Ex Parte Poole et al

Board of Patent Appeals and Interferences

Dec 19, 2007

09939813 (B.P.A.I. Dec. 19, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte REBECCA L. POOLE, LAURENCE E. ENGLAND, and
HOWARD J. GLASER
__________

Appeal 2007-3353
Application 09/939,813
Technology Center 2100
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Decided: December 19, 2007
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Before LANCE LEONARD BARRY, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-24. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
Appeal 2007-3353
Application 09/939,813

THE INVENTION
The disclosed invention relates generally to programming
development environments performed by computers, and, more particularly,
to the use of a program development environment for Internet and Intranet
applications (Spec. 1). Appellants’ invention comprises a computer-
implemented Integrated Development Environment (IDE) for constructing a
multi-tier business application for a multiple tier computer network. The
IDE is used to create and maintain the multi-tier business application quickly
and easily on the multiple tier computer network (Spec. 2).
Independent claim 1 is illustrative:
1. A computer-implemented system of developing multi-tier
business applications, comprising:

an Integrated Development Environment (IDE), executed
by a computer, for creating and maintaining a multi-tier
business application on a multiple tier computer network,
wherein the IDE includes a Topological Multi-Tier Business
Application Composer that is used by a developer to
graphically create and maintain the multi-tier business
application, the Composer includes a window and a palette, the
palette contains graphical constructs representing tiers and
components of the tiers that are used to create and maintain a
graphical presentation of the multi-tier business application in
the window, and when creating the multi-tier business
application, the developer decides on a number of tiers,
identifies workstations and servers within each of the tiers, and
defines processing performed by each tier and its components.

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THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejection:
Sheard US 6,208,345 B1 Mar. 27, 2001
Green US 6,854,107 B2 Feb. 8, 2005

THE REJECTION
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Sheard in view of Green.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellants have the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to
Appellants’ Briefs to show error in the proffered prima facie case.

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Application 09/939,813

Combinability under 35 U.S.C. § 103
At the outset, we note that Appellants have presented no arguments
directed to the combinability of the Sheard and Green references.
Accordingly, Appellants have waived any such arguments, and the
combinability of the references will not be addressed here. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2006) (“Any arguments or authorities not included in the
brief or a reply brief filed pursuant to § 41.41 will be refused consideration
by the Board, unless good cause is shown.”).
ISSUE(S)
We decide the question of whether Appellants have shown the
Examiner erred in holding that the cited combination of prior art would have
rendered the claimed subject matter obvious to an artisan having ordinary
skill and common sense at the time of the invention.1 More particularly, we
have determined the following issue is dispositive in this appeal:

1 “[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Moreover, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741
(quoting In re Kahn, 441 F.3d at 988).

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Application 09/939,813

Whether Appellants have shown the Examiner erred in finding that
the proffered combination of Sheard and Green teaches and/or suggests the
argued limitations of:
[D]eciding on the number of tiers, identifying workstations and
servers within each of the tiers, and defining processing
performed by each tier and its components, in the context of an
Integrated Development Environment (IDE), that includes a
Topological Multi-Tier Business Application Composer, which
is used by a developer to graphically create and maintain a
multi-tier business application, and includes a window and a
palette, the palette contains graphical constructs representing
tiers and components of the tiers that are used to create and
maintain a graphical representation of the multi-tier business
application in the window.

(See App. Br. 10).

ANALYSIS
Elements under 35 U.S.C. § 103
We consider the Examiner’s rejection of claims 1-24 as being
unpatentable over the teachings of Sheard in view of Green. Since
Appellants’ arguments with respect to this rejection have treated these
claims as a single group which stand or fall together, we select independent
claim 1 as the representative claim for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).
Appellants argue:

Sheard and Green do not teach or suggest deciding on the
number of tiers, identifying workstations and servers within
each of the tiers, and defining processing performed by each
tier and its components, in the context of an Integrated
Development Environment (IDE), that includes a Topological
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Multi-Tier Business Application Composer, which is used by a
developer to graphically create and maintain a multi-tier
business application, and includes a window and a palette, the
palette contains graphical constructs representing tiers and
components of the tiers that are used to create and maintain a
graphical representation of the multi-tier business application in
the window.

(App. Br. 10).

The Examiner disagrees. The Examiner responds by mapping each
claim element to the corresponding section(s) of the Sheard and Green
references (Ans. 3-7).
We begin our analysis by noting that the argued steps of “deciding on
the number of tiers, identifying workstations and servers within each of the
tiers, and defining processing performed by each tier and its components”
are each performed by a human developer in the context of the claimed
computer-implemented system (see App. Br. 10, emphasis added). Thus, the
mental steps performed by the human developer of deciding, identifying, and
defining do not perform a transformation of physical subject matter, and if
considered alone, are directed to an unpatentable mental process (i.e., an
abstract idea).2
In contrast, we note that the preamble of claim 1 recites a “computer-
implemented system” with the recited intended purpose of “developing

2 The Supreme Court has specifically identified three categories of
unpatentable subject matter: “laws of nature, natural phenomena, and
abstract ideas.” See Diamond v. Diehr, 450 U.S. 175, 185 (1981).

