Ex Parte Wason

Board of Patent Appeals and Interferences

Jun 18, 2007

09616809 (B.P.A.I. Jun. 18, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES R. WASON
____________________

Appeal 2007-1186
Application 09/616,8091
Technology Center 2100
____________________

Decided: June 18, 2007
____________________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and
SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-3 and 5-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed July 14, 2000. The real party in interest is International
Business Machines Corporation.

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Application 09/616,809

STATEMENT OF THE CASE
Appellant's invention relates to a method and system for processing
text files used to communicate between computer applications or between a
computer application and an end user. (Specification 1:26-30.) In the words
of the Appellant:
[S]pecifically, this invention solves the first problem,
describing the text format, by using fragments of text
(templates) as overlays for parsing incoming files, or as
prototypes to generate segments of output files. There are
several important advantages to this approach. The templates
are isolated from all other application logic, so it is easy to see
why a particular template is producing a resulting text file. The
template is a literal image of the text fragment it processes, so it
is possible to create the templates from samples of the text file.
If the format changes, it is easy to change the corresponding
template. For incoming files, there is an important advantage to
being able to use a template as a mask to parse the text file.
This replaces hard to decipher application logic typically used
for parsing.

The second problem of mapping data from the text file to the
application is solved by specialized macro classes. These come
in two flavors (one for input and one for output). The input
macro read in a segment of the text file and use it to initiate
application update processing. The output macros derive data
from the application and format it into the text file (special
format classes are used to describe how to transform the output
into the proper shape). This invention provides a basic set of
macros, and the facilities to add more as needed.

The solution to the third problem, flow of control, is solved by
the interaction of templates and macros. A macro is embedded
as a special keyword within a template. When the template
reaches that point, it calls the macro. The macro in turn is
passed another template name as part of its invocation; as a part
of its processing it can invoke that template (which in turn calls
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other macros, etc.). This nested aggregation of templates and
macros allows a processing structure to be built up that mirrors
the inherit [sic] structure of the text file. Since the behavior of
the macro depends both on its internal logic and the template it
is passed to invoke, it is possible to reuse the same macro to do
different things by passing it a different template. The net
effect is that the bulk of the logic needed to describe flow of
control is included in the template structure. The
template/macro combination is the ultimate expression of the
ideal of letting the target file structure determine the structure of
the application needed to process it.

(Specification 5:25 to 7:7.)

Claim 1 is exemplary:
1. A method of processing a text file in a computer
application, comprising the steps:

forming a plurality of templates having literal fragments of the
text file;

providing a macro class to map data from the text file to the
computer application;

embedding in one of the templates a pointer to the macro class;
and

using said one of the templates as an overlay to parse the text
file into segments having data, or as a prototype to generate a
segment of an output file;

said using step including the steps of:

i) reaching said pointer in said one of the templates,
ii) when said pointer is reached, using said pointer to
invoke said macro class and using said macro class to map data
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from one of the segments of the text file to the computer
application; and

iii) said macro class then invoking another one of the
templates to further process the text file.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Andrews US 6,317,871 B1 Nov. 13, 2001
(filed Jul. 17, 1998)

Claims 1-3 and 5-17 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Andrews.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2

2 Except as will be noted in this opinion, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102(e). The issue turns on the
interpretation of claim 1 and whether Andrews describes or suggests each
and every limitation of the claims.

FINDINGS OF FACT
1. Andrews describes a system for accurately translating computer
program code from one high-level computer language to another.
(Abstract.) Andrews teaches that "[t]he present invention is embodied
in a software system for translating source code to target code where
the target code is a different computer language from the source code.
The software system is referred to as the 'Rosetta Translator.'" (Col.
5, ll. 44-48.)

2. Andrews teaches that accurate translation of computer languages into
a target language is made extremely difficult because of "text
preprocessor mechanisms," such as macros, that "cause changes to the
text of a program so that the ultimate program is not discernable from
a simple 'face value' parsing of the text of the program." (Col. 1,
ll. 41-47.)

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3. Andrews teaches that macros are translated after they are expanded.
(Col. 6, ll. 43-44.) "When a text preprocessor recognizes a reference
to a macro, for example 'mac(5),' it substitutes text from the body of
the macro at that point." (Col. 4, ll. 32-34.)

