Ex parte Pruitt

Board of Patent Appeals and Interferences

Nov 6, 1998

08172290 (B.P.A.I. Nov. 6, 1998)

Application for patent filed December 23, 1993. 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journal and (2) is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEONARD E. PRUITT
____________
Appeal No. 96-1988
Application No. 08/172,2901
____________
ON BRIEF
____________
Before THOMAS, KRASS, and CARMICHAEL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 3, 5 through 11 and 13 through
16, all of the claims remaining in the application.
Appeal No. 96-1988
Application No. 08/172,290
2
The invention pertains to a method and apparatus for
creating a flowchart through the use of a programmed computer
wherein a structured program automatically results.
Appeal No. 96-1988
Application No. 08/172,290
3
Representative independent claim 1 is reproduced as follows:
1. A method of creating a flowchart using a
programmable computer and a display for said programmable
computer, the method comprising the steps of:
displaying a predetermined set of basic flow forms
on a first area on the display;
providing a selection means by which a user can
select two forms from said set of basic flow forms;
combining said two selected flow forms to yield a
new valid flow form according to placement information
provided by the user and a predetermined plurality of
rules, said rules requiring that one of said two selected
flow forms is placed inside a second of the two selected
flow forms or one of said two selected flow forms is placed
in a head-to-tail relationship with the other said second of
said two selected flow forms, only downward flow of control
is required within the said flowchart, and no two lines
connecting flow forms cross one another; and
displaying the selected flow forms and any new valid
flow forms in a second area on said display, wherein any
program created from said flowchart is a structured
program.
The examiner relies on the following reference:
Marmelstein 5,187,788 Feb. 16,
1993
Claims 1 through 3, 5 through 11 and 13 through 16 stand
rejected, under 35 U.S.C. 102(e) and 35 U.S.C. 103, as being
anticipated by, or obvious over, Marmelstein, respectively.
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
Appeal No. 96-1988
Application No. 08/172,290
4
We reverse.
Independent claim 1 requires that the program created by
the flowchart be a "structured" program and that, in combining
selected flow forms, "only downward flow of control is
required within the flowchart, and no two lines connecting
flow forms cross one another." Independent claims 5 and 14
contain similar language.
We find nothing in the disclosure of Marmelstein which
teaches the claimed "downward flow" and prohibition of
connecting flow lines crossing each other. The examiner’s
position is that "there are inherently predetermined
connection rules applied to the input and output of each basic
block of the structured program in which up-ward logical flow
and crossing logical flows will not be allowed" [principal
answer-page 3]. For his part, appellant disputes the
"inherency" theory of the examiner and points out that the
examiner "has not pointed out where in Marmelstein there is a
suggestion that flow forms be placed in a flowchart such that
control flow is only downward and no two lines connection flow
forms cross each other" [principal brief-page 8]. Appellant
also points out that, if anything, Marmelstein teaches away
Appeal No. 96-1988
Application No. 08/172,290
5
from the instant claimed invention in the Figure 8 showing of
upward flowing lines and crossing lines in a flowchart.
We agree with appellant in that it is the initial burden
of the examiner to specifically point out where each and every
one of the claimed limitations is taught by the reference if a
proper rejection under 35 U.S.C. 102(e) is to lie. The
examiner has pointed to nothing within the disclosure of
Marmelstein that persuades us that the reference contains a
teaching of the claimed downward flow and the claimed
prohibition of the crossing of two connecting flow forms.
Accordingly, we will not sustain the rejection of claims
1 through 3, 5 through 11 and 13 through 16 under 35 U.S.C.
102(e) over Marmelstein.
With regard to the rejection of the claims under 35
U.S.C. 103, the examiner admits [principal answer-page 5] that
Marmelstein "does not teach preventing construction of visible
crossing lines between icons." The examiner takes the
position, however, that it would have been obvious to
realize such flowchart connection enforcement and
the display of corresponding error messages because it
would have helped programmers to avoid some common program
syntax errors during the program flowchart construction
without having to compile the program...[principal answer-
page 5].
Appeal No. 96-1988
Application No. 08/172,290
6
Such reasoning sounds, to us, like hindsight. Just
because a certain technique "would have helped programmers"
does not mean that it would have been obvious to artisans,
within the meaning of 35 U.S.C. 103, to have provided such a
technique. There is no evidence of record, other than
appellant’s own disclosure, that would have suggested the
prevention of the crossing of two lines connecting flow forms.
Appeal No. 96-1988
Application No. 08/172,290
7
Accordingly, we will not sustain the rejection of claims
1 through 3, 5 through 11 and 13 through 16 under 35 U.S.C.
103 over Marmelstein.
The examiner’s decision is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-1988
Application No. 08/172,290
8
EAK/sld
Appeal No. 96-1988
Application No. 08/172,290
9
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