Ex Parte Johnson

Board of Patent Appeals and Interferences

Nov 26, 2003

09126996 (B.P.A.I. Nov. 26, 2003)

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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today was not written for publication and is not
binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JACK D. JOHNSON
________________
Appeal No. 2002-0901
Application 09/126,996
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH, and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-29, which constitute all the
claims in the application.
The invention pertains to a method and apparatus for
addressing the problem associated with computers which may not
properly transition with respect to certain date changes such as
Appeal No. 2002-0901
Application 09/126,996
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from the year 1999 to the year 2000. The invention solves the
problem by monitoring the current date and time and correcting
the date just before the transition occurs.
Representative claim 1 is reproduced as follows:
1. A computer system comprising:
at least one central processing unit (CPU);
a system memory coupled to the CPU;
a non-volatile memory coupled to the CPU, the non-volatile
memory storing a current date and time;
a real time clock coupled to the non-volatile memory to
provide the current date and time to the non-volatile memory;
a memory for storing computer software, the computer
software including a plurality of instructions capable of
performing the operations of:
monitoring the current date and time at periodic intervals;
determining whether the current date is equal to a
predetermined date;
if the current date is equal to the predetermined date,
determining whether the current time is a predetermined amount of
time before the end of that predetermined date;

if the current date is equal to the predetermined date and
the current time is a predetermined amount of time before the end
of the predetermined date, setting the date to the day after the
predetermined date and setting the time to 00:00:00.
The examiner relies on the following references:
Anderson et al. (Erasoft) GB 2 312 060 Oct. 15, 1997
Appeal No. 2002-0901
Application 09/126,996
1 This rejection was made in the final rejection, but it is
not repeated in the examiner’s answer. Since the response to
arguments section of the answer, however, indicates that the
rejection has been maintained, we will consider this rejection.
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The RighTime Clock Company, Inc., (Y2KPCPro.Com v2.32b), May 23,
1998 and printed from http://www.righttime.com/pub/year2000.tx.
Claims 9, 10, 19 and 25 stand rejected under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out
and distinctly claim the invention1. Claims 1-29 stand rejected
under 35 U.S.C. § 103(a). As evidence of obviousness the
examiner offers Erasoft in view of The RighTime Clock Company.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
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 obviousness relied upon by
the examiner as support for the obviousness rejection. We have,
likewise, reviewed and taken into consideration, in reaching our
decision, the appellant’s 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.
Appeal No. 2002-0901
Application 09/126,996
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It is our view, after consideration of the record before us,
that claims 9, 10, 19 and 25 particularly point out the invention
in a manner which complies with 35 U.S.C. § 112. We are also of
the view that the collective 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 obviousness of the invention as set
forth in claims 1-29. Accordingly, we reverse.
We consider first the rejection of claims 9, 10, 19 and 25
under the second paragraph of 35 U.S.C. § 112. The examiner’s
rejection states that the term “about” in these claims is
indefinite without a scale of reference [final rejection, page
3]. Appellant argues that the phrase “less than about five
seconds” in claim 9 is a clear, but flexible definition that
comports with the standards set forth in Ex Parte Eastwood, 163
USPQ 316 (Bd. Of Pat. App. & Int., 1968) and MPEP § 2173.02
[brief, pages 3-5]. The examiner responds by repeating the
position that the term “about” is not specific enough [answer,
page 3].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the disclosure
as it would be by the artisan. In re Moore, 439 F.2d 1232, 1235,
Appeal No. 2002-0901
Application 09/126,996
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169 USPQ 236, 238 (CCPA 1971). Acceptability of the claim
language depends on whether one of ordinary skill in the art
would understand what is claimed in light of the specification.
Seattle Box Co., v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). We agree with
appellant that the term “about” as used in the claimed invention
is reasonably precise and the artisan having considered the
specification of this application would have no difficulty
ascertaining the scope of the invention recited in the claims on
appeal. Therefore, the rejection of claims 9, 10, 19 and 25
under the second paragraph of 35 U.S.C. § 112 is not sustained.
We now consider the rejection of claims 1-29 under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Erasoft and The
RightTime Clock Company. 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
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Application 09/126,996
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at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
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.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); 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 and the relative persuasiveness of the
arguments. 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). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
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Application 09/126,996
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in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
With respect to independent claim 1, the examiner cites
Erasoft as teaching a computer system which monitors the current
date and time at periodic intervals. The examiner cites the
document from the RighTime Clock Company as teaching that an
erroneous DOS date in a computer can be corrected. The examiner
finds that it would have been obvious to the artisan to
periodically monitor the date and time in Erasoft and to set the
desired date and time before the roll over to the year 2000 in
order to avoid unpredictable events from an erroneous year
reading [final rejection, page 4].
Appellant argues that the corrective action in Erasoft is
not taken until after transition to the year 2000 has already
occurred. Appellant also argues that the document from The
RighTime Clock Company also takes corrective action after the
date rollover. Appellant argues there is no basis within the
applied prior art for the examiner’s alleged motivation for
combining the prior art teachings to set the correct date before
the transition has occurred as claimed [brief, pages 5-7]. The
examiner simply repeats the basis for the rejection in response
to appellant’s brief. Appellant responds that the examiner’s
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Application 09/126,996
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position is nothing but a conclusory opinion which is not
supported by any of the evidence of record in this case [reply
brief].
We will not sustain the examiner’s rejection of claim 1 for
essentially the reasons argued by appellant in the briefs. The
only evidence on this record which suggests setting the correct
time and date before a predetermined date occurs comes from
appellant’s own disclosure. The examiner’s mere opinion that it
would have been obvious to the artisan to modify the prior art so
as to arrive at the claimed invention lacks any support from the
applied prior art. As argued by appellant, neither the examiner
nor the Board of Patent appeals and Interferences can simply
substitute their opinion for evidence lacking in the record.
Each of independent claims 13, 20 and 27 contains
limitations similar to the limitations considered above with
respect to claim 1. Therefore, we also do not sustain the
examiner’s rejection of any of the independent claims on appeal
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Application 09/126,996
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or of any of the claims which depend therefrom. Accordingly, the
decision of the examiner rejecting claims 1-29 is reversed.
REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JS/dal
Appeal No. 2002-0901
Application 09/126,996
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