Ex Parte Kodosky et alDownload PDFBoard of Patent Appeals and InterferencesMay 27, 200810176726 (B.P.A.I. May. 27, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JEFFREY L. KODOSKY, DARSHAN SHAH, and STEVEN W ROGERS ____________ Appeal 2008-1208 Application 10/176,726 Technology Center 2100 ____________ Decided: May 27, 2008 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and HOWARD B. BLANKENSHIP, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2008-1208 Application 10/176,726 . BACKGROUND Appellants’ invention relates to a system and method for graphically configuring program invocation relationships by creating or modifying links among program icons in a configuration diagram. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below. 1. A computer-implemented method for configuring program execution, the method comprising: displaying a first program icon proximate to a first device icon in a configuration diagram on a display of a computer system, wherein the first program icon corresponds to a first program, and wherein the device icon corresponds to a first device whereupon the first program is deployed; displaying a second program icon in the configuration diagram on the display of the computer system, wherein the second program icon corresponds to a second program; displaying a first link icon connecting the first program icon and the second program icon in the configuration diagram in response to user input, wherein the first link icon visually indicates that the first program corresponding to the first program icon is configured to invoke the second program corresponding to the second program icon. PRIOR ART The prior art reference of record relied upon by the Examiner in rejecting the appealed claims is: Kodosky US 5,610,828 Mar. 11, 1997 2 Appeal 2008-1208 Application 10/176,726 REJECTIONS Claims 1-19 are rejected under 35 U.S.C. 102(b) as being clearly anticipated by Kodosky Rather than reiterate the conflicting viewpoints advanced by the Examiner and Appellants regarding the above-noted rejection, we make reference to the Examiner's Answer (mailed Jun. 27, 2007) for the reasoning in support of the rejections, and to Appellants’ Brief (filed Feb. 26, 2007) and Reply Brief (filed Aug. 27, 2007) for the arguments thereagainst. OPINION In reaching our decision in this appeal, we have given careful consideration to Appellants’ Specification and claims, to the applied prior art references, and to the respective positions articulated by Appellants and the Examiner. As a consequence of our review, we make the determinations that follow. At the outset, we note that Appellants' Brief does not clearly comply with 37 CFR § 41.37 (c)(1)(vii) which states "[a]ny claim argued separately should be placed under a subheading identifying the claimed by number." Appellants' have included no such required subheadings. Therefore, all claims should stand or fall with independent claim 1. In the interest of advancing prosecution, we will address the arguments to the individually identified dependent claims as set forth in the arguments in the Brief. "[T]he PTO gives claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). "[O]ur reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention 3 Appeal 2008-1208 Application 10/176,726 that would have otherwise been anticipated by the prior art." Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). "[W]hen descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability Mathias, 84 USPQ2d at 1279 (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). Furthermore, "[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.'' Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although ''[s]uch statements often . . . appear in the claim's preamble,'' In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. At the outset with respect to independent claim 1, we set forth the following claim interpretation with which we view the applied prior art teachings. We note that the preamble of independent claim 1 recites a computer implemented method for configuring program execution, yet the three steps recited in the method merely recite steps of "displaying...." We do not find that these discrete steps of “displaying” necessarily configure program execution since they do not set forth any functional relationship to the underlying machine (substrate) with which to place the steps into context. Moreover, the addition of printed matter to an existing product will not distinguish the invention from prior art products in terms of patentability if printed matter is not functionally related to product. 4 Appeal 2008-1208 Application 10/176,726 Furthermore we find the "wherein" clauses which have been added to the claims in the first and third steps to merely recite non-functional descriptive material with respect to what a user may understand, appreciate, or see in the arrangement of icons and data. We find no functional steps or functional relationship to the display (substrate) as recited in independent claim 1 beyond displaying of icons. "[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367, 1371-72 (Fed. Cir. 2000) (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15 (1869); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). "A reference anticipates a claim if it discloses the claimed invention 'such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.'" In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)). Of course, anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory reference . . . need not duplicate word for word what is in the claims." Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991). From our review of the teachings of Kodosky, we find that Kodosky in figures 20(A)-20(L) teaches a sequence of steps of forming program icons to perform a function for a virtual instrument. In figure 20F of Kodosky, additional built-in virtual instruments (sub-units) are used to construct an overall new virtual instrument. (Kodosky, col. 7-8). Additionally, we are unclear of the precise scope of the first link icon since Appellants’ Summary of the Claimed Invention does not identify any such icon in the drawings and 5 Appeal 2008-1208 Application 10/176,726 merely cites to three pages of the Specification. Therefore, we interpret the link icon to be merely a line on the display or a representation of a wire, yet this is not generally considered an icon. With respect to the Examiner's reliance upon figure 22 of Kodosky, we agree with the Examiner's reliance upon the display of various program icons for inputs and outputs to the iterative loop with the two virtual instruments. While Kodosky does not expressly teach or show, in the drawings, the functionality of each of these virtual instruments in figure 22, Kodosky does teach the ability to display the functionality of individual virtual instruments (device icons) and to also use those individual virtual instruments as sub-units in other virtual instruments. (See Kodosky, col. 7-8 and figure 20). Therefore, we find that Kodosky teaches the display of multiple programs icons and device icons as the Examiner correlates them at pages 9-11 of the Answer. We further agree with the Examiner that Kodosky teaches multiple device icons and that these device icons include some corresponding program icons as to the functionality which is resident therein. These programs would necessarily have to be deployed at some node, system or subsystem to perform their respective functions. Appellants argue that figure 22 of Kodosky does not illustrate a device icon corresponding to a device whereupon a program is deployed. (App. Br. 11 and Reply Br. 3). We disagree with Appellants and find that with the use of virtual instruments as sub-units (device icons), the use of the same sub-unit twice with the underlying programs icons, the display of the underlying programs and functions would necessarily show where the programs are deployed. Therefore, Appellants' argument is not persuasive. Since Appellants have not shown error in the Examiner’s initial showing of 6 Appeal 2008-1208 Application 10/176,726 anticipation, we will sustain the rejection of independent claim 1 and dependent claims 2-5 and 7-12 grouped therewith by Appellants. With respect to independent claims 16, 17, and 19, Appellants rely upon similar limitations with respect to “displaying” as discussed above. Since we did not find the argument persuasive above, we similarly do not find it persuasive with respect to independent claims 16, 17, and 19. Therefore, we do find that Appellants have shown error in the Examiner’s initial showing of anticipation, and we will sustain the rejection of independent claims 16, 17, and 19 and dependent claim 17 grouped therewith. With respect to dependent claim 6, Appellants argue that the Examiner's reliance upon the same portions of Kodosky is in error and Appellants can find no teaching that the cited portions or elsewhere in Kodosky with respect to dragging an end of a link icon from a second program icon to a third program icons as recited in dependent claim 6. (App. Br. 11-12). We agree with Appellants and do not find that the Examiner has set forth a sufficient initial showing of anticipation or clearly set forth the respective claim interpretation with regards to the application of the prior art. Therefore, we cannot sustain the rejection of dependent claim 6. With respect to dependent claim 13, Appellants maintain that they can find no teaching either in the cited portions or elsewhere in Kodosky regarding the locations of the stored first and second programs. Here, we agree with Appellants. While we find that Kodosky teaches storage of programs and various labels used within an overall system, we find no specific teaching of a second program stored on a device coupled to the 7 Appeal 2008-1208 Application 10/176,726 computer system wherein the first program is stored as recited in dependent claim 13. Therefore, we find that the Examiner has not set forth a prima facie case of anticipation of dependent claim 13 and cannot sustain the rejection thereof based upon the teachings of Kodosky alone. With respect to dependent claim 14, we similarly do not find that Kodosky alone teaches the limitations set forth in dependent claim 14 and do not find that the Examiner has set forth a sufficient prima facie case of anticipation. Therefore, we cannot sustain the rejection of dependent claim 14. With respect to dependent claim 15, we similarly do not find that Kodosky alone teaches the limitations set forth in dependent claim 15 and do not find that the Examiner has set forth a sufficient prima facie case of anticipation. Therefore, we cannot sustain the rejection of dependent claim 15. CONCLUSION To summarize, we have sustained the rejection of claims 1-5, 7-12, and 16-19 under 35 U.S.C. § 102, and we have reversed the rejection of claims 6 and 13-15 under 35 U.S.C. § 102. "Any arguments or authorities not included in the brief or a reply brief filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, our affirmance is based only on the arguments made in the Amended Appeal Brief and Reply Brief. Any arguments or authorities omitted therefrom are neither before us nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004) ("[I]t is 8 Appeal 2008-1208 Application 10/176,726 important that the applicant challenging a decision not be permitted to raise arguments on appeal that were not presented to the Board.") No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART pgc MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C. P.O. BOX 398 AUSTIN, TX 78767-0398 9 Copy with citationCopy as parenthetical citation