Ex Parte McMillan et al

Patent Trial and Appeal BoardDec 28, 2012

11669740 (P.T.A.B. Dec. 28, 2012)

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. 11/669,740 01/31/2007 ROBERT W. MCMILLAN AUTO/1055 5900 7590 12/28/2012 John C. Carey Patterson & Sheridan, L.L.P. Suite 1500 3040 Post Oak Blvd. Houston, TX 77056 EXAMINER PATEL, MANGLESH M ART UNIT PAPER NUMBER 2178 MAIL DATE DELIVERY MODE 12/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT W. MCMILLAN, NARAYANAN KRISHNAN, PRABAKAR MURUGAPPAN, and JAMES M. CLAUSS ____________________ Appeal 2010-006955 1 Application 11/669,740 Technology Center 2100 ____________________ Before ERIC B. CHEN, MICHAEL J. STRAUSS, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final rejection of claims 1-23, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Real Party in Interest is Autodesk, Inc. App. Br. 3. Appeal 2010-006955 Application 11/669,740 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention is directed to drawing interoperability between different computer-aided design (CAD) applications and, in particular, “to drawing interoperability between different computer-aided (CAD) design applications that employ different document formats.” Spec. p. 1, Title, and ¶ [0001]. Exemplary Claim Claim 1 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added): 1. A method of generating a drawing file shared by a source application and a target application, comprising: storing a copy of a computer aided design (CAD) drawing in a composite drawing file, wherein the CAD drawing is stored according to a drawing format used by the source application; generating a visual representation of the CAD drawing, wherein the visual representation is formatted according to a drawing format used by the target application; and storing the visual representation in the composite drawing file, wherein a display of the visual representation generated by the target application reflects a display of the CAD drawing generated by the source application. 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed Nov. 18, 2009); Reply Brief (“Reply Br.,” filed Mar. 1, 2010); Examiner’s Answer (“Ans.,” mailed Dec. 28, 2009); Final Office Action (“FOA,” mailed May 27, 2009); and the original Specification (“Spec.,” filed Jan. 31, 2007). Appeal 2010-006955 Application 11/669,740 3 Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: Sabadell US 6,847,384 B1 Jan. 25, 2005 Rejections on Appeal Claims 1-23 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sabadell. Claims 1, 9, and 17 are independent. ISSUE Appellants argue (App. Br. 11-13; Reply Br. 5) that the Examiner’s anticipation rejection of claim 1 under 35 U.S.C. § 102(b) over Sabadell is in error. These contentions present us with the following issue: Did the Examiner err in finding that Appellants’ claimed method of generating a drawing file shared by a source application and a target application is anticipated by Sabadell, particularly that Sabadell discloses “storing a copy of a computer aided design (CAD) drawing in a composite drawing file, wherein the CAD drawing is stored according to a drawing format used by the source application . . . and storing the visual representation in the composite drawing file,” as recited in claim 1? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ conclusions with respect to claim 1, and we disagree with (1) the findings and reasons set forth by the Examiner in the action from which this appeal is Appeal 2010-006955 Application 11/669,740 4 taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. We disagree with the Examiner’s finding that Sabadell discloses “storing a copy of a computer aided design (CAD) drawing in a composite drawing file, wherein the CAD drawing is stored according to a drawing format used by the source application . . . and storing the visual representation in the composite drawing file,” as recited in claim 1. (Ans. 3- 4, and 8-9). Appellants contend that Sabadell does not disclose that Sabadell’s linked drawing object stores the source CAD files themselves. App. Br. 12. Appellants also contend that claim 1 requires that the composite drawing file store a copy of the CAD drawing according to the drawing format used by the source application, as well as storing the visual representation of the CAD drawing in the drawing format used by the target application, and that Sabadell fails to meet this limitation. Id. In addition, Appellants contend that: Sabadell discloses that the hierarchy tree structure includes the linked drawing list object that identify CAD source files as files having objects that are to be translated to a target application (see Sabadell at column 11, lines 7-9). This portion of Sabadell makes clear that the linked drawing list object only stores references or identifiers pointing to the source CAD files storing source object definitions that are selected for translation. These references are used only for linking back to the source CAD files to access the source object geometries stored within Appeal 2010-006955 Application 11/669,740 5 the source CAD files. Simply put, Sabadell does not disclose that the linked drawing object stores the source CAD files themselves. Reply Br. 5. Finally in this regard, Appellants contend that the Examiner failed in the Answer “to address Appellant’s [sic] argument that Sabadell does not teach or suggest the equivalent of the composite drawing file that stores both the disclosed source files 106 and the translated CAD object geometries.” Id. We agree with Appellants’ contentions that the Examiner erred in the rejection of claim 1. In particular, we find that the Examiner has not shown, specifically, where Sabadell discloses storing a copy of both a CAD drawing in a composite drawing file according to a drawing format used by the source application, as well as storing the visual representation in the composite drawing file, as required by claim 1 (emphasis ours). We disagree with the Examiner’s equation of Sabadell’s hierarchy tree structure with Appellants’ recited composite drawing file. FOA 5, Ans. 7. We agree with Appellants that steps 730-734 in FIG. 7 of Sabadell explicitly discloses that leaf objects within the hierarchical tree structure store translated source object geometries formatted according to the target application. We further agree with Appellants that Sabadell’s disclosure of a hierarchy tree structure only discloses storing translated CAD object geometries and not source CAD files. See Reply Br. 5 (citing Sabadell at col. 11:7-9 and FIG. 7); and App. Br. 11 (citing Sabadell at cols. 10:60-62 and 11:1-9 and FIG. 4A). Appeal 2010-006955 Application 11/669,740 6 Accordingly, Appellants have convinced us of error in the Examiner’s characterization of the cited art and related claim construction with respect to independent claim 1, and we are unable to sustain the Examiner’s anticipation rejection of claim 1. Further, since independent claims 9 and 17 recite similar limitations as discussed, supra, we find that the Examiner also erred in their rejection, such that we are also unable to sustain their rejection. Still further, the rejection of dependent claims 3-8, 11-16, and 18-23 inherit the errors in the rejection of their respective independent claims 1, 9, and 14, such that we are also unable to sustain their rejection. Finally, while Appellants have provided separate arguments for dependent claims 2 and 10, we need not reach the issues presented with respect to these claims, as these claims inherit the errors in the Examiner’s rejection of independent claims 1 and 9, from which claims 2 and 10 respectively depend. Accordingly, we are also unable to sustain the anticipation rejection of claims 2 and 10. CONCLUSION The Examiner erred with respect to the anticipation rejection of claims 1-23 under 35 U.S.C. § 102(b) over Sabadell and we do not sustain the rejection. DECISION The decision of the Examiner to reject claims 1-23 is reversed. REVERSED ELD