Ex Parte Britt et al

Patent Trial and Appeal Board

Aug 30, 2016

11147586 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111147,586 0610712005
42982 7590 09/01/2016
Rockwell Automation, Ine,/FY
Attention: Linda H. Kasulke E-7Fl 9
1201 South Second Street
Milwaukee, WI 53204
FIRST NAMED INVENTOR
Clinton Duane Britt
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO.
05AB151-US
(ALBR:Ol 76)
CONFIRMATION NO.
7323
EXAMINER
BRAHMACHARI, MANDRITA
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
09/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
howell@fyiplaw.com
docket@fyiplaw.com
raintellectualproperty@ra.rockwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLINTON DUANE BRITT and
JOSEPH FRANCIS MANN
Appeal2014-009505
Application 11/147,586
Technology Center 2100
Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
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Application 11/147,586
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-22. We have jurisdiction under 35 U.S.C. § 6(b ). This appeal is related to
a prior decision Appeal 2009-015246, mailed August 23, 2012.
We affirm.
The claims are directed to a real time parallel interface configuration
and device representation method and system. Claims 1 and 22, reproduced
below, are representative of the claimed subject matter:
1. A configurable interface device comprising:
a first user viewable screen building path comprising a
display driver within the interface device for generating and
displaying a first user viewable screen on the interface device in
accordance with properties of device elements stored on the
interface device; and
a second user viewable screen building path comprising a
server application on the interface device in parallel with the first
path for generating and displaying a second user viewable screen
for a general purpose viewer by defining images associated with
the device elements.
22. An interface system comprising:
a machine readable medium; and
programming code stored on the machine readable
medium defining instructions for generating a first user viewable
screen on an interface device utilizing a display driver in
accordance with properties of device elements stored on the
interface device, and generating a second user viewable screen
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on the interface device via a server application in parallel with
the first user viewable screen for a general purpose viewer by
defining images associated with the device elements.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Glancy et al.
("Glancy")
Deering et al.
("Deering")
Shrader et al.
("Shrader")
Ballard et al.
("Ballard")
US 2002/0054029 Al May 9, 2002
US 6,424,343 B 1 July 23, 2002
US 6,526,513 Bl Feb.25,2003
US 7,216,298 Bl May 8, 2007
REJECTIONS
The Examiner made the following rejections:
Claims 1-13 again stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
Claims 1, 3-12, and 14--22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schrader in view of Ballard.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shrader in view of Ballard, as applied to independent
claim 11, and further in view of Glancy.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shrader in view of Ballard, as applied to independent
claim 1, and further in view of Deering.
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ANALYSIS
At the outset, we note that Appellants do not set forth separate
arguments for patentability with regards to any of the dependent claims. As
a result, we select independent claims 1 and 22 as representative claims for
the two groups. See 37 C.F.R. § 41.37(c)(iv).
35 U.S.C. § 112, second paragraph
With respect to claims 1-13, the Examiner continues the rejection
based upon a lack of particularity in the language of independent claims 1
and 11 and their respective dependent claims. (Final Act. 2-3; Ans. 2-3.)
We again agree with the Examiner.
The Examiner refers to Appellants' original Specification with regards
to the 35 U.S.C. § 112, second paragraph rejection and the lack of
antecedent basis in the Specification for the claimed "path." We agree with
the Examiner and find the lack of corresponding disclosure frustrates the
determination of the particular metes and bounds of the claimed invention. 1
1 The Examiner maintains "If the examiner has overlooked the portions of
the original Specification that describe these features of the present
invention, then appellant should point them out (by page number and line
number) in the response to this Office Action. Appellant may obviate this
rejection by cancelling the claims." (Ans. 3). Additionally, the Examiner
may invite Appellants to identify which of the four statutory classes of
invention under 35 U.S.C. § 101 ("machine, manufacture, or composition of
rnatter, or any new and usefhl improvement thereof') the claimed invention
and the "path" falls under.
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Appellants generally cite to paragraphs of the Specification
(paragraphs 5, 6, 56, 69, 74, 92-94), but Appellants do not specifically
address the scope of the claimed "path." (App. Br. 6-7; Reply Br. 3--4.)2
The Appellants continue to not address the scope of the claimed
"path" with specificity and consequently Appellants' arguments do not show
error in the Examiner's finding of a lack of particularity regarding the metes
and bounds of the claimed invention.
Any special meaning assigned to a term "must be sufficiently clear in
the Specification that any departure from common usage would be so
understood by a person of experience in the field of the
invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477
(Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc.,
527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Here, Appellants have not
identified any clear usage in the Specification because the claimed term is
not found in the originally filed Specification. While we agree with
Appellants that Appellants' original claims contain the term "path," the term
is unused and undefined in the Specification.
Again, as in our prior decision, we may speculate (Prior Dec. 6-7) and
find the claimed "path" to be "a. A sequence of commands or a link
2 Alternatively, the claimed "path" may be interpreted in a broad sense to be
directed to functional claim language rather than with the use of "means for"
language. The Examiner should evaluate the corresponding structure, acts,
or materials (35 U.S.C. § 112, second and sixth paragraphs) in any further
prosecution.
