Ex Parte Sitton

Patent Trial and Appeal Board

Oct 28, 2015

12189339 (P.T.A.B. Oct. 28, 2015)

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.
12/189,339 08/11/2008 Ryan Sitton 1005-002.00 6839
70075 7590 10/29/2015
KRUEGER ISELIN LLP (SC)
P O BOX 1906
CYPRESS, TX 77410-1906
EXAMINER
PIERRE LOUIS, ANDRE
ART UNIT PAPER NUMBER
2123
MAIL DATE DELIVERY MODE
10/29/2015 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 RYAN SITTON
____________________

Appeal 2013-009652
Application 12/189,3391
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, 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 1–4 and 11–20. Appellant has previously withdrawn
claims 5–10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is PINNACLEAIS, LLC.
App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellant's claimed invention relates to piping circuitization systems
and methods. Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (formatting and emphasis added to contested limitations):
1. A computer system, comprising:
a display screen;
a memory containing instructions for:
[L1] displaying on the display screen a diagram
including representations of a plurality of pipes to be included
in a pipe circuit, and a line number corresponding to each of
the pipes;
[L2] capturing engineering data from at least one of the
displayed line numbers;
changing a display color of each of the representations of
the pipes to a selected color; and
exporting information about each of the pipes in the pipe
circuit to a database; and
at least one processor coupled to the memory and
configured to fetch the instructions from the memory and to
execute the instructions.

2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Feb. 13, 2013); Reply Brief ("Reply Br.," filed July 31, 2013); Examiner's
Answer ("Ans.," mailed May 31, 2013); Final Office Action ("Final Act.,"
mailed Mar. 6, 2012); and the original Specification ("Spec.," filed
Aug. 11, 2008).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Connor et al. ("Connor") US 2007/0229508 A1 Oct. 4, 2007
Okada US 2008/0036781 A1 Feb. 14, 2008
Rejections on Appeal
Claims 1–4 and 11–20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Connor and Okada. Final Act. 4.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 8–11), we decide the
appeal of the obviousness rejection of claims 1, 3, 4, 11, 12, and 14–17, 19,
and 20 on the basis of representative claim 1; we decide the appeal of the
obviousness rejection of claims 13 and 18 on the basis of representative
claim 18. Dependent claims not argued separately fall with the respective
independent claim from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv).
We decide the appeal of the obviousness rejection of separately argued
claim 2, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant's arguments with respect to claims 1–4
and 11–20, and we incorporate herein and adopt as our own: (1) the findings
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and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1, 2,
11, and 13 for emphases as follows.
1. § 103 Rejection of Claims 1–4, 11, 12, 14–17, 19, and 20
Issue 1
Appellant argues (App. Br. 8–10; Reply Br. 1–3) the Examiner's
rejection of claims 1–4, 11, 12, 14–17, 19, and 20 under 35 U.S.C. § 103(a)
as being obvious over the combination of Connor and Okada is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes, inter alia, limitations [L1] and [L2], as
recited in claim 1?
Analysis
With respect to limitation [L1], Appellant contends:

Connor's CAD tool does not display "line numbers" for each
displayed pipe object (e.g., objects 312, 314, 316) as is claimed.
In fact, Connor does not display any "unique identifiers" for the
curved pipe objects in the CAD drawings. The numbers and
extension lines in Connor's drawings are simply patent drawing
numbers, not line numbers displayed by Connor's CAD tool
Thus, Connor does not teach or suggest "displaying on a
display screen a diagram including . . . a line number
corresponding to each of the pipes."
App. Br. 8–9.3