4. The system of Andrews "identify[ies] the file structure of a computer
program, preserves the file structure of the code after translating
source code from one high-level computer language to another,
combines pieces of a source file that were generated in different
translation sessions, and ensures textual consistency of each piece of
generated code in the resultant code files." (Col. 3, ll. 29-35.) This
translation "strategy preserves text preprocessor mechanisms such as
macros." (Col. 3, ll. 44-45.)

5. One embodiment of Andrews teaches "a method for parsing a source
program for translation into a target program of a different language
than the source program." (Col. 2, ll. 42-44.) "The method includes
the steps of parsing the program to determine whether a line includes
a macro definition; creating a first list having a partition associated
with a determined macro definition; and using the partition to generate
the target program." (Col. 2, ll. 44-49.)

6. Andrews "extracts source language partition templates from a source
language code file and assembles target language partition templates
into a target language code file." (Col. 7, ll. 11-14.) Partition
templates are bounded by, among other things, the "beginning and end
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of macro bodies in a macro definition" and the "beginning and end of
a macro actual parameter." (Col. 7, ll. 23-24.) Instances of these
partition templates are used to populate a fragment tree. (Col. 8, ll.
12-13.)

7. Figure 4 shows an example of partitions in a source language code
file. (Col. 8, ll. 8-9.) The source code language file of Figure 4
includes the macro "stuff()."

8. Figures 5 and 6 illustrate the fragment tree that the translator of
Andrews builds after scanning the source language code file of Figure
4. (Col. 8, ll. 14-16.) In particular, Figures 5 and 6 show four
partitions of the source language code file of Figure 4 in the fragment
tree, namely:
(1) INT glob; DEFINE stuff(a) =
(2) #; DEFINE junk =
(3) #; PROC fred; BEGIN
(4) INT i := 2; i := stuff(i) ; END;
The contents of the macro body for the macro "stuff()" (i.e., a+13)
reside in a macro invocation virtual fragment, and its invocation
syntax (i.e., stuff ()) resides in the invoking virtual fragment. (Col. 8,
ll. 20-23.)

9. Figure 6 shows that, as part of the macro expansion process, the
macro invocation fragment invokes another partition template (labeled
part'n) with the macro actual parameters in order to expand the
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parameter fragments (i + 13). (Figure 6.) In the macro expansion
process, the macro stuff() maps the data which is to be expanded from
the source language code file to the translator application. (Figure 6.)
To further process the source language code file, the partition
template for the parameter fragment is invoked. (Figure 6; Col. 8, ll.
14-39.)

10. The translator of Andrews "pieces together textual representations of
instances of target language partition templates to form target
language output files, fitting a textual representation of a macro body,
for example, into its definition." (Col. 8, ll. 33-36.) "It also pieces
together partitions translated only in previous runs with partitions
whose translations have just been completed." (Col. 8, ll. 36-39.)

11. "When piecing together partition templates to create a target language
code file, the source generator [shown in Figure 2 of Andrews]
embeds the macro actual parameters in the partition that contains the
invocation syntax for the macro." (Col. 7, l. 66 to Col. 8, l. 2.)

12. "Code generated in different translation sessions can be accumulated
into one target language file by merging the partition template maps
for different translation sessions and merging the corresponding text
for each partition." (Col. 9, ll. 23-25.)

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PRINCIPLES OF LAW
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) that "claims must be interpreted as
broadly as their terms reasonably allow." Our reviewing court further states
that "the words of a claim 'are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321,
1326 (Fed. Cir. 2005) (en banc) (internal citations omitted). The "ordinary
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application." Id. at
1313, 75 USPQ2d at 1326.
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
Under the principles of inherency, a reference anticipates if it
necessarily includes or functions in accordance with the claimed limitations.
Atlas Powder Co. v. IRECO Inc., 190 F.3d at 1347, 51 USPQ2d at 1946.
Inherency may be established by extrinsic evidence, but "[s]uch evidence
must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference, and that it would be so recognized by
persons of ordinary skill." Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Inherency may not
be established by probabilities or possibilities, and "[t]he mere fact that a
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certain thing may result from a given set of circumstances is not sufficient."
Id.

