Ex parte Kevin H. Degraaf

Board of Patent Appeals and Interferences

Oct 31, 1997

07992069 (B.P.A.I. Oct. 31, 1997)

Application for patent filed December 17, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEVIN H. DeGRAAF

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Appeal No. 95-3641
Application 07/992,0691
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HEARD: October 14, 1997
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Before KRASS, JERRY SMITH and CARMICHAEL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-3641
Application 07/992,069
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-8, which constitute all
the claims in the application.
The claimed invention pertains to a method and apparatus
for providing compatibility between a prior version of a computer
program and a later version of the computer program.
Specifically, when a given version of a computer program saves
data, it stores the data in both a file format specific to the
version of the program and in a file format which is independent
of the specific version and is universally recognizable. That
way, when one version of the program seeks to access data from a
different version of the program, it reads the specific format
version if it understands it or reads the independent format
version if it does not recognize the specific version.
Representative claim 1 is reproduced as follows:
1. A method executed in a computer system for providing
compatibility between a prior version of a computer program and a
later version of the computer program, the computer including a
memory storing a file with data in both a version dependent
external format specific to the prior version of the computer
program and data in a version independent data format, the method
comprising the steps of:
receiving a request to process the data stored in the
file using the later version of the computer program;
determining whether the data stored in the version
dependent external format can be processed by the later version
of the computer;
Appeal No. 95-3641
Application 07/992,069
Since the statement of the rejection relies only on WP2
5.1 to support the obviousness of the claimed invention, we have
not considered the newly cited patent to Wright in support of the
rejection. Note In re Hoch, 428 F.2d 1341, 166 USPQ 406 (CCPA
1970).
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when the data can be processed by the later version of
the computer program, loading the data into memory;
when the data cannot be processed by the later version of
the computer program, retrieving the data in the version
independent data format, converting the retrieved data to a
version dependent internal format that can be processed by the
later version of the computer program, and loading the converted
data into memory; and
processing the loaded data using the later version of the
computer program.
The examiner relied on the following reference in the
final rejection:
Baumgarten et al., “Using Wordperfect® 5.1" (WP 5.1), Special
Edition, Que Corporation, 1989, pages 305-315, 345-348, 370-391,
533-556 and 835-845.
The examiner cited the following new reference in the
examiner’s answer:
Wright 4,751,740 June 14, 1988
Claims 1-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of WP 5.1 . 2
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
Appeal No. 95-3641
Application 07/992,069
4
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner's
rationale in support of the rejection 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 obviousness of the invention as set forth in
claims 1-8. Accordingly, we reverse.
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
Appeal No. 95-3641
Application 07/992,069
5
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
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 Hospital Systems, Inc. v.
Montefiore Hospital, 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).
With respect to claims 1-8, the examiner’s rejection
notes that WP 5.1 has the ability to store data files in either a
version specific format or in ASCII format which is a version
independent format. Although WP 5.1 typically only stores files
in a single one of the formats, the examiner observes that files
in WP 5.1 can be automatically stored and retrieved in different
formats using conventional macros. The examiner concludes that
it would have been obvious to the artisan to use the features of
Appeal No. 95-3641
Application 07/992,069
6
WP 5.1 in a manner to carry out the claimed invention [final
rejection, pages 2-3].
Appellant responds that the examiner has failed to
establish a prima facie case of obviousness. Specifically,
appellant argues that 1) The examiner has not shown any
suggestion in the prior art to automatically store data in two
formats in a file; 2) The examiner has not shown any compelling
motivation to write a macro to automatically store data in two
formats; 3) The examiner is using hindsight reconstruction; and
4) The examiner has mischaracterized appellant’s invention as a
design choice [brief, pages 5-7]. Appellant also argues that
even the obviousness of writing a macro in WP 5.1 would not have
suggested the invention as recited in claims 1-8.
The examiner does not respond specifically to these
points argued by appellant, but rather, argues that the known use
of a universal data format as a translation bridge between
different data formats would have made it an obvious design
choice to employ any of a combination of multiple data formats
[answer, pages 3-6].
When the evidence as a whole is considered and the
relative persuasiveness of the examiner’s and appellant’s
arguments are factored in, we agree with appellant that the
Appeal No. 95-3641
Application 07/992,069
7
claimed invention is not suggested by WP 5.1. We can find
nothing in the conventional features of WP 5.1 which would have
suggested the invention as claimed by appellant. The examiner’s
reliance on the obviousness of a translation bridge between data
formats does not seem pertinent to the storage of files in WP
5.1. This concept only arises because the examiner is trying in
hindsight to justify doing what appellant has done. The
“translation bridge” teachings of Wright have not been considered
as noted above. In our view, absent advance knowledge of this
invention gained by reading appellant’s specification, the
artisan would not have found the claimed invention suggested by
the conventional operation of WP 5.1.
We also note that the examiner’s motivation for modifying
WP 5.1 to arrive at the claimed invention amounts to nothing more
than a recognition of the advantages of the invention described
in appellant’s specification. We are not convinced that these
advantages were at all apparent to the artisan based only on the
teachings of WP 5.1.
In summary, we are not persuaded that the teachings of WP
5.1 would have suggested to the artisan the obviousness of the
invention as recited in any of claims 1-8. Therefore, the
decision of the examiner rejecting claims 1-8 is reversed.
Appeal No. 95-3641
Application 07/992,069
8
REVERSED
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
SEED AND BERRY
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