Ex parte Tyler

Board of Patent Appeals and Interferences

Jan 6, 2000

08069052 (B.P.A.I. Jan. 6, 2000)

Application for patent filed May 24, 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journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROSS E. TYLER
_____________
Appeal No. 1997-2862
Application 08/069,0521
______________
ON BRIEF
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Before BARRETT, FLEMING and DIXON, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 11 and 13-20, all the
claims pending in the present application. Claims 1-10 and 12 have been canceled.
Appeal No. 1997-2862
Application 08/069,052
2
The present invention relates to a controller for the ARC/INFO geographic information system
(GIS) which enables command line (TTY) control using a keyboard and graphic user interface (GUI)
control using a mouse or keyboard without manually switching by the user.
Independent claim 11 is reproduced as follows:
11. A method for enabling command line (TTY) and graphic user interface (GUI) control of a
main program in a computer which schedules multiple threads of operations and in which a TTY
operation at the top of a first thread supersedes GUI operations at the top of a second thread, said
main program inserting a TTY control operation at the top of said first thread, comprising the steps of:
(a) inserting a dummy GUI operation on top of said TTY control operation in said first thread
that suspends said TTY control operation and causes said main program to be controlled by said GUI
operation on top of said second thread;
(b) displaying a dummy window as an artifact of said dummy GUI operation; and
(c) in response to a TTY control command, removing said dummy GUI operation from said
first thread and deleting said dummy window to cause said main program to be controlled by said TTY
control operation and thereby avoid the need for a user to manually dismiss the dummy window,
feeding said TTY control command to said main program, scheduling said first thread, and inserting said
dummy GUI operation on top of said TTY control operation in said first thread to cause said main
program to be subsequently controlled by said GUI control operation in said second thread.
The Examiner relies on the following reference:
Mauney et al. (Mauney) 5,214,757 May 25, 1993
(filed September 29, 1992)
Claims 11 and 13-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Mauney in view of Appellant's admitted prior art.
Appeal No. 1997-2862
Application 08/069,052
Appellant filed an appeal brief on February 5, 1996. Appellant filed a reply brief on2
October 1, 1996. On December 10, 1996, the Examiner responded to the reply brief with a
supplemental examiner's answer thereby entering the reply brief into the record. On January 14, 1997,
Appellant filed a supplemental reply brief. In a letter of communication mailed on February 28, 1997,
the Examiner stated that the supplemental reply brief has been entered and considered but no further
response by the Examiner is deemed necessary.
On July 30, 1996, the Examiner mailed an examiner's answer. On December 10, 1996 the3
Examiner mailed a supplemental examiner's answer.
3
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
briefs and answers for the respective details thereof.2 3
OPINION
We will not sustain the rejection of claims 11 and 13-20 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). We note that
our reviewing court states that "when determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable 'heart' of the invention." Para-Ordnance Mfg.
v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert.
denied, 519 U.S. 822 (1996) citing W. L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540,
1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appeal No. 1997-2862
Application 08/069,052
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On page 6 of the brief, Appellant argues that independent claims 11, 15 and 19 require that a
dummy GUI operation be inserted on top of the TTY control operation in the first thread to suspend
TTY control so that the main program is controlled by the GUI operation. Appellant argues that this
limitation is not taught or suggested by Mauney. Appellant points out that Mauney teaches that the data
is converted by the emulator into TTY data and passed to the ARC/INFO program which is fixed in
the TTY mode to receive data at its standard input.
On page 12 of the answer, The Examiner points out that Mauney can be incorporated in a
single computer using a multi-tasking operating system which requires switching between tasks. The
Examiner points us to column 4, lines 63-65, for support of this statement. The Examiner argues that
the multi-tasking operating system would allow switching so that the system may read another thread.
Appellant responds to this argument on page 4 of the reply brief that Mauney is merely teaching that by
using a multi-tasking operating system, one would be able to simulate the actions of the two separate
computers and thus maintain all the capabilities and limitations of the system.
In response, the Examiner filed a supplemental Examiner's answer stating that Mauney's
teaching of multi-tasking operations to simulate the actions of two or more separate computers along
with the prior art that shows multiple threads which sequence TTY or GUI operations would lead those
skilled in the art to obtain a computer to perform multiple tasks that emulate TTY or GUI computer
operations. In response, Appellant filed a supplemental reply brief and argues that the Examiner is
Appeal No. 1997-2862
Application 08/069,052
5
using improper hindsight reasoning and that one of ordinary skill in the art would have to disregard the
teachings of Mauney as a whole, including fixing the standard input of the ARC/INFO program to
respond to only TTY data and using a digital emulator to convert the GUI and TTY data into TTY only
data stream that is connected to a standard input in favor of Appellant's controller. Appellant further
points out that figure 2 of Mauney teaches that step 46 uses a digital emulator to convert both the TTY
and GUI data into a TTY only data stream which is then sent to the fixed standard input of the
ARC/INFO program. Appellant argues that this avoids the problem of manually switching the
ARC/INFO program standard input but destroys the precedence of the TTY and GUI operations.
Appellant argues that the Appellant's controller makes the ARC/INFO program directly responsive to
both TTY and GUI data and thus maintains the precedence of the TTY and GUI operations.
Upon our careful review of Mauney, we find that Mauney teaches in column 4, lines 25-61, that
figure 1 shows an automated mapping system 10. In particular, Mauney teaches that a GPS receiver
12 receives radio signals from positioning satellites and derives from the signal time position and
operating condition information. The information from the GPS receiver 12 is sent to a GPS computer
14 through a GPS communication link 16. The GPS computer 14 processes the positional information
received from the GPS receiver 12 and sends the position information to a second computer GIS
computer 22. The GPS computer 14 communicates with the GIS computer 22 in a manner that
emulates a digitizing tablet. In this way, information can be entered into the GIS database without
Appeal No. 1997-2862
Application 08/069,052
6
manual intervention being required. In column 5, line
4 through column 6, line 16, Mauney teaches that figure 2 shows a flow chart of a GPS capture
program 30 executing on the GPS computer 14. In particular, Mauney discloses that step 46 allows
the GPS data to be converted and sent to the GIS database by emulating a digitizer. Mauney also
discloses in column 4, line 62 through column 5, line 3, an alternate embodiment in which both the GPS
capture program and the GIS database program could be run on a single computer using a multi-
tasking operating system. We find that the Mauney teaching of this alternate embodiment would only
suggest to those skilled in the art that the GIS database program which is run on computer 22 shown in
figure 1 and the GPS capture program which is run on GPS computer 14 may be run on a single
computer using multi-tasking techniques. We fail to find that the alternate embodiment would lead
those skilled in the art to modify either the GIS database program or the GPS capture program.
From the Mauney teaching, we fail to find that Mauney teaches or suggests to those skilled in
the art that a dummy GUI operation be inserted on the top of the TTY control operation in a first thread
to suspend TTY control so that the main program is controlled by the GUI operation as claimed in
Appellant's claims 11 and 13-20.
Appeal No. 1997-2862
Application 08/069,052
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We are not inclined to dispense with proof by evidence when the proposition at issue is not
supported by a teaching in a prior art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to establish a prima facie case. In
re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re Knapp-
Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668,
148 USPQ 268, 271-72 (CCPA 1966).
In view of the foregoing, we have not sustained the rejection of claims 11 and 13-20 under 35
U.S.C. § 103. Accordingly, the Examiner's decision is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-2862
Application 08/069,052
8
MRF/dal
WILLIAM L. JOHNSON
KOPPEL & JACOBS
555 ST. CHARLES DRIVE
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