3 Independent claim 11 recites a limitation commensurate to limitation [L1],
but does not recite a limitation similar to limitation [L2].
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Appellant further contends Connor does not teach or suggest
limitation [L2] because the cited figures of Connor "are flowcharts related to
generating 2D or 3D curved pipe objects with no mention of displaying line
numbers nor 'capturing engineering data from at least one of the displayed
line numbers,'" as claimed. App. Br. 9. "Due to the deficiencies of Connor,
the Office has not properly articulated reasoning with rational underpinning
to support the conclusion of obviousness," such that the Examiner has not
established a prima facie case of obviousness. Id.
We note "[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel
meaning to a claim term, the words take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
We further note the test for obviousness is not what the references
show individually but what the combined teachings would have suggested to
one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
With respect to limitation [L1], and while Appellant points to
examples of "line number corresponding to each of the pipes" in the
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Specification (App. Br. 8, citing Spec. ¶ 4), our reviewing court warns:
"Though understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim." SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Under the broadest reasonable interpretation standard, the Examiner
cites Connor paragraphs 31 and 48, along with Okada paragraph 74 as
teaching or suggesting contested limitation [L1]. Ans. 2. However, in the
Reply Brief, Appellant argues, "the claim term 'line number' is a term of art
that one of ordinary skill in the art would understand, especially in light of
the specification." Reply Br. 1. Appellant attempts to import additional
disclosure from the Specification into the claim. Reply Br. 2–3.4 However,
we find Appellant's assertions amount to unsupported attorney argument,
and therefore we give them little weight. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139–140 (Fed.
Cir. 1996).
The U.S. Supreme Court has held "[t]he obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents." KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Instead, the relevant inquiry is whether the
Examiner has set forth "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,

4 While the term "line number" may have some meaning in the P&ID
industry (Reply Br. 2), there is nothing in the claim that limits the clamed
subject matter to that industry or that interpretation.
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441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at
418).
The Examiner's stated basis for motivation to combine the system of
Okada with Connor is "because Okada teaches the improvement of operation
efficiency." Final Act. 4 (citing Okada ¶ 26). We find this statement
provides the "articulated reasoning" with a "rational underpinning" required
by KSR.
Additionally, Appellant has presented no evidence that using numbers
to identify elements in a drawing would have been "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19).
Appellant also has not presented any evidence that this incorporation would
have yielded more than expected results.
Appellant also argues "Connor does not display any 'unique
identifiers' for the curved pipe objects in the CAD drawings." App. Br. 8.
As pointed out by the Examiner (Ans. 3), we note Appellant's argument is
not commensurate with the scope of the claim, which does not recite or
otherwise require any "unique identifier."
With respect to limitation [L2], the Examiner cites Connor (¶¶ 41
and 42) as teaching the retrieval of parametric data from at least one of the
curved pipes. We agree with the Examiner's finding (Ans. 2–3) because,
under the broadest reasonable interpretation, "capturing engineering data"
broadly but reasonably reads on Connor's disclosure of, for example, "the
CAD application 105 generates a display representation of the pipe object
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that shows the beginning and ending coordinates of the pipe object."
Connor ¶ 42.
Accordingly, we find the cited prior art combination teaches or
suggests contested limitations [L1] and [L2].
Concerning Appellant's argument that the Examiner did not establish
a prima facie case of obviousness, we note:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
We find the Examiner has set forth the statutory basis of the rejection and
the references relied on in a sufficiently articulate and informative manner as
to meet the notice requirement of 35 U.S.C. § 132.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 3, 4, 17, 19, and 20 which fall therewith. See Claim Grouping, supra.
ADDITIONAL CLAIM CONSTRUCTION ISSUES
Non-Functional Descriptive Material
In further support of the Examiner's rejection, we note Appellant's
system claim 1 recites a display screen and a memory containing instructions
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intended for carrying out various functions. While features of an apparatus
may be recited either structurally or functionally, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir.
1997) (The absence of a disclosure in a prior art reference relating to
function did not defeat the Board's finding of anticipation of claimed
apparatus because the limitations at issue were found to be inherent in the
prior art reference); see also In re Swinehart, 439 F.2d 210, 212–13 (CCPA
1971); In re Danly, 263 F.2d 844, 847 (CCPA 1959). "[A]pparatus claims
cover what a device is, not what a device does." Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (emphasis in
original).
Moreover, Appellant's arguments urging patentability, cited supra, are
predicated on non-functional descriptive material (i.e., the content of a
display screen intended for human viewing, in particular displaying line
numbers on the screen).5 App. Br. 8–9. Non-functional descriptive material
is not accorded patentable weight.6 Specifically, the contested claim 1
limitation [L1] "displaying on the display screen a diagram including . . . a

5 See MPEP § 2111.05, 9th ed., Mar. 2014 ("where the claim as a whole is
directed conveying a message or meaning to a human reader independent of
the intended computer system, and/or the computer-readable medium merely
serves as a support for information or data, no functional relationship
exists.").
6 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887–90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003,
aff'd, Rule 36 (June 12, 2006)); Ex parte Mathias, 191 Fed. Appx. 959 (Fed.
Cir. 2006).
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line number corresponding to each of the pipes" is merely data to be
displayed which is intended for human perception and which does not affect
the structure of the claimed system; therefore, the informational content of
the diagram and line number is non-functional descriptive material per se.
Even assuming, arguendo, our reviewing court may give the contested
functional limitation [L1] full patentable weight, we reiterate that the test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977,
987–88 (Fed. Cir. 2006); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
and In re Keller, 642 F.2d 413, 425 (CCPA 1981)(emphasis added).
Accordingly, as a matter of claim construction and in further support
of the Examiner's legal conclusion of obviousness discussed above, we find
limitation [L1] recites non-functional descriptive material which is merely
intended for display, and which therefore renders claim 1 unpatentable.
Intended Use
In further support of the Examiner's rejection, and as a matter of claim
construction, we conclude the contested functional limitations [L1] and [L2]
of system claim 1, as well as the uncontested "exporting" limitation are
statements of intended use that do not further limit the structure of the
claimed system.7 Our reviewing court guides that the patentability of an

7 "An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although "[s]uch
statements often . . . appear in the claim's preamble," In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
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apparatus claim "depends on the claimed structure, not on the use or purpose
of that structure." Catalina Marketing Int'l. Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v.
Masaba, Inc., 553 Fed.Appx. 986, 991 (Fed. Cir. 2014) (Rader, J.,
concurring) which guides:
[A] system claim generally covers what the system is, not what
the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) ("The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.").
Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v. Timex
Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).[8]
This reasoning is applicable to each of Appellant's system claims 1–4
on appeal.
2. § 103 Rejection of Claim 2
Issue 2
Appellant argues (App. Br. 9–10) the Examiner's rejection of claim 2
under 35 U.S.C. § 103(a) as being obvious over the combination of Connor
and Okada is in error. These contentions present us with the following
issue:

8 Superior Industries is a non-precedential opinion of the Court of Appeals
for the Federal Circuit. However, we consider the concurring opinion by
former Chief Judge Rader as guiding because it cites precedential authority
in support.
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Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 1, wherein the instructions for capturing
engineering data "comprise instructions for: receiving input indicative of a
current data format of a selected one of the line numbers; parsing the line
number to identify engineering data parameter values; and storing the
parameter values in a data structure that associates the parameter values with
said pipe circuit," as recited in claim 2?
Analysis
Appellant contends the prior art provides "no discussion regarding
'capturing engineering data . . .'" limitation." App. Br. 10.
We find that the limitations in claim 2 argued by Appellant provides
no further limitations on the structure of the system of claim 1, i.e., claim 2
merely provides additional instructions for handling data. Notwithstanding
this finding, we agree with the Examiner's findings that Connor Figure 8 and
paragraph 43 teach or at least suggest the contested limitations of claim 2.
Ans. 3.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 2.
3. § 103 Rejection of Claims 13 and 18
Issue 3
Appellant argues (App. Br. 9–10) the Examiner's rejection of claim 18
under 35 U.S.C. § 103(a) as being obvious over the combination of Connor
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and Okada is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 17, "further comprising converting at least
one of the displayed line numbers to a new data format by . . . converting the
selected line number from the current data format to the new data format," as
recited in claim 18?
Analysis
Appellant contends, because Connor does not teach or suggest the use
of "line numbers," Connor necessarily does not teach or suggest converting a
displayed line number to a new format. App. Br. 10.
We agree with, and adopt as our own, the Examiner's findings in
connection with claim 18. Ans. 4.
Furthermore, as a matter of claim construction, we note the recited
conversion of the selected line number to a new data format is non-
functional descriptive material, as discussed above, because the data is not
actually used to change the operation or output of the underlying machine of
claim 17, other than to merely alter the display which is intended for human
perception.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 18, and claim 13
which falls therewith. See Claim Grouping, supra.
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause. See 37
C.F.R. § 41.41(b)(2).
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–4 and 11–20 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1–4 and 11–20
under § 103.
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

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