Ex Parte Pershing

Patent Trial and Appeal BoardAug 31, 2017

13385606 (P.T.A.B. Aug. 31, 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. 13/385,606 02/03/2012 Chris Pershing 6339.026 2707 30589 7590 09/05/2017 DUNLAP CODDING, P.C. PO BOX 16370 OKLAHOMA CITY, OK 73113 EXAMINER KHOLDEBARIN, IMAN K ART UNIT PAPER NUMBER 2669 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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@dunlapcodding.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRIS PERSHING Appeal 2017-003546 Application 13/385,606 Technology Center 2600 Before MAHSHID D. SAADAT, ALLEN R MacDONALD, and JOHN P. PINKERTON, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing.1 Appellant’s request is GRANTED-IN-PART. 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). Appeal 2017-003546 Application 13/385,606 Appellant’s Request for Rehearing is filed under 37 C.F.R. § 41.52(a)(1) requesting that we reconsider our Decision of June 19, 2017, wherein we affirmed the Examiner’s rejection of claims 1—31. Particularly, Appellant requests we “reconsider and reverse the rejection of claims 2-6, 11, and 23 under 35 U.S.C. § 101.” Reh’g Req. 6 (emphasis added). We have reconsidered our Decision in light of Appellant’s comments in the request, and although we agree to modify the Decision to provide further clarity to Appellant by separately addressing the rejections of claims 2, 3, 4, 5, 6, 11, and 23, we have found no error in the result reached. Therefore, we decline to change the result of the Decision. Appellant’s Contentions 1. Appellant contends that the Board overlooked the fact that certain claims were argued separately. Further: Appellant respectfully submits that the Board overlooked the fact that certain claims were argued separately and did not consider, or document the consideration of, the limitations of claims 2-6,11, and 23, even though the claims were argued separately from claim 1. Therefore, it appears as though the Board overlooked the law as to how separately-argued claims are to be addressed and overlooked the facts regarding the limitations of claims 2-6,11, and 23. Appellant respectfully draws the Board's attention to Appellant’s Appeal Brief filed on June 6, 2016, in which each of claims 2, 3, 4, 5, 6,11, and 23 is argued separately, under separate subheadings that identified each claim by number, and which shows that each is separately patentable from claim 1. Appellant did not waive its argument that the Board must consider the patentability of any grouped or separately- argued claim separately. 2 Appeal 2017-003546 Application 13/385,606 However, in the current Decision on Appeal, claim 1 was chosen as an exemplary claim. . . . Further, in the Analysis of the Rejection under § 101, the Decision only addresses the elements of claim 1 when determining whether any of the claims contain elements that amount to significantly more than an abstract idea... and does not address the additional elements of claims 2, 3, 4, 5, 6,11, or 23. Appellant respectfully requests consideration of the separately argued claims 2-6,11, and 23. Because each of claims 2, 3, 4, 5, 6, 11, and 23 were argued separately under separate subheadings in the Appeal Brief and are separately patentable over claim 1, Appellant respectfully requests that each of these claims and the accompanying arguments be individually considered and addressed in a written decision regarding patentability under §101. Reh’g Req. 3—6 (Appellant’s emphasis and citations omitted, panel’s emphasis added). ANALYSIS As to Appellant’s above contention 1, the Board did not overlook the fact that certain claims were argued separately, overlook the law as to how separately-argued claims are to be addressed, or fail to document the consideration of claims 2, 3, 4, 5, 6, 11, and 23. In the Decision, the Board indicated that Appellant’s arguments regarding the aforementioned claims, found in Appellant’s Appeal Brief, were considered, but were not found persuasive. See Decision 8 (“We have considered Appellant’s other arguments regarding the patent-eligibility of the claims (see App. Br. 25— 42), and we are not persuaded by them either.”). However, in an effort to 3 Appeal 2017-003546 Application 13/385,606 further provide clarity to Appellant, we separately address the rejections of claims 2, 3, 4, 5, 6, 11, and 23.2 Claim 2 In Appellant’s Appeal Brief, Appellant argues: (a) claim 2 is not merely directed to estimating a wall area; and (b) the limitation “further comprising generating the roof measurements from a digital three dimensional model of the roof,” as recited in claim 2, shows