Ex Parte Berger et al

Patent Trial and Appeal Board

Feb 5, 2015

11825703 (P.T.A.B. Feb. 5, 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.
11/825,703 07/09/2007 Kenneth A. Berger 014039.00013 7750
33649 7590 02/05/2015
Mr. Christopher John Rourk
Jackson Walker LLP
901 Main Street, Suite 6000
DALLAS, TX 75202
EXAMINER
VO, TED T
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
02/05/2015 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 KENNETH A. BERGER,
LARRY J. TURNER, and ANDREW E. WILCOX

____________________

Appeal 2012-008828
Application 11/825,703
Technology Center 2100
____________________

Before JEAN R. HOMERE, CARLA M. KRIVAK, and
DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 21–40. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 1–20 have been canceled. App. Br. 4.
We AFFIRM.2

1 The Appeal Brief identifies Activant Solutions, Inc. as the real party in
interest. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed December 19, 2011
(“App. Br.”); Appellants’ Reply Brief filed May 14, 2012 (“Reply Br.”);
Examiner’s Answer mailed March 14, 2012 (“Ans.”); and original
Specification filed July 9, 2007 (“Spec.”).
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Application 11/825,703

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STATEMENT OF THE CASE
Claims on Appeal
Appellants’ invention “relates to a system and method for generating
software code that generates a user interface when executed that allows a
user to readily select the features and states of the user interface.” Spec. ¶ 2.
Claims 21, 28, and 35 are independent claims. Claim 21 is reproduced
below:
21. A system for generating user interface code comprising:
a primary user interface code system that electronically
generates primary user interface code having two or more primary
user interface features that can be selected and assembled into a user
interface by a user; and
a primary handler class system that generates primary handler
code, wherein the primary handler code electronically sequences two
or more states of the primary user interface feature of the primary user
interface code; and
wherein the primary user interface code and the primary
handler code cause the selected primary user interface features and
associated states for the primary user interface features to be
generated when the primary user interface code is executed.

The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Berger et al. US 7,243,334 B1 July 10, 2007
(hereinafter “Berger”)
Yoder, Joseph W., “A FrameWork for Building Financial Models,”
Caterpillar (1997), pp. i–ii, 1–53.
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Application 11/825,703

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Examiner’s Rejections3
Claims 21–40 stand rejected for obviousness-type double patenting
over US Patent 7,243,334. Ans. 4–5.
Claims 21–34 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Yoder. Ans. 6–11.
Claims 35–40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoder. Ans. 11–14.

ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Rejection and Examiner’s Answer as our own, and we agree with the
conclusions reached by the Examiner for the reasons given in the
Examiner’s Answer. See Ans. 4–27. We have considered Appellants’
arguments, but we are not persuaded of Examiner error. We highlight the
following for emphasis.
Rejection of Claim 21 under 35 U.S.C. § 102(b)
Appellants argue Yoder does not anticipate claim 21 because Yoder
discloses using predetermined user interfaces. App. Br. 10. As the
Examiner found, Yoder discloses an application for building a graphical user
interface (GUI) using user interface features such as those disclosed in
Figure 28 of Yoder. Ans. 6–7, 18–19. Yoder discloses an application that
“builds an appropriate GUI and plugs the values into the GUI’s. The
application does the constructing of GUI’s and Values.” Yoder at 6, § 3.1.

