Ex Parte Bickerton et alDownload PDFBoard of Patent Appeals and InterferencesJun 4, 200308827285 (B.P.A.I. Jun. 4, 2003) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. Paper No. 23 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MATTHEW JOHN BICKERTON, KATHRYN ANN BOHRER, EMMA SUZANNE HUGHES, EDWARD WILLIAM KENWORTHY, RUPERT JEREMY MUSGROVE, LINDAMAY ROSE PATTERSON, STEVEN PORTER, DAVID DENNIS SALT, and DUNCAN KEITH SCATTERGOOD ____________ Appeal No. 2001-0024 Application No. 08/827,285 ____________ ON BRIEF ____________ Before RUGGIERO, DIXON, and LEVY, Administrative Patent Judges. LEVY, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims 3-9, 11-17, 19-25, 27-33, and 35-41, which are all of the claims pending in this application. Claims 1, 2, 10, 18, 26 and 34 have been canceled. Appeal No. 2001-0024 Application No. 08/827,285 Page 2 BACKGROUND Appellants' invention relates to an object oriented technology framework for a general ledger. An understanding of the invention can be derived from a reading of exemplary claim 3, which is reproduced as follows: 3. A computer system comprising: a central processing unit; a user interface; and a main memory having an operating system that supports an object oriented programming environment containing an object oriented framework that provides an extensible business financial general ledger system, the object oriented framework comprising a set of object oriented classes including at least one user- extensible class that a user of the framework extends using object oriented principles of inheritance to define a business financial general ledger application, the main memory further including an Application category of cooperating objects that contain business financial data and the framework enables performing general ledger operations on the business financial data, wherein the Application category of cooperating objects includes a Chart of Account Attributes object class that specifies an analysis group, account types, and account attributes of the business financial data. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Marks 5,117,356 May 26, 1992 Parrish et al. 5,659,735 Aug. 19, 1997 (Parrish) (filed Dec. 9, 1994) Bigus 5,787,425 Jul. 28, 1998 (filed Oct. 1, 1996) Appeal No. 2001-0024 Application No. 08/827,285 Page 3 Claims 3-9, 11-17, 19-25, and 35-41 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bigus in view of Marks. Claims 27-33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bigus in view of Marks and Parrish. Rather than reiterate the conflicting viewpoints advanced by the examiner and appellants regarding the above-noted rejections, we make reference to the examiner's answer (Paper No. 15, mailed December 6, 1999) and the final rejection (Paper No. 9, mailed March 22, 1999) for the examiner's complete reasoning in support of the rejections, and to appellants' brief (Paper No. 14, filed September 27, 1999) and reply brief (Paper No. 16, filed February 9, 2000) for appellants' arguments thereagainst. Only those arguments actually made by appellants have been considered in this decision. Arguments which appellants could have made but chose not to make in the briefs have not been considered. See 37 CFR 1.192(a). OPINION In reaching our decision in this appeal, we have carefully considered the subject matter on appeal, the rejections advanced by the examiner, and the evidence of obviousness relied upon by the examiner as support for the rejections. We have, likewise, Appeal No. 2001-0024 Application No. 08/827,285 Page 4 reviewed and taken into consideration, in reaching our decision, appellants' arguments set forth in the briefs along with the examiner's rationale in support of the rejections and arguments in rebuttal set forth in the examiner's answer. It is our view, after consideration of the record before us, that the evidence relied upon and the level of skill in the particular art would not have suggested to one of ordinary skill in the art the invention as set forth in appellants' claims. Accordingly, we reverse. We begin with the rejection of claims 3-9, 11-17, 19-25, and 35-41 under 35 U.S.C. § 103 as being unpatentable over Bigus in view of Marks. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why one having ordinary skill in the pertinent art would have been led to modify the prior art or to combine prior art references to arrive at the claimed invention. Such reason must stem from some teaching, suggestion or implication in the prior art as a whole Appeal No. 2001-0024 Application No. 08/827,285 Page 5 1 Incorporated by reference into the examiner's answer (page 3). or knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of complying with the burden of presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to overcome the prima facie case with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). We turn first to independent claim 3. The examiner's position (final rejection1, pages 3 and 4) is that Bigus does not disclose an example of a framework that provides an extensible business general ledger system. The examiner further asserts Appeal No. 2001-0024 Application No. 08/827,285 Page 6 (final rejection, page 4) that Bigus fails to disclose objects that contain business financial data and perform general ledger operations. The examiner additionally asserts (id.) that Bigus fails to disclose object classes that include an analysis group, an account type group, and other account attributes used in ledger account