by the Examiner. Thus, the Examiner’s arguments are therefore not applicable.” App. Br. 16. We agree. The fact that the claim only sets forth requirements that exist under certain conditions disclosed in the Specification, but not under other conditions, is merely a matter of breadth – not indefiniteness. See e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971). THE 35 U.S.C. § 112, ¶ 1, WRITTEN DESCRIPTION REJECTION The Examiner finds that Appellants’ Specification is general, merely specifying settings and component sizes, displaying representations based upon the settings and sizes, modifying at least the setting or the component size, parsing to identify the settings and component sizes subsequent to the modification, and updating the display representations based upon post- modification parsing. Ans. 3-5. But, according to the Examiner, the Appeal 2011-009774 Application 11/340,123 6 independent claims are specific – setting forth situations where the initial display is a result of the specific event of the initial parsing indicating that the component size is greater than the user-specified size setting, and the second display is a result of the specific event of the second, post- modification parsing indicating that the component size is less than the user- specified size setting. Id. We understand, then, that the written description rejection is based upon the rationale that Appellants’ Specification sets forth the invention in general terms, while the claims recite the invention in more specific terms that do not appear within the Specification. It is true that a Specification’s disclosure of a genus does not necessarily provide support for every species covered by that genus. See generally MPEP § 2163.05(II) (providing a discussion on whether amendments that narrow claims violates the written description requirement of § 112, ¶ 1). However, this is not a wooden rule, and each situation must be considered on its own facts in terms of what is reasonably communicated to those skilled in the art. In re Wilder, 736 F.2d 1516, 1520 (Fed. Cir 1984). In the present situation, it is undisputed that the Specification does disclose displaying one type of representation if the component is specified as being above a threshold size and displaying a second type of representation if the component is specified as being below a threshold size. Moreover, the whole point of the invention is that selected representation can be automatically updated after either the size of the component or the threshold is varied. See, e.g., Fig. 7. In other words, given two potential display representations, there are only four possible permutations: (1) the pre-modification and post-modification displays both depict a first type Appeal 2011-009774 Application 11/340,123 7 representation; (2) the pre-modification display depicts a first type representation, while the post-modification displays depicts a second type representation; (3) the pre-modification display depicts a second type representation, while the post-modification displays depicts a first type representation; and (4) the pre-modification and post-modification displays both depict a second type representation.1 That is, one of ordinary skill in the art would readily recognize that the Specification’s expression used to describe the invention is synonymous with the alternative expression set forth above, wherein the four permutations are expressly recited. Because all four permutations reasonably would be communicated to one of ordinary skill in the art, the claims’ recitation of one of the four permutations is also within the scope of the Specification’s original disclosure. CONCLUSIONS2 For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s rejection of claims 1-7 and 12-25 under 35 U.S.C. § 112, ¶ 1, for lacking adequate written description, as well as under 35 U.S.C. § 112, ¶ 2, for indefiniteness. Accordingly, we will not sustain the Examiner’s rejections of these claims. 1 Similarly, for three potential display representations (e.g., 2-line, 1-line, and graphical 1-line), there only exist 23, or eight permutations. 2 While not raised on appeal, we note that independent claim 19 sets forth “a memory configured to store an application that includes [specified] instructions.” Emphasis added. By merely reciting that the memory is configured to store the referenced application, the claim does not require that the memory actually have the application stored thereon. Upon any further prosecution, then, the Examiner should determine whether claim 19 reads on a computing device that merely includes a generic processor and memory. Appeal 2011-009774 Application 11/340,123 8 DECISION The Examiner’s decision rejecting claims 1-7 and 12-25 is reversed. REVERSED kis