Ex parte O'Rourke

Board of Patent Appeals and Interferences

Sep 8, 1999

07880793 (B.P.A.I. Sep. 8, 1999)

The application was filed on May 8, 1992.1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BARRY O’ROURKE
____________
Appeal No. 1996-0951
Application No. 07/880,7931
____________
ON BRIEF
____________
Before KRASS, FLEMING, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1, 2, 4, and 20-22. The
appellant filed an amendment after final rejection on April
3, 1995, which was denied entry. He filed another amendment
after final rejection on April 24, 1995, which was entered.
We reverse.
Appeal No. 1996-0951 Page 2
Application No. 07/880,793
BACKGROUND
The invention at issue in this appeal is a software tool
for generating computer code in a message-based environment.
A user interacts with the tool, making selections to define a
graphical user interface (GUI). When the selections are
completed, the tool begins the process of defining connections
between GUI code and functional code. It analyzes the GUI
definition and displays a list of all messages that could be
produced thereby. On the same display, the tool lists blocks
of code from a code library. The user selects a message and a
block of code to be invoked by the message. If the code block
has any prerequisite requirements, the user is prompted to
meet them. A message identifier, a pointer to the code block,
and any prerequisite data are then stored in a linked list
structure. Once the connections are defined, the tool
generates code for producing the defined GUI.
Claim 20, which is representative for our purposes,
follows:
Appeal No. 1996-0951 Page 3
Application No. 07/880,793
20. A method for designing a graphical user
interface and generating a program to implement
user selections from said user interface, said
method comprising the steps of:
storing a multiplicity of program code blocks
corresponding to respective functions;
displaying a multiplicity of graphical features
and receiving designer selections of a plurality
of said features for inclusion in said user
interface;
displaying for each of said plurality of
features a list of messages for said each
feature and displaying for each of the listed
messages a list of the functions which are
consistent with said each message;
in response to designer selection of one of the
listed messages and one of the listed functions
for said each feature, generating a program
based on the program code block corresponding to
said one function to implement said one function
upon user selection of said each feature;
displaying said one message in conjunction with
said each feature in said user interface; and
user selecting of features from said user
interface.
The reference relied on by the patent examiner in
rejecting the claims follows:
Kodosky et al. 4,914,568 Apr. 3, 1990.
Appeal No. 1996-0951 Page 4
Application No. 07/880,793
Claims 1, 2, 4, and 20-22 stand rejected under 35 U.S.C.
§ 112 as indefinite. The claims also stand rejected under
35 U.S.C. § 102(e) as anticipated by Kodosky. Rather than
repeat the arguments of the appellant or examiner in toto, we
refer the reader to the brief and the answer for the
respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections and evidence
advanced by the examiner. We also considered the arguments of
the appellant and examiner. After considering the record
before us, we cannot say that claims 1, 2, 4, and 20-22 do not
particularly point out and distinctly claim the subject matter
regarded as the invention. We also cannot say that the
evidence anticipates the invention of the claims.
Accordingly, we reverse. Our opinion discusses the
definiteness and novelty of the claims seriatim.
Definiteness of Claims 1, 2, 4, and 20-22
Appeal No. 1996-0951 Page 5
Application No. 07/880,793
Regarding the definiteness of claims 1, 2, 4, and 20-22,
the appellant argues, “the term ‘message’ should be
interpreted as human language words such as words of text
....” (Appeal Br. at 5.) In response, the examiner opines,
“[i]t is not clear just what is claimed in regard to
‘message’.” (Examiner’s Answer at 5.)
We cannot find that the claims do not particularly point
out and distinctly claim the limitation of “messages.” The
test for the definiteness of a claim is whether one skilled
in the art would understand the bounds of the claim when read
in light of the specification. If the claim read in light of
the specification would reasonably apprise one so skilled of
the scope of the invention, 35 U.S.C. § 112 demands no more.
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27
USPQ2d 1123, 1126 (Fed. Cir. 1993).
Here, the specification describes messages as follows.
The message list contains only the relevant
messages for the particular feature (window/control
etc.) which has been selected. If the currently