3 The Examiner withdrew the rejection of claims 28–40 under 35 U.S.C.
§ 101. Ans. 4.
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Claim 21 does not prohibit the use of predetermined user interface features
in building a GUI. As such, we are not persuaded by Appellants’ argument.
Appellants also argue Yoder does not anticipate claim 21 “because a
developer must write additional code in combination with the code disclosed
in Yoder before the code can be executed.” Reply Br. 5. Claim 21,
however, merely requires that “the primary user interface code and the
primary handler code cause the selected primary user interface features and
associated states for the primary user interface features to be generated when
the primary user interface code is executed.” It does not prohibit additional
code from being written or modifications to the code from being made. In
fact, Appellants’ Specification contemplates modification to code:
System 100 allows primary software code packages for
generating a user interface to be prepared by a user of the
system, such as a program developer, by using predetermined
user interface classes having predetermined states, and also
provides a layered structure such that developers can modify
code and can provide site-specific code modifications that will
be compatible with future releases of primary code.
Spec. ¶ 18 (emphasis added).
Based on the foregoing, we sustain the rejection of claim 21 under 35
U.S.C. § 102(b).
Rejection of Claims 22 and 26 under 35 U.S.C. § 102(b)
Appellants argue Yoder does not disclose developer user interface
code or site-specific user interface code that are “separate and distinct” from
other code as required by claims 22 and 26, respectively. App. Br. 11.
Appellants further argue the Examiner’s rejection is based on inherency and
the Examiner has not adequately supported a rejection based on inherency.
App. Br. 11; Reply Br. 4.
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With respect to claim 22, the Examiner found
Yoder shows the developer can create a “DuPont widget” to be
used with GUI builder to make a “different DuPontModels” to
meet the need of different users (P. 19, see sec. 4.1, first and
second paragraphs). Since there are more than a user with
different needs (for example User A and user B), the second
code system “creating a DuPont Widget” must be separate and
distinct from “DuPontModels” of each user (i.e. User A might
use the first code, DuPontModels; and user B might use the
developed code, DuPont widget).
Ans. 23. With respect to claim 26, the Examiner found Yoder discloses a
third system for generating code (“creating another interface widget”). Ans.
23 (citing Yoder 19). Furthermore, the Examiner found the generated code is
separate and distinct as required by the claims. Ans. 8–10, 23. Yoder
discloses:
By creating a ‘DuPont widget’ to be used with the GUI builder
along with methods for the automatic generation of related
code, the developer can quickly tailor different DuPontModels
to meet the needs of different users.
We were able to extend the VisualWorks Smalltalk Visual
Builder framework to re-use code and easily extend the
DuPontModel by creating another interface widget like the
DuPont box which has all of the fields and the associated
button.
Yoder 19, § 4.1.
Appellants’ arguments do not persuade us of error in the Examiner’s
findings. In particular, Appellants do not direct us to a definition of
“separate and distinct” that persuades us the Examiner erred in finding the
code generated is separate and distinct from other code. We note that the
phrase “separate and distinct” is not used in the Specification.
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Based on the foregoing, we sustain the rejection of claims 22 and 26
under 35 U.S.C. § 102(b).
Rejection of Claim 28 under 35 U.S.C. § 102(b)
Claim 28 is directed to a “system for generating user interface code
comprising,” inter alia, “means for sequencing two or more states for one or
more user interface feature of the user interface code.” Appellants contend
the Examiner has not identified where Yoder discloses the structure and
function corresponding to this means plus function limitation. App. Br. 12.
Appellants further argue this limitation is necessarily narrower than a similar
claim 21 limitation not recited in means plus function format. Reply Br. 5.
In reference to the “means for sequencing” limitation, Appellants
state: “By way of example and not by limitation, structure corresponding to
this element can be found at Fig. 6 and the associated description at page 36,
line 6 to page 37, line 31 of the specification.” App. Br. 6. The cited
passage is a description of Figure 6, which is “a flowchart of a method 600
for generating primary code in accordance with an exemplary embodiment
of the present invention.” Spec. ¶ 89. The Specification does not use the
term “means for sequencing,” and the only mention of sequencing in the
passage cited by Appellants is in paragraph 94, which in its entirety states:
“At 612, the user sequence selection is received, such as one or more
selections of components that are to be activated for a particular state. The
method then proceeds to 614.”
The Examiner found Yoder discloses a system that “electronically
sequences two or more states of the primary user interface feature of the
primary user interface code” with reference to claim 21. Ans. 7 (citing
Yoder Fig. 4, p.36); Ans. 19–20 (citing Yoder Fig. 28). The recited function
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in claim 28 is broader: “sequencing two or more states for one or more user
interface feature of the user interface code.” Appellants’ citation of the
description of Figure 6 as the alleged corresponding structure for “means for
sequencing” fails to identify with particularity structure for the means for
sequencing that is not disclosed by Yoder’s disclosure of sequencing, as
found by the Examiner. As such, Appellants’ arguments do not persuade us
that Yoder’s disclosure of a system that electronically sequences two or
more states as recited in claim 21 does not disclose the means for sequencing
of claim 28.
Based on the foregoing, we sustain the rejection of claim 28 under 35
U.S.C. § 102(b).
Rejection of Claim 35 under 35 U.S.C. § 103(a)
Claim 35 requires “receiving a selection of the user interface feature”
from two or more classes listed in the claim. The Examiner found the names
of classes listed in the claims are not functional and do not distinguish the
claims over the prior art. Ans. 13–14, 25–27. The Examiner further
concluded that, based on Yoder’s teachings of “Prime Products Inventory
Detailed Transactions” in Figure 3 and “Prime Products Inventory Summary
Report” in Figure 4, it would have been obvious to a person of ordinary skill
in the art to include an inventory control user interface class (Fig. 3) and a
report user interface class (Fig. 4). Ans. 12, 26. The Examiner also pointed
out that claim 35 lists one class twice (“report user interface class”).
Ans. 26.
Appellants argue that “[t]he specification discloses that each of these
classes are [sic] directed to functional material” and that “the Examiner has
entirely failed to consider” the description of the listed classes in the
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specification. Ans. 13 (citing Spec. 17–31). We are not persuaded because
claim 35 does not recite the functions outlined in the 15 pages of the
Specification cited by Appellants, and we do not import limitations from the
Specification into the claims. Phillips v. AWH Corp., 415 F.3d 1303, 1316,
1323 (Fed. Cir. 2005) (en banc). The evidence of record supports the
Examiner’s findings and conclusion of obviousness, and, as such, we are not
persuaded of error.
Based on the foregoing, we sustain the rejection of claim 35 under 35
U.S.C. § 103(a).
Rejections of Remaining Claims under 35 U.S.C. §§ 102(b) and 103(a)
Appellants acknowledge “only claims 21, 22, 26, 28 and 35 have been
separately argued.” Reply Br. 4. Because the rejections of these claims are
sustained, we also sustain the rejection of claims 23–25, 27, and 29–34
under 35 U.S.C. § 102(b) and claims 36–40 under 35 U.S.C. § 103(a).
Obviousness-Type Double Patenting Rejection
As stated in the Appeal Brief, “Appellants do not contest the
obviousness-type double patenting rejection.” App. Br. 9. As such, we
summarily sustain this rejection.

DECISION
We affirm the Examiner’s rejections of claims 21–40.
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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