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between points that is needed to reach a particular goal orb. Path name."
http://www.yourdictionary.com (The American Heritage® Dictionary of the
English Language, 5th edition Copyright © 2013 by Houghton Mifflin
Harcourt Publishing Company. Published by Houghton Mifflin Harcourt
Publishing Company, accessed June 7, 2016.) Or alternatively, defined as
"3. In a computer program, the logical sequence of instructions executed by
a computer. 4. In database management systems, a series of physical or
logical connections between records or segments, usually requiring the use
of pointers." http:/ !glossary. westnetinc.com/term.php?termld=253 8
accessed June 15, 2016. Additionally, "path" is defined by the Free On -
Line Dictionary Of Computing as:
1. (file system) pathname; 2. (networking) A bang path or
explicitly routed Internet address; a node-by-node specification of
a link between two machines; 3. (operating system) The list of
directories the kernel (under Unix) or the command interpreter
(under MS-DOS) searches for executables. It is stored as part of
the environment in both operating systems.
(http://foldoc.org//path, Last updated: Nov. 21, 1996.)
Furthermore, we question the scope of independent claims 1 and 11
when considering in the context of the preamble. The preambles recite "A
configurable interface device" (claims 1 and 11) which includes two
separate paths or sequences of commands pointing to a display driver and a
server application. The claims, however, do not expressly recite the displays
or any medium to embody the sequence commands and do not specifically
generate and display the recited first user viewable screen on an interface
device. Claims 1 and 11 merely recite the capability of displaying the
recited first user viewable screen. Compare claim 14 expressly reciting
"generating a first user viewable screen on an interface device and
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displaying via a display driver;" and claim 22 expressly reciting a medium,
but only code "for generating" without the "screen" or "display."3
Consequently, we agree with the Examiner that claims 1-13 do not
particularly point out and distinctly claim the invention with each Appellants
regard as their invention.
35 U.S.C. § 103(a)
As an initial matter of claim construction, we conclude a question
arises as to whether the contested functional limitations recited in the
"wherein" clause limit the scope of representative claim 1, because the
contested functional limitations do not further limit the structure of the
apparatus of claim 1.
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int 'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). As addressed by the court
in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (2009),
The problem with construing "displaying real-time data" as used
in the claims of the '759 patent to preclude "contextually
meaningful delay" is that such a construction injects a use
limitation into a claim written in structural terms. "[A ]pparatus
claims cover what a device is, not what a device does." Hewlett-
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468
(Fed.Cir.1990).
3 The Examiner should further consider the scope of the preamble in any
further prosecution on the merits.
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Absent an express limitation to the contrary, any use of a device
that meets all of the limitations of an apparatus claim written in
structural terms infringes that apparatus claim . . . see also
Roberts v. Ryer, 91 U.S. 150, 157, 23 L.Ed. 267 (1875) ("The
inventor of a machine is entitled to the benefit of all the uses to
which it can be put, no matter whether he had conceived the idea
of the use or not."). Construing a non-functional term in an
apparatus claim in a way that makes direct infringement tum on
the use to which an accused apparatus is later put confuses rather
than clarifies, frustrates the ability of both the patentee and
potential infringers to ascertain the propriety of particular
activities, and is inconsistent with the notice function central to
the patent system.
Id. at 1091.
l'viPEP § 2111.04 provides further guidance regarding the patentable
weight to be given to "wherein'' clauses:
Claim scope is not 1 imited by claim language that suggests or
mal(es optio11al but does 11t1t require steps tt1 lJe pertl1rmed~ lJl" b;-~
claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) "adapted to'' or "adapted for'~ clauses;
(B) "wherein" clauses; and
(C) "wherebi' clauses.
(l\1PEP § 2111.04 Ninth Edition, Rev. 7, Nov. 2015, emphasis added).
Moreover, we find that the invention recited in independent claims 1
and 11 is directed to a "configurable interface device," but the language
recited in the body of the claims is directed to the functional operation of the
device rather than to its structural components. In light of our prior
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affirmance of the rejection under 35 U.S.C. § 112, second paragraph, in our
prior decision and our affirmance above, Appellants have been given a
number of opportunities to either substantively amend the language of
independent claims 1 and 11 or to explain the scope of the claimed
invention. Appellants have chosen to do neither.
Consequently, we note claim terms are to be given their broadest
reasonable interpretation, as understood by those of ordinary skill in the art
and taking into account whatever enlightenment may be had from the
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). From
our review of Appellants' Summary of the Claimed Subject Matter section
in the Appeal Brief, Appellants have not identified any corresponding
structure, acts, or materials for the functional claim recitations. As a result,
we give the claims their broadest reasonable interpretation, as best
understood.
With respect to the scope of independent claims 1 and 14, Appellants
combine their arguments regarding independent claims 1, 11, and 14, but
separate the arguments subsequent to the combined treatment. We note that
that the scope of the claims is significantly different. Claims 1 and 11 are
directed to "a configurable interface" containing two "paths" and the claims
do not expressly recite the generation and display on the singular recited
physical device.