selected item is a window the messages relating to
windows (WM_****) are added to the list.
Appeal No. 1996-0951 Page 6
Application No. 07/880,793
Accordingly, these messages 34 are added to the list
of messages 32 illustrated in Figure 2.
When all the features of the user interface have
been analyzed the complete list of possible messages
32 will have been assembled. The system displays
with this the list of blocks of code that are stored
in the library and may be connected to the messages.
(Spec. at 6-7.)
Figure 2 illustrates the structure of a list of messages 32.
Each message comprises a prefix and a suffix. The prefix,
“WM_,” indicates that the message relates to windows. (Spec.
at 7.) The suffix is at least one word or an abbreviation
thereof, e.g., “ACTIVATE,” “BUTTON1DOWN,” which indicates a
function. (Fig. 2.)
When read in light of the specification, we find that one
skilled in the art would understand the meaning of messages.
Therefore, one skilled in the art would understand the bounds
of the claimed messages. We demand no more. Therefore, we
reverse the rejection of claims 1, 2, 4, and 20-22 under 35
U.S.C. § 112. Next, we consider the novelty of the claims.
Novelty of Claims 1, 2, 4, and 20-22
Appeal No. 1996-0951 Page 7
Application No. 07/880,793
Regarding the novelty of claims 1, 2, 4, and 20-22, the
appellant argues, “nor do Kodosky et al. disclose a technique
for defining a user interface and associated messages and
generating a program which implements user selections from the
user interface.” (Appeal Br. at 6.) In response the examiner
states that he “does not understand precisely where Kodosky
fails in this regard.” (Examiner’s Answer at 10.)
We cannot find that Kodosky teaches the messages of
claims 1 and 20. A prior art reference anticipates a claim
only if the reference discloses expressly or inherently every
limitation of the claim. Absence from the reference of any
claimed element negates anticipation. Rowe v. Dror, 112 F.3d
473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Claims 1 and 20 recite in pertinent part “displaying for
each of said plurality of features a list of messages for said
each feature and displaying for each of the listed messages a
list of the functions which are consistent with said each
message” and “designer selection of one of the listed messages
and one of the listed functions for said each feature ....”
Appeal No. 1996-0951 Page 8
Application No. 07/880,793
In short, the claims specify that a computer displays a list
of messages that could be produced by a GUI feature selected
by a user, and the user then selecting a message therefrom.
Kodosky discloses a computer tool for modeling a process
graphically. Col. 49, ll. 6-8. Icons that reference modular
procedural units are stored in a memory library. Col. 9, ll.
27-31. A user selects and connects icons to build a diagram
of a process on the screen of a computer. Col. 3, ll. 47-55;
col. 49, ll. 14-18. The computer creates an execution
procedure that corresponds to the depicted process. The user
then assigns values for the input variables of the process.
The computer executes the procedure to produce values for the
output variables of the process. Col. 3, ll. 56-64.
The examiner failed to identify any teaching of
determining and displaying a list of messages that could be
produced by a GUI feature or selecting a message therefrom.
After a user completes his diagram of a process by selecting
and connecting icons, Kodosky’s computer creates code that
corresponds to the diagram. In contrast to the claimed
Appeal No. 1996-0951 Page 9
Application No. 07/880,793
invention, the reference omits an intermediate step of
displaying and selecting messages.
The examiner erred in reading the claimed limitations on
Kodosky’s icons. We appreciate the Examiner’s explanation
that procedures represented by icons may exchange data
representing voltage changes or levels. (Examiner’s Answer at
8.) This exchange, however, does not amount to determining
and displaying a list of messages that could be produced by a
GUI feature and selecting a message therefrom.
For the foregoing reasons, we cannot find that Kodosky
teaches the claimed messages. The absence of the claimed
element from the reference negates anticipation. Therefore,
we reverse the rejection of claims 1, 2, 4, and 20-22 under 35
U.S.C. § 102.
CONCLUSION
Appeal No. 1996-0951 Page 10
Application No. 07/880,793
To summarize, the examiner’s rejection of claims 1, 2, 4,
and 20-22 under § 112 is reversed. His rejection of the
claims under 35 U.S.C. § 102(e) is also reversed.

REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1996-0951 Page 11
Application No. 07/880,793
LLB/kis
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Application No. 07/880,793
PRYOR A. GARNETT
IBM CORPORATION, DEPT. N50
1701 NORTH STREET
ENDICOTT, NY 13760