Ex Parte Nally

Board of Patent Appeals and Interferences

May 7, 2002

08576730 (B.P.A.I. May. 7, 2002)

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written for publication and is not binding precedent of the Board.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. 18

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARTIN P. NALLY
_____________
Appeal No. 2000-1284
Application 08/576,730
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING and BARRY, 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 1-3 and 7-12, which
constitute all the claims remaining in the application. In
response to appellant’s appeal brief, the examiner has indicated
that claim 8 now contains allowable subject matter. Therefore,
this appeal is directed to the rejection of claims 1-3, 7 and
9-12.
Appeal No. 2000-1284
Application No. 08/576,730
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The disclosed invention pertains to a technique for
packaging an object oriented application having reduced
footprints and which has been created in an object oriented
development environment.
Representative claim 1 is reproduced as follows:
1. Computer readable code for determining a set of
code from a development environment required to execute
an object oriented application created with the
development environment, comprising:
first subprocesses for identifying a known component
required to execute the application;
second subprocesses for identifying methods and classes
required by the known component for execution of the
application;
third subprocesses for identifying other methods and
classes required by the methods and classes identified
in said second subprocesses and said third subprocesses
for execution; and
fourth subprocesses for creating a list of methods and
a list of classes from the known component and the
methods and classes identified in said second and third
subprocesses and ensuring that each of the methods and
classes in the lists is listed only one time.
The examiner relies on the following reference:
McInerney et al. 5,758,160 May 26, 1998
(McInerney) (filed June 28, 1993)
Appeal No. 2000-1284
Application No. 08/576,730
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Claims 1-3, 7 and 9-12 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers McInerney
taken alone.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
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 have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims
1-3, 7 and 9-11. We reach the opposite conclusion with respect
to claim 12. Accordingly, we affirm-in-part.
Appeal No. 2000-1284
Application No. 08/576,730
4
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
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. 1988), 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 Hosp. Sys.,
Inc. v. Montefiore Hosp., 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
Appeal No. 2000-1284
Application No. 08/576,730
5
facie case of obviousness. Note In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is
met, the burden then shifts to the applicant to overcome the
prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). Only those arguments actually made by appellant
have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
The examiner’s rejection is set forth on pages 3-7 of the
answer. In this rejection the examiner sets forth how he
interprets each of the claimed subprocesses of independent claim
1 and the means of independent claim 9. With respect to
independent claims 1 and 9, which stand or fall together [brief,
page 3], appellant argues that McInerney does not recite an
algorithm for providing a program or application which includes
Appeal No. 2000-1284
Application No. 08/576,730
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its components only a single time. Appellant also argues that
McInerney does not teach the first subprocess (means) because
McInerney uses a compiler to maintain the project component, and
the present invention has nothing to do with a compiler.
Appellant argues that McInerney does not teach the second
subprocess (means) because McInerney does not explain how his
lists are created or that his lists are required by an identified
known component for execution of the application. Appellant
simply argues that the claimed third subprocess (means) is not
taught or suggested by McInerney. Finally, appellant argues that
McInerney does not teach or suggest the fourth subprocess (means)
because McInerney is directed to minimizing compiling and the
present invention has nothing to do with compiling or re-
compiling [brief, pages 4-6].
The examiner responds that appellant’s arguments
regarding the compiler of McInerney are not relevant because
claims 1 and 9 do not preclude the use of a compiler. The
examiner indicates that the first subprocess (means) is met by
the project component of McInerney. The examiner finds that the
second subprocess (means) is met by the compile list of
Appeal No. 2000-1284
Application No. 08/576,730
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McInerney. The examiner finds that the third subprocess is met
by the recursive procedure in McInerney for identifying
additional components based on the compile list. Finally, the
examiner finds that the fourth subprocess (means) is met by the
interface compile list disclosed by McInerney. The examiner also
explains that McInerney’s teaching of avoiding the listing of
unnecessary components suggests including a component only once
in the created list. The examiner also notes that claim 9 is
broader than claim 1 and does not include the listing of
components only one time [answer, pages 7-12].
We generally agree with the position argued by the
examiner for the reasons explained by the examiner in the answer.
Appellant’s arguments that he does not see how the relevant
portions of McInerney suggest the claimed invention are not
sufficient to overcome a prima facie case of obviousness. The
examiner is correct that the functions performed in claims 1 and
9 do not preclude the presence of a compiler for implementing
these functions. We also agree with the examiner that the
subprocesses (means) of the claimed invention are met by the tree
structure disclosed by McInerney with the project component at
Appeal No. 2000-1284
Application No. 08/576,730
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the base which respectively branches out to a compile list,
a list generated by a recursive procedure for identifying
additional components, and a final list of components to be
included in the list. Although representative claim 9 does not
recite the “listed only one time” feature, we agree with the
examiner that McInerney does in fact suggest that the components
on the list should be minimized, that is, not duplicated. Since
we find that the examiner has established a prima facie case of
obviousness and since we are not persuaded of error by
appellant’s arguments, we sustain the rejection of independent
claims 1 and 9 and dependent claims 7, 10 and 11 which stand or
fall with claim 1 or claim 9 [brief, page 3].
With respect to separately argued claim 2, we agree with
the examiner that the project component of McInerney constitutes
at least one known component as claimed. With respect to
separately argued claim 3, we agree with the examiner that the
project component of McInerney has an associated title which can
be used to identify a desired known component. Therefore, we
also sustain the examiner’s rejection of claims 2 and 3.
Appeal No. 2000-1284
Application No. 08/576,730
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With respect to separately argued independent claim 12,
appellant argues that the examiner has not identified how each of
the steps recited therein is taught or suggested by McInerney.
Specifically, appellant argues that the examiner has relied on
the rejection with respect to claim 1, but claim 12 recites steps
that were not considered in the rejection of claim 1 [brief,
page 8].
Although the examiner has provided what he calls a
mapping of the steps of claim 12 onto the disclosure of
McInerney, we are unable to see how each of the steps of claim 12
is met by the portions of McInerney relied on by the examiner.
The examiner has, therefore, failed to establish a prima facie
case of the obviousness of claim 12. Accordingly, we do not
sustain the examiner’s rejection of claim 12.
In summary, the examiner’s rejection of claims 1-3, 7 and
9-12 based on McInerney taken alone is sustained with respect
claims 1-3, 7 and 9-11, but is not sustained with respect to
claim 12. Therefore, the decision of the examiner rejecting
claims 1-3, 7 and 9-12 is affirmed-in-part.
Appeal No. 2000-1284
Application No. 08/576,730
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
js/vsh
Appeal No. 2000-1284
Application No. 08/576,730
11
IBM CORPORATION
INTELLECTUAL PROPERTY LAW DEPARTMENT
P.O. BOX 12195
T81/062
RESEARCH TRIANGLE PARK, NC 27709-2195