Ex Parte Knapton

Board of Patent Appeals and Interferences

May 23, 2005

10264733 - (D) (B.P.A.I. May. 23, 2005)

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written for publication and is not binding precedent of the Board.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 KENNETH S. KNAPTON III
___________
Appeal No. 2005-0523
Application No. 10/264,733
__________
ON BRIEF
__________
Before JERRY SMITH, DIXON, and GROSS, 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 1-5 and 12-17, which
constitute all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for creating a truly binary compatible object system in
which a second object may be snapped into a container or client
containing a first object and the second object may be utilized
without recompiling. No recompiling in the invention is
necessary even though the first and second objects have different
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(Globally Unique Identifiers) GUIDs and even if the first and
second objects have different interfaces.
Representative claim 1 is reproduced as follows:
1. A method for object oriented programming comprising:
creating a first object having a first identifer, said
object associated with a first client;
providing a second object having a second identifier, said
second object associated with the first client, said first and
second identifiers being different; and
using said second object with said first client in place of
the first object without recompiling.
The examiner relies on the following reference:
Miloushev et al. (Miloushev) US 2001/0037412 Nov. 1, 2001
Claims 1-5, 12, 13 and 15-17 stand rejected under 35
U.S.C. § 102(e) as being anticipated by the disclosure of
Miloushev. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Miloushev taken alone.
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 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, the
appellant’s arguments set forth in the briefs along with the
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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 disclosure of Miloushev does not support either of
the prior art rejections made by the examiner. Accordingly, we
reverse.
We consider first the rejection of claims 1-5, 12, 13 and
15-17 as being anticipated by Miloushev. 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. 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).
The examiner has indicated how he reads the claimed
invention on the disclosure of Miloushev [rejection mailed March
28, 2003, pages 2-3; incorporated into answer at page 3].
Appellant has indicated that these claims stand or fall together
as a single group [brief, page 6]. With respect to
representative claim 1, appellant argues that Miloushev fails to
teach selective use of one object in place of another object that
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is associated with a client without a need of recompilation.
Appellant argues that instead of teaching replacement of one
object with another object, Miloushev teaches allowing objects to
invoke directly the services of other objects. Thus, appellant
argues that at least two objects in Miloushev must interact with
one another as opposed to one object simply taking the place of
another object as claimed. Appellant also argues that in
Miloushev there is never any insertion of one object for another
object when the two identifiers of the associated objects are
different. Finally, appellant argues that any suggestion of
inherency in Miloushev is not supported by the evidence [brief,
pages 6-9].
The examiner responds that ActiveX controls use dynamic
link libraries (DLLs) and that DLLs do not require recompiling.
The examiner asserts that static links in Miloushev are
recompiled, but dynamic links are not recompiled. The thrust of
the examiner’s position is that the replacement of one object by
another as claimed is the essence of dynamic linking [answer,
pages 4-6].
Appellant responds that in Miloushev two objects must
interact rather than one object replacing another as claimed.
Appellant also responds that there is no connection between
having to compile or recompile and the DLL feature of ActiveX
controls. Appellant also asserts that the examiner has pointed
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to no portion of Miloushev which addresses the recompilation
problem [reply brief].
We will not sustain the examiner’s rejection of
representative claim 1 or of any of the other claims rejected on
anticipation for essentially the reasons argued by appellant in
the briefs. As argued by appellant, Miloushev teaches that one
object may invoke directly the services of other objects.
Although this invocation occurs dynamically and does not require
recompiling, the ability of one object to invoke the services of
another object is not the same as using one object in place of
the other object as claimed. The first object in Miloushev
retains control while it is invoking the services of the second
object. The second object interacts with the first object in
Miloushev, but the second object does not take the place of the
first object as claimed. We agree with appellant that the
claimed step of “using said second object with said first client
in place of the first object without recompiling” must be
interpreted such that the second object replace the first object
rather than simply interact with it. We do not agree with the
examiner’s position that the use of DLLs, by itself, teaches the
claimed invention because it fails to account for the replacement
feature of the claims.
We now consider the rejection of claim 14 under 35 U.S.C.
§ 103 based on Miloushev taken alone. We will not sustain the
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examiner’s rejection of claim 14 because the examiner has failed
to establish a prima facie case of obviousness. The rejection is
based on the deficiencies in Miloushev discussed above.
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-5 and 12-17 is
reversed.
REVERSED
)
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joseph L. Dixon )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Anita Pellman Gross )
Administrative Patent Judge )
JS/eld
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