Ex parte Owens et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

08025603 (B.P.A.I. Sep. 11, 1998)

Application for patent filed March 3, 1993.1
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not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID H. OWENS,
NICK G. KLEDZIK and
ROBERT G. JOHNSTON JR.
_____________
Appeal No. 96-0542
Application 08/025,6031
______________
ON BRIEF
_______________
Before JERRY SMITH, LEE and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0542
Application 08/025,603
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-11 and 13-20, which
constitute all the claims remaining in the application. An
amendment after final rejection was filed on August 18, 1994
and was entered by the examiner.
The disclosed invention pertains to a method and
apparatus for manipulating data between application programs
in a graphical user interface of a computer-controlled display
system. More particularly, the invention permits data from a
first window to be dragged to a second window, and information
is provided which allows a process in the second window to
determine if it can accept the data from the first window.
Representative claim 1 is reproduced as follows:
1. A method for manipulating data between application
programs in a computer-controlled display system comprising
the following steps:
a. a user selecting a first item in a first window,
said first window under control of a first process;
b. said first process detecting said user selection;
c. said first process generating first information
regarding said first item;
d. a second process generating second information
regarding said first item;
Appeal No. 96-0542
Application 08/025,603
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e. said user dragging said selected first item to a
second window, said second window under control of a third
process; and
f. said third process determining if said second
window can accept said first item based upon said first
information or the second information.
The examiner relies on the following references:
O’Connor et al. (O’Connor) 4,780,883 Oct. 25, 1988
Peters et al. (Peters) 5,157,763 Oct. 20, 1992
Future Enterprises, Inc. (Future) "A Microcomputer Education
Course For: QUATTRO PRO 3.0," 1991, page 16.
Claims 1-11 and 13-20 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Peters
in view of Future with respect to claims 1-10 and 14-20, and
adds O’Connor with respect to claims 11 and 13.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
Appeal No. 96-0542
Application 08/025,603
4
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections 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 and 13-20. 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 or knowledge generally available to one having
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley
Appeal No. 96-0542
Application 08/025,603
5
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
Hospital Systems, Inc. v. Montefiore Hospital, 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).
As indicated by the cases just cited, the examiner has
at least two responsibilities in setting forth a rejection
under 35 U.S.C. § 103. First, the examiner must identify all
the differences between the claimed invention and the
teachings of the prior art. Second, the examiner must explain
why the identified differences would have been the result of
an obvious modification of the prior art. In our view, the
examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
Appeal No. 96-0542
Application 08/025,603
6
We consider first the rejection of independent claims
1 and 17 as unpatentable over the teachings of Peters in view
of Future. These claims stand or fall together [brief, page
5]. Peters teaches a graphical user interface in which data
items in one window can be selected and dragged to another
window. The interface outlines the item as it is being
dragged to visually convey to the user that such operation is
occurring. Future teaches that Quattro Pro is one application
program that can automatically recognize files from other
applications and translate such files to Quattro Pro format.
The final rejection asserts that the data translation
teachings of Future when combined with Peters would have
suggested the invention of claim 1.
Appellants provided a reasoned analysis as to why the
collective teachings of Peters and Future would not have
suggested steps (c), (d) or (f) of claim 1 [brief, pages 5-8].
The examiner rephrased the rejection by attempting to read
claim 1 on Peters. The examiner proposed that the first
process was Peters’ marking process and the first information
was the type of data. The examiner further proposed that the
"word processor" of Peters’ spread sheet program was the
Appeal No. 96-0542
Application 08/025,603
7
second process and the second information was the transfer
border. Finally, the examiner observed that the third process
was the determination by the second window in Peters if it
could accept the first information [answer, pages 10-12].
Appellants responded to the new reading of claim 1 on Peters
by pointing out what they perceived as major errors in the
examiner’s analysis of Peters [reply brief]. The examiner did
not respond to the reply brief.
We do not sustain the examiner’s rejection of
independent claim 1 for the same reasons basically offered by
appellants. The examiner’s analysis is based on the
obviousness of achieving what appellants have done rather than
on the specific recitations of the claims. In other words,
the examiner has really only demonstrated that performing
translations of data for compatibility between different
applications would have been obvious. When the specific
limitations of independent claim 1 are considered, however,
the examiner’s analysis suffers all the deficiencies observed
by appellants. We agree with appellants that even if the
examiner’s analysis is accepted at face value, the applied
prior art does not meet the recitations of independent claim
Appeal No. 96-0542
Application 08/025,603
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1. The mere desire to have compatibility between the data of
different application programs is not sufficient to render
obvious the specific invention recited in claim 1. Therefore,
we do not sustain the rejection of claim 1 or of independent
claim 17 which is grouped therewith.
Independent claims 11 and 13 stand rejected on the
collective teachings of Peters, Future and O’Connor. O’Connor
was cited by the examiner after he determined that additional
recitations of claims 11 and 13 were equivalent to a
"handshaking" operation, and O’Connor was said to teach the
obviousness of such handshaking operations. Appellants argue
that the "handshaking" operation has nothing to do with their
claims, and the examiner has not properly addressed the
specific recitations of the claims. We agree with appellants.
There is no basis for combining the teachings of O’Connor with
those of Peters based on calling appellants’ invention
something that it is not. O’Connor also would not overcome
the deficiencies already noted in the rejection based on
Peters and Future only. Therefore, we do not sustain the
rejection of independent claims 11 and 13.
Appeal No. 96-0542
Application 08/025,603
9
In summary, since we have not sustained the rejection
of any of the independent claims in this application, the
examiner’s rejection of claims 1-11 and 13-20 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 96-0542
Application 08/025,603
10
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