Ex Parte McGee et al

Board of Patent Appeals and Interferences

May 29, 2012

10650894 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/650,894 08/28/2003 Jason Robert McGee RSW920030102US1 8718
46320 7590 05/30/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BATES, KEVIN T
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
05/30/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JASON ROBERT MCGEE,
MICHAEL JOHN MORTON, and
BRENT A. PETERS
____________________

Appeal 2010-0009601
Application 10/650,894
Technology Center 2400
____________________

Before JEAN R. HOMERE, ST JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines, Corp. (App.
Br. 1.)

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Application 10/650,894

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4-12, and 14-20. Claims 3 and 13 have been
canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for logically merging
shared web modules (422, 424, 426) with web modules (412, 414) of a web
application to generate a set of logically merged web module (440). (Spec.
1, ll. 7-12, Fig. 4.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method of generating a logically merged web module
for a web application, comprising:

responsive to a determination that a shared module
designation file exists, identifying at least one shared web
module from the shared module designation file to be
incorporated into a web application, to form at least one
identified shared web module, wherein the shared web
module designation file includes all descriptors that reference
the at least one shared web module;

locating the at least one identified shared web module
using path information;

logically merging the at least one shared web module
with web modules of the web application, in accordance with
the shared web module designation file to generate a logically
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merged web application, wherein a reference to the at least one shared web
module is used in the logically merged web application rather than a copy of
the at least one shared web module.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Li US 6,519,594 B1 Feb. 11, 2003
Sharma US 6,721,777 B1 Apr. 13, 2004
(Filed May 24, 2000)
Spotswood US Patent Pub. No.: 2004/0255293 Dec. 16, 2004
(Effectively filed Feb. 12, 2003)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 2, 4, 6-12, and 14-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Li and
Spotswood.
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Li, Spotswood, and Sharma.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 9-13.
Representative Claim 1
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding the combination of Li and Spotswood teaches or suggests a shared
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module designation file including descriptors that reference a shared web
module, which is logically merged with an application web module, as
recited claim 1?
Appellants argue that the Examiner misconstrued a “descriptor” as a
link in a name table, as opposed to giving the cited term its well-established
meaning of a markup language specified file that describes the contents or
functionality of another object. (App. Br. 9-10.) Similarly, Appellants argue
that the Examiner has misconstrued “logically merging” as sharing
instantiation as opposed to giving the cited expression its ordinary meaning
of presenting an object reflective of a merger of multiple objects by logic
only without creating a physically merged object. (Id. 11.) Consequently,
Appellants submit that the Examiner erred in finding that the proposed
combination of Li and Spotswood teaches or suggests the disputed
limitations. (Id. 12.) In response, the Examiner concludes that consistent
with Appellants’ disclosure a “descriptor” is a merely a way (not necessarily
objects in a file) of identifying and locating share web modules which
operate for a web application. Thus, the Examiner finds that Li’s disclosure
of a way to identify a JAVA Machine (JVM) that operates a plurality of
classes in a shared memory pool teaches the descriptors. (Ans. 8.) Similarly,
the Examiner concludes that consistent with Appellants’ Specification
“logically merging” merely refers to reusing certain modules, which were
previously used by two separate applications as part of their individual
operations. Hence, the Examiner finds that Li’s disclosure of JVM
applications which share common JAVA classes among themselves teaches
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‘logically merging”. (Ans. 9.) Consequently, the Examiner finds the
proposed combination teaches or suggests the disputed limitations. (Id.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. We note at the outset that this
dispositive issue in this appeal turns on whether the Examiner’s construction
of “descriptors” and “logically” merging” is reasonable. Therefore, we first
consider the scope and meaning of the cited terms, which must be given
their broadest reasonable interpretation consistent with Appellants’
disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in
the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted
as broadly as their terms reasonably allow.”). Our reviewing court further
states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1321(Fed. Cir. 2005). Consequently, we turn to Appellants’
Specification for context to properly construe the disputed claim language.
In particular, Appellants’ Specification states the following:
[T]he shared web module designation 416 stores the descriptors of the
shared web modules 422-426 that are to be logically merged with the
web modules 412-414 of the web application 410. These descriptors
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may include, for example, filename (and possibly the path) for the
shared web module and a merge priority for the shared module. The
path and filename are used to fetch the shared web module
information that is used to perform the merging of the shared web
module, e.g., web module 424, with the existing web modules 412-
414 in the web applications 410.

(Spec. 20: 1-10.)
The term “logically merged” web application means that the data
structure that defines the web applications is a combination of the
existing web module code in the web application and a copy of the
shared web module code.

(Spec. 13: 21-24.)
Because the latter relevant portion of Appellants’ Specification set
forth above provides an expressed definition for “logically merging”, we
construe the cited expression consistent with the Specification as combining
a web application module with a shared web module. Next, while the former
relevant portion of Appellants’ Specification cited above refers to a filename
and a path as examples of what may be included in a descriptor, we fail to
find therein an expressed definition for “descriptor.” We therefore decline
Appellants’ invitation to restrict our claim construction of a “descriptor” to
such examples only. Rather, under the broadest reasonable interpretation
consistent with the cited textual portions of the Specification, we conclude
that a descriptor is an entry in a shared module designation file that identifies
a shared web module for logically merging with an application a web
module of an application. Therefore, we construe the disputed limitations set
forth above as requiring an entry in a file that identifies a shared web module
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to combine with an application web module as a single resulting module.
Given this backdrop, we agree with the Examiner that the proposed
interpretation of a “descriptor” and “logically merging” is reasonable.
Consequently, we agree with the Examiner’s finding that Li’s disclosure of a
link that identifies a shared module to combine with an application web
module to yield a combined web module teaches the disputed limitations. It
follows that Appellants have not shown error in the Examiner’s rejection of
claim 1 over the combination of Li and Spotswood.

Because claims 2, 4-12, and 14-20 are not argued separately, they fall
together with claim 1 for the same reasons discussed above. See 37 C.F.R.
§ 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejections of claims 1, 2, 4-12, and 14-20 as
set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh