Ex Parte Wason

Board of Patent Appeals and Interferences

Nov 20, 2007

09616809 (B.P.A.I. Nov. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES RICHARD WASON
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Appeal 2007-1186
Application 09/616,8091
Technology Center 2100
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Decided: November 20, 2007
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Before ALLEN R. MACDONALD, JAY P. LUCAS,
and SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing under 37 C.F.R. § 41.52 of that portion
of our Decision on Appeal entered June 18, 2007 ("Decision") wherein we
affirmed the Examiner's final rejection of claims 14-16 under 35 U.S.C.
§ 102(e). Appellant does not request rehearing of that portion of our

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

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Decision in which we affirmed the Examiner's final rejection of claims 1-3,
5-13, and 17 under 35 U.S.C. § 102(e).
The request for rehearing is granted-in-part.

DISCUSSION
Appellant argues that our Decision misapprehended or overlooked
two points in affirming the rejection of claims 14-16.2 We do not agree.
First, Appellant argues that our Decision did not apply the proper test
for anticipation because our statement of the issue on page 5 of the Decision
"stated that the 'issue turns on the interpretation of claim 1 and whether
Andrews describes or suggests each and every limitation of the claims'
(Decision 5, ll. 2-4.) (emphasis added)." (Req. for Reh'g 2.)
We do not agree that our Decision applied an incorrect test for
anticipation. The proper test for anticipation was explained on pages 9 and
10 of the Decision, and is reproduced below:
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

2 Appellant states that claim 14 is representative of claims 15 and 16. (Req.
for Reh'g 1.)
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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 certain thing may result from a given set of
circumstances is not sufficient." Id.

(Decision 9-10.) In addition, we note that "[a] reference anticipates a claim
if it discloses the claimed invention 'such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and
be in possession of the invention.'" In re Graves, 69 F.3d 1147, 1152
(Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)).
Our analysis applied the proper test for anticipation with respect to
claims 14-16 at pages 12-13 of the Decision.
However, because the phrase "describes or suggests" in the first
paragraph on page 5 of the Decision may be unclear, we will modify the
original Decision to the extent of replacing that phrase with the phrase
"discloses expressly or under the principles of inherency." We decline to
otherwise modify our Decision.
Second, Appellant argues that Andrews "does not show passing to the
macro class a name for another template, which is subsequently invoked by
the macro class, when the macro class is invoked." (Req. for Reh'g 3
(emphasis in original).) In particular, with respect to Figure 6 of Andrews
Appellant argues that "there is no indication that this term ["part'n"] is
passed to the macro when the macro itself is invoked." (Req. for Reh'g 6.)
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Appellant also argues that "it does not follow that it is inherent that the name
[of the partition template] was passed to the macro when the macro is
invoked. That name, for example, could be passed to the macro before the
macro is invoked." (Req. for Reh'g 6.)
Here, Appellant appears to merely reargue points that we considered
and addressed in our original Decision at pages 12-13, where we found that
Andrews teaches the limitations of claim 14 both expressly and under the
principles of inherency. Our findings are further buttressed by the teachings
in Andrews that:
(1) a macro "is invoked whenever a designated symbol is used
anywhere within the computer program. Thus, the symbol 'ID' can be
defined to be a macro such as 'average(b+daytime, array[15])' so that
whenever the symbol 'ID' appears in the program, it will be
substituted for its definition (i.e., a 'macro expansion')." (Andrews,
col. 1, ll. 58-66 (emphasis added).)
and
(2) "macros can be defined to accept parameters that, in turn,
need to be inserted in the definition of the macro when it is
expanded." (Andrews col. 2, ll. 1-3 (emphasis added).)
Thus, Appellant has not established error in our findings regarding
Andrews. Accordingly, we decline to modify our Decision.

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CONCLUSION
The request for rehearing is granted to the extent that our original
Decision of June 18, 2007 is modified to replace the phrase "describes or
suggests" with the phrase "discloses expressly or under the principles of
inherency" in the first paragraph on page 5, but is otherwise denied.
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).

GRANTED-IN-PART

KIS

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