Ex Parte DEW et al

Board of Patent Appeals and Interferences

Feb 25, 2003

08852507 (B.P.A.I. Feb. 25, 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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES R. DEW, BARRY F. RUZEK
AND MARK G. HAZZARD
____________
Appeal No. 2002-0884
Application No. 08/852,507
____________
ON BRIEF
____________
Before RUGGIERO, BARRY, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-11 and 15-18, which are all of the claims pending in the
present application. Claims 12-14 have been canceled.
The disclosed invention relates to a user “help” system useful
in data processing systems using different and heterogeneous
computer platforms. A user is provided assistance concerning the
interoperation of diverse application programs which may be located
within the different and heterogeneous computer platforms.
Appeal No. 2002-0884
Application No. 08/852,507
1 Although in the final Office action, the Examiner’s stated ground of
rejection of claims 15-18 included a reliance on the combination of Fults and
Hickey (U.S. Patent No. 5,627,977 issued May 6, 1997), the statement of the
grounds of rejection of claims 15-18 at page 3 of the Answer relies on Fults
alone. Since the Examiner makes no mention of Hickey anywhere in the Answer,
we consider the rejection of claims 15-18 to be based solely on Fults.
2 In response to the final Office action mailed February 3, 1999 (Paper
No. 7), the Appeal Brief was filed June 7, 1999 (Paper No. 8). In response to
the Examiner’s Answer dated August 2, 1999 (Paper No. 10), a Reply Brief was
filed September 28, 1999 (Paper No. 11), which was acknowledged and entered by
the Examiner as indicated in the communication dated October 9, 2002 (Paper
No. 14).
2
Claim 1 is illustrative of the invention and reads as follows:
1. In a data processing system having a first autonomous
application program and having a second autonomous application
program, the improvement comprising;
a third autonomous application program having means for
describing interoperability of said first autonomous
application program and said second autonomous
application program in human understandable form.
The Examiner relies on the following prior art:
Fults et al. (Fults) 5,327,529 Jul. 05, 1994
Claims 1-11 stand finally rejected under 35 U.S.C. § 102(b) as
being anticipated by Fults. Claims 15-18 stand finally rejected
under 35 U.S.C. § 103(a) as being unpatentable over Fults.1
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs2, final Office action,
and Answer for their respective details.
OPINION
Appeal No. 2002-0884
Application No. 08/852,507
3
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner, the arguments in support of
the rejections, and the evidence of anticipation and obviousness
relied upon by the Examiner as support for the rejections. We
have, likewise, 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 Fults reference does not fully meet the invention as set
forth in claims 1-6, but reach the opposite conclusion with respect
to claims 7-11. It is further our view 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
recited in claims 15-18. Accordingly, we affirm-in-part.
Initially, we note that anticipation is established only when
a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Appeal No. 2002-0884
Application No. 08/852,507
4
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claims 1 and 4, the Examiner
attempts to read the various limitations on the disclosure of
Fults. In particular, the Examiner points to the illustrations in
Figures 1, 2, 45, and 46 of Fults along with the accompanying
descriptions at columns 3, 6, 7, 9, 10, 22, and 24.
Appellants’ arguments in response assert a failure of Fults to
disclose every limitation in independent claims 1 and 4 as is
required to support a rejection based on anticipation. In
particular, Appellants’ arguments (Brief, pages 9-11; Reply Brief,
pages 4 and 5) assert the Examiner’s misinterpretation of the Fults
reference which, in Appellants’ view, has no disclosure of three
application programs, let alone how one application program
describes the interoperability of two other application programs as
set forth in the appealed claims. Appellants’ arguments in the
Briefs assert (Brief, at 10) that Fults is not concerned with the
relationship of separate autonomous application programs but,
rather, with an attempt to design a user interface for a single
application program.
Appeal No. 2002-0884
Application No. 08/852,507
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After reviewing the Fults reference in light of the arguments
of record, we are in general agreement with Appellants’ position as
expressed in the Briefs. Although the Examiner interprets (Answer,
page 4) the specific user interfaces and the generic user interface
in Fults as being “application programs,” we find no evidentiary
support for such a conclusion. We agree with Appellants that the
Examiner has provided no documentary support for the asserted
definition (id.) of an “application program” as “... a program
designed to assist in the performance of a specific task, such as
to exchange information with the operating system.” When not
defined by an applicant in the specification, the words of a claim
must be given their plain meaning. In other words, they must be
read as they would be interpreted by those of ordinary skill in the
art. In re Sneed, 710 F.2d 1544, 1547, 218 USPQ 385, 388 (Fed.
Cir. 1983).
Our review of Fults reveals that the generic user interface
software as well as the specific user interface software are
specifically described as being part of the operating system
software (Fults, column 15, line 6 to column 16, line 5, column 24,
lines 38-49, and column 25, lines 26-35) which, in our view, a