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multi-tier business applications . . . ;” (claim 1). Therefore, we find it
unclear whether the language of claim 1 is directed to a computer-
implemented system or a method of using that system. Our reviewing court
has determined that a claim directed to a system and a method for using that
system is indefinite. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005). See also S3 Inc. v. NVIDIA Corp., 259
F.3d 1364, 1372 ( Fed. Cir. 2001) (“When the claims become so ambiguous
that one of ordinary skill in the art cannot determine their scope absent
speculation, such claims are invalid for indefiniteness.”) (citing In re Steele,
305 F.2d 859, 862-63 (CCPA 1962)).
Here, we conclude that claim 1 does not reasonably apprise those
skilled in the art of its scope. On one hand, Appellants present a preamble
directed to a computer-implemented system (see claim 1). However, in the
Brief, Appellants argue the mental steps of “deciding on the number of tiers,
identifying workstations and servers within each of the tiers, and defining
processing performed by each tier and its components,” as performed by a
human developer in the context of the claimed computer-implemented
system (see App. Br. 10). Because a claim cannot be directed to both a
system (apparatus) and a method for using that system, for purposes of our
review we shall construe the claim as a computer-implemented system. See
IPXL Holdings at 1384. We consider the recited mental steps performed by
the developer as a statement of intended use that impermissibly sets forth a
method for using the computer-implemented system within the context of an
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apparatus claim (claim 1). Therefore, we decline to give patentable weight
to the mental steps argued by Appellants in the Briefs.3
When we construe the language of the claim directed to the computer-
implemented system, we find the evidence before us supports the
Examiner’s position. We agree with the Examiner that Sheard teaches an
Integrated Development Environment, as claimed (see Sheard, Fig. 17, col.
3, ll. 16-18, i.e., “A visual interface facilitates the design, deployment, and
runtime monitoring of an integrated information system implementation.”).
Regarding the claimed “Topological Multi-Tier Business Application
Composer,” our reviewing court has determined that “[w]here an inventor
chooses to be his own lexicographer and to give terms uncommon meanings,
he must set out his uncommon definition in some manner within the patent
disclosure” so as to give one of ordinary skill in the art notice of the change.
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc.
v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)). Here,
while the Specification does give an example explaining how the claimed

3 We decline to give the mental steps performed by the developer patentable
weight because they constitute a statement of intended use that renders the
apparatus claim indefinite. See IPXL Holdings at 1384. We do not ground
this decision on the basis that the mental steps are directed to non-statutory
subject matter. Cf. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (“The
fact that printed matter by itself is not patentable subject matter, because
non-statutory, is no reason for ignoring it when the claim is directed to a
combination.”).

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“Topological Multi-Tier Business Application Composer” may be used,4 we
nevertheless find the Specification does not clearly set forth a specialized
definition. Because Appellants fail to argue a specialized definition for this
term in the Briefs, we find Appellants have not persuasively rebutted the
Examiner’s findings of fact (see Answer 4). We further agree with the
Examiner that Sheard reasonably teaches and/or suggests a window and a
palette, as shown in Figure 17 (see Answer 5).
Regarding the claimed “tiers,” we construe this term in accordance
with the broadest reasonable interpretation consistent with the specification.
See In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir.
2000) (“during examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.”). When we look
to the Specification for context, we find Appellants broadly disclose that
“any tier 12, 18, or 20 may include any component or combination of
components.” (Spec. 5, ll. 2-3). The Examiner finds Sheard teaches and/or
suggest tiers, as shown by the fourth level of nodes 560 that indicates details
of components (Fig. 17, col. 24, ll. 65-66). See also col. 24, ll. 63-64, i.e.,
“A third level of nodes 558 indicates the various components operating on a
particular workstation.”

4 See Spec. p. 3, l. 28 through p. 4, l. 3, i.e., “The IDE includes a
Topological Multi-Tier Business Application Composer and associated
Meta-model, wherein the Composer allows the developer to graphically
design, develop, maintain, build, test, debug, and deploy the multi-tier
business application and the graphical representation of the multi-tier
business application is then persistently stored in the Meta-model.”
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As pointed out by the Examiner, the secondary Green reference
expressly teaches a method and system for designing an N-tier software
architecture (see Ans. 6-7). Thus, contrary to Appellants’ arguments, we
find the weight of the evidence supports the Examiner’s finding that the
proffered combination of Sheard and Green also teaches and/or suggests
“graphical constructs representing tiers and components of the tiers that are
used to create and maintain a graphical presentation of the multi-tier
business application in the window,” as claimed (see claim 1).
For at least the aforementioned reasons, we conclude Appellants have
not established that the Examiner erred with respect to establishing a prima
facie case of obviousness. Therefore, we sustain the Examiner’s rejection of
representative claim 1 as being unpatentable over Sheard in view of Green
for essentially the same reasons set forth in the Answer, and as discussed
above.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we have decided the appeal
with respect to the remaining claims in this group on the basis of the selected
claim alone. Thus, we sustain the Examiner’s rejection of claims 2-24 as
being unpatentable over Sheard in view of Green for the same reasons
discussed supra with respect to representative claim 1.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown the Examiner erred in rejecting claims 1-24
under 35 U.S.C. § 103(a) for obviousness.

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OTHER ISSUE
In the event prosecution is reopened in this application, we leave it to
the Examiner to consider a rejection under 35 U.S.C. §112, second
paragraph, consistent with this Decision.

DECISION
The decision of the Examiner rejecting claims 1-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

clj
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