Ex Parte Hicks

Board of Patent Appeals and Interferences

Apr 7, 2003

09024111 (B.P.A.I. Apr. 7, 2003)

1
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publication and is not binding precedent of the Board.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. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DANIEL RODMAN HICKS
_____________
Appeal No. 2002-1324
Application No. 09/024,111
______________
ON BRIEF
_______________
Before HAIRSTON, KRASS, and JERRY SMITH, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-69, all of the
pending claims.
The invention is directed to the use of file attributes to associate one computer
program with another. A second set of program code is generated from a first set of
program code and the second set of program code is associated with a retrieved file
using a file attribute.
Representative independent claim 1 is reproduced as follows:
Appeal No. 2002-1324
Application No. 09/024,111
2
1. A method of retrieving a program for execution on a computer
system, the program stored in a file on the computer system and including
a first set of program code, the method comprising:
(a) retrieving the file;
(b) generating a second set of program code from the first set of
program code; and
(c) associating the second set of program code with the file using a
file attribute.
The examiner relies on the following reference:
Schwartz et al. [Schwartz] 5,047,918 Sep. 10, 1991
Claims 1-69 stand rejected under 35 U.S.C. § 102 (b) as anticipated by
Schwartz.
Reference is made to the brief (supplemental brief-Paper No. 12-June 22, 2001)
and answer (Paper No. 13) for the respective positions of appellant and the examiner.
OPINION
Under 35 U.S.C. § 102 (b), 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 Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); cert. dismissed, 468
U.S. 1228 (1984); W.L. Gore and Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appeal No. 2002-1324
Application No. 09/024,111
3
It is the examiner’s position that the abstract, title and column 1, lines 8-35 of
Schwartz teaches the subject matter of the preamble and the “retrieving the file” of
instant claim 1. With regard to the claimed “generating a second set of program code
from the first set of program code,” the examiner alleges that this is “inherent” in
Schwartz. The examiner points to the “ripple effect” disclosure in column 1 of Schwartz,
and particularly refers to “changes to related documents.” Finally, the examiner
identifies column 1, lines 36-66, and column 2, lines 9-14, of Schwartz as the claimed
“associating the second set of program code with the file using a file attribute.”
While we appreciate the examiner’s efforts to particularly identify portions of
Schwartz allegedly corresponding to the claimed elements, we do not agree with the
examiner’s assessment. In particular, while the examiner apparently is equating the
data “files” of Schwartz with the claimed sets of “program code,” data files are not sets
of program code and, in our view, it is not reasonable to allege that they are identical.
Since Schwartz does not disclose any type of “program code,” it is unreasonable
to conclude that the reference discloses or suggests the claimed generation of a
second set of program code from a first set of program code. Moreover, the examiner’s
allegation of “inherency” is not well founded since inherency means that the alleged
function must, of necessity, occur. A finding of inherency cannot be based on
speculation and/or a finding that something might happen.
Appeal No. 2002-1324
Application No. 09/024,111
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Accordingly, since, in our view, the examiner has not set forth a prima facie case
of anticipation, we will not sustain the rejection of claims 1-69 under 35 U.S.C. § 102(b).
The examiner’s decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
eak/vsh
Appeal No. 2002-1324
Application No. 09/024,111
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STEVEN ROTH
IBM CORPORATION
DEPARTMENT 917
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829