Ex Parte Kodosky et al

Board of Patent Appeals and Interferences

May 27, 2008

10176726 (B.P.A.I. May. 27, 2008)

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

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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
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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.
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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
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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
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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
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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
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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
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