maintenance. To overcome these deficiencies of Bigus, the examiner turns to Marks for a teaching of a computer program that performs various record keeping functions. The examiner asserts (id.) that it would have been obvious to combine Marks’ automated ledger account maintenance system with the teachings of Bigus' object oriented data mining system for the purpose of creating financial related application programs, such as general ledge software, that are much easier for an application program developer to update and maintain. The examiner further relies upon Marks for a teaching of a computer program that performs various record keeping functions found in a business. The examiner additionally relies upon Marks for a teaching of a computer program for record keeping procedures that uses system accounting controls definable by the record keeping entity whose accounts are dynamically maintained by the system. Appeal No. 2001-0024 Application No. 08/827,285 Page 7 Appellants assert (answer, page 5) that: (a) the computer program in Marks is not object oriented, so that it does not contain cooperating objects as recited in claim 3. Appellants argue (brief, page 8) that: Bigus makes it clear that the quality of a framework rests on design choices involving which aspects are core and which aspects are extensible. In examining Bigus, which relates specifically to data mining, one of ordinary skill in the art would have no idea how to select which functions in Marks to make core and which to make extensible. Appellants further assert (page 6) that: (b) claim 3 recites a single “‘Chart of Account Attributes object class that specifies an analysis group account types, and account attributes of the business financial data’,†and that even if the prior art teaches multiple classes with these features, there is no motivation to combine these multiple classes into a single class, as required by claim 3. It is further asserted (brief, page 7) that: (c) neither the symbolic control records nor the symbolic codes in Marks relate in any way to analyzing anything, and that these features of Marks cannot read on the analysis group of claim 3, and (brief, pages 7 and 8) that: (d) “[f]or this reason, the teaching in Marks does not properly read on the ‘account attributes’ in claim 3.†Appeal No. 2001-0024 Application No. 08/827,285 Page 8 The examiner responds (answer, page 4) with respect to (a) that “[o]ne of ordinary skill would have broadly viewed the program modules of Marks as cooperating objects, because in order for the system to function properly the modules must work in tandem to produce the final accounting results.†The examiner adds (answer, page 6) that “one of ordinary skill in the computer programming art would know the advantages of applying object oriented programming techniques to an accounting software program like Marks to make it flexible and extensible in order to serve more users.†The examiner additionally asserts (answer, pages 6 and 7) that Marks (col. 8, lines 12-24) provides the foundation for the core business functions and the extensible functions (such as balances, budgets, etc). The examiner adds (answer, page 7) that "[t]hose of ordinary skill in the computer programming art would have been able to construct such a system without undue experimentation in light of the teachings and suggestions in Bigus. With respect to (b) the examiner responds (answer, page 4) that Table II of Marks lists the symbolic codes, control records and attributes used in the accounting system, which the examiner considers to be the equivalent of the claimed "Chart of Accounting Attributes." The examiner responds (answer, pages 4 and 5) with respect to (c) that claim 3 Appeal No. 2001-0024 Application No. 08/827,285 Page 9 specifies an analysis group, and does not recite performing an analysis. The examiner asserts (id.) that in Marks, the symbolic control records are grouped together under specific ledger files that can be used for comparing data entered by a user to data stored in the ledger files. The examiner interprets comparing the data stored in the ledger file as being synonymous to analyzing data in a ledger file, and adds that "[b]ecause the records are grouped under one file heading, it is obvious that when a person is analyzing information in the specific file that the file heading becomes the Analysis group." The examiner responds, (answer, page 5), with respect to (d), by noting that “[a]ttributes are defined as the name or structure of a field in a database record,†and asserting essentially that because the fields associated with the records provide a name or structure for the record and describe the contents of the fields, that the fields are attributes. Appellants respond (reply brief, page 5) with respect to (a) that “[e]ven if Marks and Bigus are properly combined to produce an object oriented framework that performs accounting functions, this combination does not teach a framework that has a single object class that ‘specifies an analysis group, account types, and account attributes of the business financial data’ as recited Appeal No. 2001-0024 Application No. 08/827,285 Page 10 in claim 3.