Ex Parte NIX

Board of Patent Appeals and Interferences

Apr 30, 2002

08788669 (B.P.A.I. Apr. 30, 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written for publication and is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TODD NIX
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Appeal No. 1999-2605
Application No. 08/788,669
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ON BRIEF
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Before FLEMING, RUGGIERO, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-11, 17, and 18, which are all of the claims pending in
the present application. Claims 12-16 have been canceled.
The disclosed invention relates to a method for controlling
a multi-state process in which a series of icons representing
phases of a process are displayed. A main action message bar
displays a title indicating an action to be performed which
corresponds to the title of one of the icons. On actuation of
the message bar, the indicated action is performed and the icon
title corresponding to the last performed action is highlighted.
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Claim 1 is illustrative of the invention and reads as
follows:
1. A method of controlling a multi-state process in a
computer system comprising the steps of:
displaying a series of icons representing phases in a
build process;
displaying a main action message bar indicating an
action to be performed in response to activating the bar;

activating the bar to perform the action indicated; and
automatically pausing between each discrete action.
The Examiner relies on the following prior art:
Bender et al. (Bender) 5,576,946 Nov. 19, 1996
QUE Corporation (QUE),“Adding, Deleting, and Creating Icons,”
1-2-3 Release 4 for Windows Quickstart, pp. 262-63 (1994).
Claims 1-11, 17, and 18 stand finally rejected under
35 U.S.C. § 103(a). As evidence of obviousness, the Examiner
offers Bender alone with respect to claims 1-5, 7-10, 17, and 18,
and adds QUE to Bender with respect to claims 6 and 11.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief (Paper No. 8) and Answer
(Paper No. 9) for the respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, and the evidence of
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obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, 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 not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-11, 17, and 18. Accordingly, we reverse.
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
Appeal No. 1999-2605
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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.), 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 facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s obviousness rejection of
independent claims 1 and 7, Appellant’s arguments in response
assert that the Examiner has failed to establish a prima facie
case of obviousness. In particular, Appellant contends (Brief,
page 4) that there is no teaching or suggestion in the process
control system of Bender of the presently claimed feature of
“ . . . automatically pausing between each discrete action.”
After careful review of the Bender reference in light of the
arguments of record, we are in agreement with Appellant’s
position as stated in the Brief. While recognizing that Bender
has no explicit disclosure of the claimed automatic pausing
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feature, the Examiner nevertheless suggests (Answer, pages 4, 7,
and 8) the obviousness to the skilled artisan of modifying Bender
to provide such a feature. In particular, the Examiner points to
the discussion of the HOLD function (Bender, column 9, lines 9-
58) which permits an operator to interrupt the controlled process
to change the parameters of the system. In our view, however,
while it is conceivable that a myriad of system parameter changes
could be implemented by an operator during a system interruption,
the only motivation to provide the specific claimed automatic
pausing feature comes not from any disclosure in the Bender
reference but rather from Appellant’s own disclosure. The mere
fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992).
Further, while the Examiner suggests (Answer, page 7) that
the claimed automatic pausing feature “ . . . is still an option
of Bender’s invention,” we find no evidentiary support on the
record for such a conclusion. The Examiner must not only make
requisite findings, based on the evidence of record, but must
also explain the reasoning by which the findings are deemed to
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support the conclusion of obviousness. See In re Lee, 277 F.3d
1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002). In our
opinion, any suggestion to modify the disclosure of Bender to add
an automatic pausing feature could only come from an improper
attempt to reconstruct Appellant’s invention in hindsight.
Lastly, we have reviewed the QUE reference which has been
cited by the Examiner to address the “refresh bar” features of
dependent claims 6 and 11. We find nothing, however, in the
disclosure of the QUE publication which would overcome the innate
deficiencies of Bender discussed supra.
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In conclusion, since the Examiner has not established a
prima facie case of obviousness, the 35 U.S.C. § 103 rejection of
independent claims 1 and 7, as well as claims 2-6, 8-11, 17, and
18 dependent thereon, is not sustained. Therefore, the decision
of the Examiner rejecting claims 1-11, 17, and 18 is reversed.
REVERSED

MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR:hh
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Application No. 08/788,669
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DAVID L. MCCOMBS
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