Ex Parte Zaremski et al

Patent Trial and Appeal Board

Sep 27, 2013

11398057 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MIROSLAW W. ZAREMSKI,
HESHAM E. FAHMY, and JOHN H. GREEN1
__________

Appeal 2011-006761
Application 11/398,057
Technology Center 2100
__________

Before ERIC GRIMES, LORA M. GREEN, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a program
object management method, system, and program product. The Examiner
has rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

1 Appellants identify the real party in interest as International Business
Machines Corporation (App. Br. 1).
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Application 11/398,057

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STATEMENT OF THE CASE
Claims 1-5, 7-11, 13-16, and 18-20 are pending and on appeal (App.
Br. 2).2 Claim 1 is illustrative and reads as follows:
1. A method of managing a program object, the method comprising:
obtaining a set of configurable properties for the program object
wherein the program object includes at least one of: a Java Bean, an applet,
or a Java applet, the program object storing executable code;
obtaining a set of values corresponding to the set of configurable
properties;
obtaining a property object for the program object, the property object
defining a set of user interface attributes for the program object;
modifying the executable code in the program object using the set of
values; and
generating a user interface based on the set of configurable properties,
the set of values written to the program object and the property object.
Claims 1-5, 7-11, 13-16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Carter (U.S. 6,208,336 B1, Mar. 27, 2001) in view
of Ford (U.S. 5,786,815, Jul. 28, 1998) (Ans. 3).3
The Examiner relies on Carter for teaching
a method of managing a program object, the method
comprising:
obtaining a set of properties for the program object
wherein the program object includes at least one of: a Java

2 The Appeal Brief lists claim 17 and does not list claim 16 as pending and
on appeal (App. Br. 2). However, for the reasons set forth in footnote 3, we
list claim 16 and do not list claim 17 as pending and on appeal.
3 As with the Appeal Brief, the Examiner’s Answer lists claim 17 and does
not list claim 16 as rejected on this basis (Ans. 3). However, in the body of
the rejection, the Examiner states that claim 16 is “rejected under the same
rationale as claims 1-5, and 7-8” (id. at 5). In addition, claim 17 is listed as
cancelled in the Amendment dated February 1, 2010. Thus, we include
claim 16 and do not include claim 17 as rejected on this basis.
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Bean, an applet, or a Java applet, . . . the program object storing
executable code;
obtaining a property object for the program object, the
property object defining a set of user interface attributes for the
program object; . . .
generating a user interface based on the set of properties,
the set of values written to the program object and the property
object.
(Id. at 3-4.) The Examiner relies on Ford for teaching “obtaining a set of
values corresponding to the set of configurable properties” and “modifying
the executable code in the program object using the set of values” (id. at 4).
The Examiner concludes that it would have been obvious “to include Ford’s
teaching with [the] method of Ca[r]ter in order to provide user with
programmable option and parameters” (id.).
ANALYSIS
The Examiner relies on Carter for teaching “obtaining a set of
configurable properties for the program object,” as recited in claim 1 (Ans. 3
& 6). In addition, the Examiner relies on the same rationale for rejecting the
other claims on appeal (id. at 4-5). However, we agree with Appellants that
the Examiner has not set forth a prima facie case that Carter obtains a set of
configurable properties for the program object (App. Br. 6).
The Specification discloses that, “[f]requently, the set of properties 58
will include one or more configurable properties for which user 16 (FIG. 1)
can specify a value” (Spec. ¶ [0038]). Based on how the term “configurable
properties” is used in the Specification, as well as in the claims, we interpret
“configurable properties” to be properties for which a user can specify a
value that can be used to modify the executable code in a program object.
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The Examiner finds that the “modification and configuration of
graphical user interface property of the applications include the step of
obtaining a set of configurable properties because Carter determin[es] at run
time the set of functionalities that are available to be modif[ied] by the user”
(Ans. 6 (citing Carter, col. 2, ll. 10-15, and col. 5, ll. 45-58)). We agree with
the Examiner that Carter teaches “moving [ ] additional functionality to
separate classes or modules . . . , determining at run-time what functionality
is available, and modifying the graphical user interface associated with the
application to display controls for the available functions” (Carter, col. 2,
ll. 7-13). In particular, Carter discloses that, “[i]f one or more command
classes have been successfully instantiated, . . . [Java Virtual Machine] 2120
displays the graphical user interface on video display 1700 with additional
controls relating to the successfully instantiated command classes” and that
“FIG. 5B illustrates an example of a graphical user interface . . . includ[ing]
the four basic controls 5210-5240 and additional controls for a Spell
Checker 5250 and a Thesaurus 5260” (id. at col. 5, ll. 47-55).
However, we conclude that the Examiner has not adequately
explained how these teachings disclose “obtaining a set of configurable
properties for the program object.” As Appellants point out (App. Br. 5-6),
the Specification distinguishes between “classes,” as Carter discloses, and
“configurable properties,” as recited in claim 1. Moreover, if the Examiner
is relying on the above-indicated teachings to disclose “obtaining a set of
configurable properties for the program object,” it is not clear what the
Examiner is relying on to teach “obtaining a property object for the program
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object,” as also recited in claim 1 (compare Carter, col. 5, ll. 45-58, to col. 4,
ll. 25-50).
CONCLUSION
The Examiner has not set forth a prima facie case of obviousness. We
therefore reverse the obviousness rejection.

REVERSED

cdc