Ex Parte Bickerton et al

Board of Patent Appeals and Interferences

Jun 4, 2003

08827285 (B.P.A.I. Jun. 4, 2003)

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publication and is not binding precedent of the Board.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.

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Application No. 08/827,285
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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)
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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,
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Application No. 08/827,285
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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
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Application No. 08/827,285
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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
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(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.
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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.”
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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
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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
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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
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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
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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
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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.
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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
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