ANALYSIS
Appellant contends that the Examiner erred in rejecting claims 1-3
and 5-17 under 35 U.S.C. § 102(e). Reviewing the findings of facts cited
above, we find that the Examiner did not err in rejecting claims 1-3 and 5-17
as being anticipated by Andrews.
Appellant asserts that Andrews does not disclose or suggest "using a
macro, which was invoked by one template, both (i) to map data from a text
file to a computer application, and (ii) itself to invoke another template to
further process the text file," as recited independent claims 1, 6, and 10. (Br.
11; see also Reply Br. 2-4.) We do not agree. Instead, when viewed under
the broadest reasonable interpretation of the claims, we agree with the
Examiner that Andrews teaches these limitations of the independent claims.
(Findings of Fact 1-12; Answer 5-7.)
Appellant argues that, in Andrews, "the macro . . . is not used to map
text from a source code to a target code. Instead, the Andrews, et al.
procedure involves only substituting a symbol for the macro and its
definition." (Reply Br. 2.) According to Appellant, "[t]he Andrews, et al.
procedure may use 'macro expansion,' but importantly the macro itself is not
used to map text from the source code to the target code." (Reply Br. 3.)
The Examiner replies that "the definition of the word macro alone
provides a basis that a macro maps segments of data to a computer
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application" and that "Andrews discloses the use of macros for mapping text
segments from the text file to the translator application." (Answer 6.)
Although we agree with Appellant that Andrews does not teach the
use of a macro to map text from a source code to a target code, the claim
language is not so narrow. Specifically, the language of claim 1 is broad
enough to encompass macro expansion.
Claim 1 recites "using said macro class to map data from one of the
segments of the text file to the computer application." The plain meaning of
the claim term "use" is "to put or bring into action or service; employ for or
apply to a given purpose." Webster's New World Dictionary Third College
Edition 1469 (1994).
Andrews employs macros for the purpose of mapping map text from
the source language code file to the Rosetta translator computer application.
(Findings of Fact 1, 3-12.) Under a reasonable interpretation of claim 1, the
recited "using said macro class" limitation reads on macro expansion
performed by the translator of Andrews.
Appellant also argues that "[t]he way in which the first template
invokes a macro, which then invokes a second template, is not shown in
Andrews." (Br. 13.) The Examiner replies that "Andrews clearly discloses
the macro invoking a template during the macro expansion process in order
to properly substitute the mapped data of the macro body." (Answer 7.) We
agree with the Examiner.
In particular, claim 1 recites "said macro class then invoking another
one of the templates to further process the text file." Andrews teaches a
macro invocation fragment invoking another partition template as part of the
macro expansion process to further process the source code language file.
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(Findings of Fact 7-9.) Therefore, this limitation of claim 1 also reads on
Andrews.
Claims 2-3, 5-13, and 17 were not argued separately and stand or fall
together with claim 1.
Appellant separately argues the patentability of claims 14-16. In
particular, Appellant argues that Andrews does not disclose or suggest using
"any specific procedure, such as the one set forth in Claim 14, for actually
invoking that other template." (Br. 14; Reply Br. 5.) Claim 14 recites that
the name of another template is passed to the macro, and the macro then uses
that name to invoke that other template. (Br. 14; Reply Br. 5.)
We do not agree with the Appellant on this point either. As
previously discussed, Andrews teaches a macro invocation fragment
invoking another partition template to further process the source language
code file. As part of this process, Andrews discloses passing a name for
another template when the macro class is invoked. Specifically, Figure 6
shows the name of the partition template (part'n) invoked by the macro
invocation fragment. (Finding of Fact 9.)
Even assuming for the sake of argument that Figure 6 does not
expressly disclose passing a name for another template, Andrews inherently
discloses passing a name for another template when the macro class is
invoked. In order for the macro invocation fragment to invoke the partition
template, a person of ordinary skill in the art would recognize that the name
of the partition template must necessarily be passed to the macro invocation
fragment. (See Findings of Fact 7-9.) Therefore, claim 14 reads on
Andrews.
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Claims 15 and 16 were argued on the same grounds as claim 14 with
respect to this issue, and stand or fall together with claim 14.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-3 and 5-17 because Andrews
discloses each and every limitation of those claims. The rejection of claims
1-3 and 5-17 is affirmed.

DECISION
The rejection of claims 1-3 and 5-17 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

tdl

Richard L Catania Esq
Scully Scott Murphy & Presser
400 Garden City Plaza
Garden City NY 11530
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