skilled artisan would recognize as being in contrast with
Appeal No. 2002-0884
Application No. 08/852,507
3 The attached copies of excerpts from Computer Dictionary, (Microsoft
Press®, Second Edition 1994) and Computer Desktop Encyclopedia, establish, in
our view, that one of ordinary skill would recognize and appreciate that the
ordinary and accepted meaning of the term “application program” signifies
something distinct from “operating system programs.”
6
application programs.3 The Fults reference clearly recognizes this
distinction since the generic and user interface programs are
unambiguously referred to as “operating system programs”, not
“application programs.” We also note that the generic and specific
user interface programs in Fults, described therein as included
within the operating system software, would not meet the Examiner’s
proffered and unsupported definition of an application program.
Further, it is our opinion that the Examiner has failed to
show how Fults discloses another key feature of independent claims
1 and 4, i.e., the requirement that an application program describe
the interoperability of two other application programs. We find no
basis in Fults, and the Examiner has provided none, for the
Examiner’s conclusion (Answer, page 4) that an “... operator can
direct communication between the interfaces using the generic user
interface.” The Examiner must not only make requisite findings,
based on the evidence of record, but must also explain the
reasoning by which the findings are deemed to support the asserted.
See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002).
Appeal No. 2002-0884
Application No. 08/852,507
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In view of the above discussion, since all of the claimed
limitations are not present in the disclosure of Fults, we do not
sustain the Examiner’s 35 U.S.C. § 102(b) rejection of independent
claims 1 and 4, nor of claims 2, 3, 5, and 6 dependent thereon.
We also do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection, based on Fults, of independent claim 15, as well as
claims 16-18 dependent thereon. In addressing the language of
independent claim 15, the Examiner, recognizing that Fults does not
explicitly disclose a multiple computer structure, nevertheless
suggests the obviousness to the skilled artisan of implementing the
plural application program interoperability features of Fults in a
network computer environment. We find, however, for all of the
reasons discussed supra, that Fults does not teach or suggest a
system with plural autonomous application programs, let alone one
in which the interoperability of two application programs is
described by another application program.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(b) rejection of claims 7-11, we note that, while we found
Appellants’ arguments to be persuasive with respect to the 35
U.S.C. § 102(b) rejection of claims 1-6 previously discussed, we
reach the opposite conclusion with respect to claims 7-11. At the
outset, a review of the language of claims 7-11 reveals that,
Appeal No. 2002-0884
Application No. 08/852,507
8
unlike claims 1-6 which recite “autonomous application programs”,
claims 7-11 require a plurality of “software products.” It is
apparent to us that, in Fults, the application program for which a
designer is to develop a user interface, as well as the generic and
user interface operating system programs for implementing the
interface design, are undisputably “software products.” Further,
we fail to see how the stored “hint” functions described by Fults
in columns 9, 10, and clearly designed to aid a developer in
designing a specific user interface, could be considered anything
other than a “help” function as claimed.
We also find to be unpersuasive Appellants’ arguments with
respect to dependent claims 8 and 9, directed to the
interoperability of the claimed first and second products.
Appellants’ arguments are based on their previous assertion that
Fults lacks two separate software products and a help function,
assertions which, from our previous discussion, we find to be
unfounded. We also find, as asserted by the Examiner (Answer, page
4) that Fults discloses that the “hint” functions provide
information regarding the interoperability of the various “software
products,” i.e., the application program for which a user interface
is to be developed, as well as the generic and specific interface
operating system programs used in developing the user interface.
Appeal No. 2002-0884
Application No. 08/852,507
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We further agree with the Examiner, in contrast to Appellants’
contentions regarding dependent claims 10 and 11, that clear
disclosure exists in Fults of software products produced by
different vendors (e.g. column 17, lines 10-16), and that the
system of Fults (e.g. column 6, lines 48-67 and column 20, lines
35-50) describes different software interface environments and
operating systems constituting “heterogeneous computer platforms”
as broadly claimed by Appellants.
In summary, we have not sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 15-18. With regard to the Examiner’s
rejection under 35 U.S.C. § 102(b), we have not sustained the
rejection of claims 1-6, but have sustained the rejection of claims
7-11. Therefore, the Examiner’s decision rejecting claims 1-11 and
15-18 is affirmed-in-part.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
Appeal No. 2002-0884
Application No. 08/852,507
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AFFIRMED-IN-PART

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR/lp
CHARLES A. JOHNSON
UNISYS CORPORATION
2276 HICHCREST ROAD
ROSEVILLE, MN 55113
Appeal No. 2002-0884
Application No. 08/852,507
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