that the claim is directed to an improvement to a technological process of computerized three-dimensional building estimation from three-dimensional models. See App. Br. 25—26. This argument is not persuasive of Examiner error. In Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), while the Federal Circuit stated that all claims directed to software improvements in computer-related technology are not necessarily abstract, the Federal Circuit also stated that the inquiry is whether the focus of the claims is on a specific asserted improvement in computer capabilities or instead, on a process that qualifies as an “abstract idea” for which a computer is invoked as merely a tool. See Enfish, 822 F.3d at 1335—36. We conclude that claim 2 is merely directed to the automation of manually measuring an area of a wall 2 Appellant’s Appeal Brief also contained separate arguments for claims 8, 12—14, 18, 21—22, and 28—30. See App. Br. 34-42. However, Appellant does not request the Board separately consider and address these arguments in Appellant’s Request for Rehearing. See Reh’g Req. 3—6. Thus, as indicated in the Decision, Appellant’s arguments regarding claims 8, 12—14, 18, 21—22, and 28—30 are not found persuasive, and, as correctly found by the Examiner, claims 8, 12—14, 18, 21—22, and 28—30 are not significantly more than the abstract idea of measuring an area of a wall using a generic computer. See Decision 7—8; see also Ans. 6—7, 33—34. 4 Appeal 2017-003546 Application 13/385,606 described in Appellant’s Specification (see, e.g., Spec. 1:12—15) using a digital three-dimensional model that is stored using a generic computer, and that claim 2 fails to recite the technical details of the digital three- dimensional model that describe the alleged improvement of the process of computerized three-dimensional building estimation from three-dimensional models. Appellant also argues the Examiner has failed to provide a prima facie case that claim 2 is an abstract idea and does not recite significantly more than an abstract idea because the Examiner has failed to mention the aforementioned limitation. See App. Br. 25. We disagree. The Examiner explicitly found that the additional limitations of claim 2 amount to no more than: (a) mere instructions to implement an abstract idea on a computer, or (b) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 2 so that Appellant was able to respond to the rejection. This is all that is required to provide a prima facie case that a claim is not patent-eligible. See In re Jung, 637 F.3d 1356, 1362—63 (Fed. Cir. 2011) (“The Patent and Trademark Office (“PTO”) satisfies its initial burden of production by ‘adequately explaining] the shortcomings it perceives so that the applicant is properly notified and able to respond. ’ . . . Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.”). Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 2 under 35 U.S.C. § 101. 5 Appeal 2017-003546 Application 13/385,606 Claim 3 In Appellant’s Appeal Brief, Appellant argues: (a) claim 3 is not merely directed to estimating a wall area; (b) the limitation the wall extending a distance until either intersecting a level of the model ground surface, according to the received one or more measurements indicative of the one or more distances between the one or more reference points on the roof and the ground surface, or intersecting another surface of the model roof, according to the three dimensional model of the roof, as recited in claim 3, is neither merely elaboration of structure nor subtraction of an obstructed area; and (c) the aforementioned limitation (and other limitations) of claim 3 provide an improvement in a detailed process the software goes through internally to build walls in a three-dimensional model within a graphical user interface. See App. Br. 27—29. This argument is not persuasive. As previously described, the inquiry is whether the focus of the claims is on a specific asserted improvement in computer capabilities or instead, on a process that qualifies as an “abstract idea” for which a computer is invoked as merely a tool. See Enfish, 822 F.3d at 1335—36. We conclude that claim 3 is merely directed to the building of the digital three- dimensional model, and that claim 3 fails to recite the technical details of the digital three-dimensional model that describe the alleged improvement of the process of computerized three-dimensional building estimation from three- dimensional models. Appellant also argues the Examiner has failed to provide a prima facie case that claim 3 is an abstract idea and does not recite significantly more than an abstract idea because the Examiner has failed to mention any of the other limitations of claim 3. See App. Br. 27—28. We disagree. Similar to claim 2, the Examiner explicitly found that the additional limitations of 6 Appeal 2017-003546 Application 13/385,606 claim 3 amount to no more than: (i) mere instructions to implement an abstract idea on a computer, or (ii) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 3 so that Appellant was able to respond to the rejection. This is all that is required to provide aprima facie case that a claim is not patent-eligible. See Jung, 637 F.3d at 1362-63. Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 3 under 35 U.S.C. § 101. Claim 4 In Appellant’s Appeal Brief, Appellant argues: (a) claim 4 is not merely directed to estimating a wall area; (b) the limitation receive indications regarding locations on the wall on which one or more of the selectable user interface elements have been overlaid; and subtract an amount from the estimated wall area measurement of the building corresponding based on the received indications regarding locations on the wall on which one or more of the selectable user interface elements have been overlaid, as recited in claim 4, is neither merely elaboration of structure nor subtraction of an obstructed area; and (c) the aforementioned limitation provides an improvement in the operation of a computerized graphical user interface by providing selectable user interface elements that can be overlaid on the three-dimensional model in a unique manner to improve the speed and flexibility of wall estimation within the three-dimensional model. See App. Br. 30—32. This argument is not persuasive of Examiner error. As previously described, the inquiry is whether the focus of the claims is on a 7 Appeal 2017-003546 Application 13/385,606 specific asserted improvement in computer capabilities or instead, on a process that qualifies as an “abstract idea” for which a computer is invoked as merely a tool. See Enfish, 822 F.3d at 1335—36. We conclude that claim 4 is merely directed to routine user interaction with, and data processing of, a graphical user interface, and that claim 4 fails to recite technical details that describe a technological improvement to the capabilities of the graphical user interface. Appellant also argues the Examiner has failed to provide a prima facie case that claim 4 is an abstract idea and does not recite significantly more than an abstract idea because has Examiner has failed to mention any of the limitations of claim 4. See App. Br. 29—30. We disagree. Similar to claim 2, the Examiner explicitly found that the additional limitations of claim 4 amount to no more than: (i) mere instmctions to implement an abstract idea on a computer, or (ii) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 4 so that Appellant was able to respond to the rejection. This is all that is required to provide a prima facie case that a claim is not patent-eligible. See Jung, 637 F.3d at 1362-63. Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 4 under 35 U.S.C. § 101. Claim 5 In Appellant’s Appeal Brief, Appellant argues: (a) claim 5 is not merely directed to subtracting or rendering a three-dimensional image; (b) the limitation “rendering the three dimensional model of the building within 8 Appeal 2017-003546 Application 13/385,606 a graphical user interface,” as recited in claim 5 (and other limitations), is not merely rendering a three-dimensional image; and (c) the aforementioned limitation provides an improvement in the operation of a computerized graphical user interface by providing selectable user interface elements that can be overlaid on the three-dimensional model in a unique manner to improve the speed and flexibility of wall estimation within the three- dimensional model. See App. Br. 32—33. This argument is not persuasive. As previously described, the inquiry is whether the focus of the claims is on a specific asserted improvement in computer capabilities or instead, on a process that qualifies as an “abstract idea” for which a computer is invoked as merely a tool. See Enfish, 822 F.3d at 1335—36. We conclude that claim 5 is merely directed to routine user interaction with, and data processing of, a graphical user interface, and that claim 5 fails to recite technical details that describe a technological improvement to the capabilities of the graphical user interface. Appellant also argues the Examiner has failed to provide a prima facie case that claim 5 is an abstract idea and does not recite significantly more than an abstract idea because has Examiner has failed to mention any of the other limitations of claim 5. See App. Br. 33—34. We disagree. Similar to claim 2, the Examiner explicitly found that the additional limitations of claim 5 amount to no more than: (i) mere instructions to implement an abstract idea on a computer, or (ii) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 5 so that Appellant was able to respond to the rejection. This is all that is required to 9 Appeal 2017-003546 Application 13/385,606 provide aprima facie case that a claim is not patent-eligible. See Jung, 637 F.3d at 1362-63. Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 5 under 35 U.S.C. § 101. Claim 6 In Appellant’s Appeal Brief, Appellant argues the Examiner failed to provide a prima facie case that claim 6 is an abstract idea and does not recite significantly more than an abstract idea because the Examiner has failed to mention any of the additional limitations of claim 6. See App. Br. 34. We disagree. Similar to claim 2, the Examiner explicitly found that the additional limitations of claim 6 amount to no more than: (i) mere instructions to implement an abstract idea on a computer, or (ii) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 6 so that Appellant was able to respond to the rejection. This is all that is required to provide a prima facie case that a claim is not patent-eligible. See Jung, 637 F.3d at 1362—63. Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 6 under 35 U.S.C. § 101. Claim 11 In Appellant’s Appeal Brief, Appellant argues the limitation “subtract a predefined percentage from the estimated wall area measurement of the building corresponding to a size of the partial obstruction to account for possible areas missing from the wall which may be obstructed in the image 10 Appeal 2017-003546 Application 13/385,606 by the object in the image,” as recited in claim 11 (and other limitations), is neither merely elaboration of structure nor subtraction of an obstructed area. See App Br. 35—36. This argument does not persuade us that the Examiner erred in rejecting claim 11, as the argument fails to articulate a specific improvement in computer-related technology. See Enfish, 822 F.3d at 1335— 36. Appellant also argues the Examiner has failed to provide a prima facie case that claim 11 is an abstract idea and does not recite significantly more than an abstract idea because the Examiner has failed to mention any of the additional limitations of claim 11. See App. Br. 35—36. We disagree. Similar to claim 2, the Examiner explicitly found that the additional limitations of claim 11 amount to no more than: (i) mere instructions to implement an abstract idea on a computer, or (ii) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 11 so that Appellant was able to respond to the rejection. This is all that is required to provide a prima facie case that a claim is not patent- eligible. See Jung, 637 F.3d at 1362—63. Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 11 under 35 U.S.C. § 101. Claim 23 In Appellant’s Appeal Brief, Appellant argues the Examiner has failed to provide a prima facie case that claim 23 is an abstract idea and does not recite significantly more than an abstract idea because the Examiner has failed to mention any of the additional limitations of claim 23. See App. 11 Appeal 2017-003546 Application 13/385,606 Br. 41. We disagree. Similar to claim 2, the Examiner explicitly found that the additional limitations of claim 23 amount to no more than: (i) mere instructions to implement an abstract idea on a computer, or (ii) recitation of generic computer structure to perform generic computer functions. See Ans. 12. Thus, the Examiner put Appellant on notice of the perceived shortcomings of claim 23 so that Appellant was able to respond to the rejection. This is all that is required to provide aprima facie case that a claim is not patent-eligible. See Jung, 637 F.3d at 1362—63. Accordingly, we do not make any changes as to our decision to sustain the rejection of claim 23 under 35 U.S.C. § 101. DECISION In view of the foregoing discussion, we grant Appellant’s Request for Rehearing to the extent we separately address the rejections of claims 2, 3, 4, 5, 6, 11, and 23, but we otherwise deny Appellant’s request. As this Decision of Request for Rehearing modifies the original Decision so as to separately address the rejections of claims 2, 3, 4, 5, 6, 11, and 23, pursuant to 37 C.F.R. § 41.52(a)(1), a second request for rehearing limited to our modified Decision as to claims 2, 3, 4, 5, 6, 11, and 23 is permitted. 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)(v). REQUEST FOR REHEARING GRANTED-IN-PART 12