Ex parte ONO

Board of Patent Appeals and Interferences

Jul 17, 2000

08105839 (B.P.A.I. Jul. 17, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHIEGEICHI ONO
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Appeal No. 1997-0521
Application No. 08/105,839
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ON BRIEF
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Before HAIRSTON, RUGGIERO, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-15,
which are all of the claims pending in this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a device and method for converting computer
programming languages from one computer language into another computer
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Application No. 08/105,839
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language. An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. A device that converts a computer program written in an original computer
language into a target program written in a target computer language, which is different
from the original computer language, said device comprising:
a conversion rule input means which produces a conversion model created by
inputting statements in said original language, and inputting the functional equivalent of
said original language statements in said target language;
a conversion rule generation means for generating conversion rules from said
conversion model;
an original program input means for inputting statements from said original
program; and
a conversion rule drive means which locates conversion rules corresponding to said
inputted original program statements and converts said original program into said target
program according to the content of located conversion rules.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Bowles et al. (Bowles) 4,374,408 Feb. 15, 1983
Mohri 4,712,189 Dec. 08, 1987
Tolin 4,864,503 Sep. 05, 1989
Claims 1 and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Tolin. Claims 2-6, 9 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Tolin in view of Mohri. Claim 8 stands rejected under 35 U.S.C. § 103 as being
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unpatentable over Tolin in view of Bowles. Claims 11-15 stand rejected as being “based
on [upon] the same rationale as set forth in claim 1 - 10.” (See answer at page 8.)
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No.15, mailed Jan. 25, 1996), the supplemental examiner's answer (Paper
No. 17, mailed Jun. 12, 1996) and the second supplemental examiner's answer (Paper
No. 19, mailed Oct. 30, 1996) for the examiner's reasoning in support of the rejections, and
to the appellant's brief (Paper No. 14, filed Aug. 14, 1995), the reply brief (Paper No. 16,
filed Mar. 22, 1996), supplemental reply brief (Paper No. 18, filed July 8, 1996) and
second supplemental reply brief (Paper No. 20, filed Dec. 6, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
CLAIMS 1-10
Appellant argues that Tolin does not teach or suggest the use of the language translator for
translation of functional statements in one computer language to functional statements in
another computer language. (See brief at page 4-8.) We agree with appellant. Clearly,
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Tolin does not teach the translation of functional computer programs to other computer
languages, and the examiner has not provided a convincing line of reasoning why Tolin
alone would have suggested to skilled artisans to apply the teaching regarding human
language translation to translation of computer programs for use by machines.
Appellant argues Tolin does not teach or suggest inputting statements in said
original language, and inputting the functional equivalent of said original language
statements in said target language. (See answer at page 8.) We agree with appellant.
While the examiner acknowledges this argument, the examiner does not address or
respond to the lack of a teaching in Tolin with respect to the inputting of the functional
equivalents. The examiner maintains that the intermediate language of Tolin is used to find
the equivalent sentence in the target language and that the operator selects rules from
memory. (See answer at page 4.) The examiner has not pointed to any disclosure in Tolin
for his reasoning, and likewise, we find no support for the examiner’s position.
Therefore, since Tolin alone does not teach or fairly suggest the claimed invention,
we cannot sustain the rejection of claim 1 and its dependent claim 7.
With respect to claims 2-6, 9 and 10, the examiner adds Mohri to teach the use of
keywords and word sections in a table driven system. Mohri like Tolin is a human
language translator and does not teach or fairly suggest the use of a translator to translate
computer programs from one machine language to another. Therefore, Mohri does not
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remedy the deficiency in Tolin alone. Hence, we cannot sustain the rejection of claim 2
and its dependent claims 3-6, 9 and 10.
With respect to claim 8, the examiner adds Bowles with Tolin. Appellant argues
that the deficiencies in Tolin alone are not remedied by Bowles. We agree with appellant.
While Bowles is the closest prior art to translating computer programs from one computer
language into another computer language, the examiner has not identified a conversion
rule input means which produces a conversion model created by inputting statements in
said original language, and inputting the functional equivalent of said original language
statements in said target language. Bowles is silent as to how the model and rules are
generated, and is concerned with the multipass functioning of the translator. Moreover, the
examiner has not provided any cogent line of reasoning why or how a skilled artisan would
have known how to input the model and rules. Nor has the examiner provided any
suggestion or motivation to combine the teachings beyond the motivation to convert plural
statements into singular
statements. (See answer at page 8.) Therefore, we cannot sustain the rejection of claim 8
under the combination of Tolin and Bowles.
CLAIMS 11-15
Appellant argues that the examiner has not identified the basis of the rejection of
claims 11-15 in the final rejection. (See brief at page 11.) We agree with appellant. The
examiner is under a duty to set forth the grounds upon which the claims are denied
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Application No. 08/105,839
We have reviewed the prior art to Tolin alone with respect to claims 11 and 12 and find that Tolin1
does not teach or suggest an automated method or apparatus of translating computer programs as
discussed above with respect to claim 1. We note that claim 12 is the broadest claim. We further note
that Bowles teaches a computer language translation system.
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patentability as recited in 35 U.S.C. § 132 thereby providing appellant with notice and to
allow appellant to take action as deemed appropriate.
Whenever, on examination, any claim for a patent is rejected, or any
objection or requirement made, the Commissioner shall notify the applicant
thereof, stating the reasons for such rejection, or objection or requirement,
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of his application; and if after
receiving such notice, the applicant persists in his claim for a patent, with or
without amendment, the application shall be reexamined. No amendment
shall introduce new matter into the disclosure of the invention. (July 19,
1952, ch. 950, §1, 66 Stat: 801.)
In the answer, the examiner merely responds that the claims "merely repeated steps of the
rejected claims 1 - 10 and therefore found it not necessary to specifically spell out the
rejection.” (See answer at page 12.) Whether the examiner finds it “necessary” or not, the
Commissioner/Examiner is required to set forth both the statutory basis and
the reference(s) upon which each claim is denied patentability. Here, there are three
different combinations of references applied against claims 1-10, and we will not
speculate as to which one the examiner bases his rejection. Therefore, we cannot sustain
the examiner’s asserted rejection of claims 11-15.1
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-15 under
35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
vsh
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ATTN: LAWRENCE D. CUTTER, ATTORNEY
IBM CORPORATION
INTELLECTUAL PROPERTY LAW
522 SOUTH ROAD, (MS-P903)
POUGHKEEPSIE , NY 12601-5400