†Appellants respond (reply brief, page 5) with respect to (b) that the examiner: [D]oes not give any rationale or support for why it would have been obvious to one of ordinary skill in the art to provide a single class with the limitations in claim 3. This is really the stake through the heart of the Examiner’s argument. In the Answer, the Examiner states that Table II in Marks at col. 9, line 16 to col. 10, line 61, is equivalent to the Chart of Account Attributes in claim 3. However, Table II in Marks is a table of data. Classes in an object oriented system specify both data and object methods for operating on that data. For this reason Table II in Marks cannot properly read on the Chart of Account Attributes object class in claim 3. Appellants respond (reply brief, page 4) with respect to (c) that: Marks teaches that data entered by a user is compared to data stored in a ledger file. Certainly the operation being performed is properly characterized as an ‘analysis’, but this analysis is an analysis of the data entered by a user against the ledger data, not an analysis of the ledger data. The ledger data is simply read and used as a reference for analyzing data input by a user. Broadly interpreting such static data as an ‘analysis group’ is clearly a stretch beyond the reasonable bounds of the teachings of Marks. From our review of Bigus and Marks, as well as the arguments presented by appellants and the examiner, we are in agreement with appellants, for the reasons which follow, that the prior art does not teach or suggest applying the object oriented framework Appeal No. 2001-0024 Application No. 08/827,285 Page 11 to Marks' automated ledger account system. Marks discloses (col. 2, lines 4-11) that: [C]omputer systems introduce the possibility of computer records being altered or erased or deleted without any indication of a separate, correction entry. This has created a number of serious accounting, auditing, and reporting problems, such as detection of unauthorized changes to the data recorded in the computer records, unauthorized deletion of valid records, and unauthorized insertion of accounting records. Marks further discloses (col. 16, lines 41-46) that “the system provides complete traceability so that unauthorized changes to the accounting records stored in the system’s data files are readily detectable by automated processes. Thus, the system provides a higher level of security than known computer implemented accounting systems.†Because Marks is directed to providing heightened security to accounting records in order to prevent unauthorized changes to the system's data files, we find no teaching or suggestion, and no convincing line of reasoning has been advanced by the examiner, that would have taught or suggested to an artisan the modifications proposed by the examiner. In any event, even if there was a suggestion in the prior art to combine teachings of Bigus and Marks, claim 3 would still not be met because there is no teaching or suggestion suggestion of which functions in Marks should become core Appeal No. 2001-0024 Application No. 08/827,285 Page 12 functions and which functions of Marks should become extensible functions, absent appellants' disclosure. We are not persuaded by appellants' assertion that claim 3 is not directed to a single class (brief, page 6), as the claim recites "wherein the general ledger Application category of cooperating objects includes a Chart of Account Attributes object class" which does not exclude additional classes. Also, the transitional phrase "comprising" used in claim 3 is open-ended in nature and does not preclude additional classes. However, although we find that claim 3 is not limited to a single class, we find that even though the symbolic control records are grouped together under specific ledger files that can be used for comparing data entered by the examiner with data stored in the ledger files, the comparison, in and of itself, is not an analysis group. We therefore find that the comparison does not meet the claimed "analysis group" recited in claim 3. Moreover, we do not agree with the examiner (answer, page 4) that Table II of Marks is the equivalent to the “Chart of Account Attributes". Claim 3 recites "a Chart of Account Attributes object class." Because Table II of Marks is a table of data, and classes in an object oriented system specify both data and objects for operating on data, we find that Table II of Marks is Appeal No. 2001-0024 Application No. 08/827,285 Page 13 not eequivalent to the claimed "Chart of Account Attributes object class." From all of the above, we find that the examiner has failed to establish a prima facie case of obviousness of claim 3. Accordingly, the rejection of claim 3 under 35 U.S.C. § 103(a) is reversed. As independent claims 11, 19, and 35 contain similar limitations, the rejection of claims 11, 19, and 35, under 35 U.S.C. § 103(a), as well as claims 4-9, 12-17, 20-25, and 35-41 dependent therefrom, is reversed. We turn next to the rejection of claims 27-33 as unpatentable over Bigus in view of Marks and Parrish. We reverse the rejection of claims 27-33 under 35 U.S.C. § 103(a) as Parrish does not make up for the deficiencies of the basic combination to Bigus and Marks. Appeal No. 2001-0024 Application No. 08/827,285 Page 14 CONCLUSION To summarize, the decision of the examiner to reject claims 3-9, 11-17, 19-25, 27-33, and 35-41 under 35 U.S.C. § 103(a) is reversed. REVERSED JOSEPH F. RUGGIERO ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT JOSEPH L. DIXON ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) STUART S. LEVY ) Administrative Patent Judge ) SSL/kis Appeal No. 2001-0024 Application No. 08/827,285 Page 15 MARTIN & ASSOCIATES, LLC P. O. BOX 548 CARTHAGE, MO 64836-0548 Copy with citationCopy as parenthetical citation