Independent claims 14 and 22 are directed to "[a] configurable
interface method" and "[a Jn interface system" where the generating and
displaying is on the single/same "interface device." The language of the
claims is similar, but the scope of the claims is different. As a result, we
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select independent claims 1 and 22 as the representative claims for the
respective groups. 37 C.F.R. § 41.37(c)(iv).
Additionally, we note that claim 22 recites the first screen and second
screen are on the same "interface device," but the Summary of the Claimed
Subject Matter section of the Appeal Brief identifies two different physical
displays (64 and 84). (App. Br. 3--4.) Again, we are left without guidance
by the Specification and by Appellants. Therefore, we apply the art to the
functional claim language using the broadest reasonable interpretation.
Furthermore, Appellants' claim language recites "in parallel with the
first path" (claim 1) and "in parallel with the first user viewable screen"
(claim 22), but Appellants have not identified how the scope of the process
limitation restricts the system/machine claim limitations (claim 1) nor the
generating step (claim 22).
We note that Appellants merely repeat the language of "in parallel" in
the argument, and we note that the same language is found in the
Specification without further detail or context. We further note that there is
no express definition of "in parallel." Appellants' arguments imply some
contemporaneous time period for the generation, but no such limitation is
found in the express claim language or in the Specification. (See Title, Spec.
ff 6, 14, 74, 90, 93.) Consequently, we find the broadest reasonable
interpretation contains no contemporaneous time requirement in the claim
limitations, just two separate generations of displaying user viewable screens
on the same interface device. 4
4 We note that the claims recite generating and displaying first and second
user viewable screens on the same interface device, but the Summary of the
Claimed Subject Matter section of the Appeal Brief recites two separate
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With this above claim interpretation, we evaluate the Examiner's
obviousness rejections.
Claims 1 and 11
With respect to claims 1 and 11, Appellants contend "The cited
combination does not disclose generating and displaying a first user
viewable screen in accordance with properties of device elements stored on
the interface device, as generally recited by claims 1, 11, and 14." (App. Br.
8, emphasis omitted).
Appellants generally repeat the language of the claim and generally
contend that the teachings of the Schrader reference do not teach or suggest
the claimed "first user viewable screen building path," as recited by claims 1
and 11. (App. Br. 8-9.) Appellants contend "[t]he appellants disagree
because nowhere does Shrader disclose that the permissions have anything
to do with generating a user viewable screen or that the applet or application
base how the user viewable screen is displayed off of the permissions."
(App. Br. 9.) Yet, we find the claim language does not expressly
recite/require "generating and displaying a first user viewable screen on the
interface" in independent claim 1.
Appellants repeat the portions of the Schrader reference relied upon
by the Examiner and contend:
[O]ne of ordinary skill in the art would recognize that properties
stored in the policy files used for defining permissions in the Java
2 security model generally relate to granting and restricting
access to system resources ....
physical displays (64 and 84). We find the broadest reasonable
interpretation is that somewhere in a device two screens are generated.
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Clearly, the properties are not utilized to generate and display a
user viewable screen that has elements, images, or any other
component. Nothing in Shrader suggests that a user viewable
screen is generated and displayed based on properties of device
elements stored on an interface device.
(App. Br. 10-11).
As discussed above with respect to the scope of independent claim 1,
we find Appellants' argument is not commensurate in scope with the express
language of independent claim 1 and does not show error in the Examiner's
conclusion of obviousness of the "configurable interface device" of
representative independent claim 1.
Appellants further contend "[t]he cited combination does not disclose
a 'second user viewable screen building path' for 'generating and displaying
a second user viewable screen for a general purpose viewer by defining
images associated with the device elements' as generally recited by claims 1
and 11." (App. Br. 11, emphasis omitted.) Again, Appellants repeat the
portions of the Schrader reference relied upon by the Examiner and contend:
As may be seen by the cited portions, Shrader does not
teach or suggest that a second user viewable screen is generated
and displayed. There certainly is no teaching or suggestion that
the "sessionDynamic object" and the "permanentDynamic
PermissionCollection objects" are "usable for building,
generating, and displaying a second screen, " as stated by the
examiner. (Emphasis added.) Final Office action, pages 5 and 7.
The cited portions disclose that the sessionDynamic and
permanentDynamic PermissionCollection objects contain
attributes that indicate whether permissions are granted for a
session or for all invocations of a JRE. Shrader, col. 6, lines 3 7-
55. Nothing about these objects or any other feature of Shrader
teaches or suggests a second user viewable screen building path
that generates and displays a second user viewable screen at all,
let alone in parallel with a first user viewable screen building
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path, as discussed in detail below. Further, the relied upon
portions also clearly do not teach or suggest that the dynamic
PermissionCollection objects generate and display the second
user viewable screen for a general purpose viewer by defining
images associated with the device elements, as recited by
independent claims 1 and 11. Indeed, there is no mention of
images or defining images associated with device elements
anywhere in Shrader. Further, Ballard fails to obviate these
deficiencies.
(App. Br. 13.)
The Examiner disagrees with Appellants' argument and finds
Schrader does disclose building, generating, and displaying a second screen
for a Netscape Navigator or Microsoft Internet Explorer browser, or general
purpose viewer. (Ans. 27-28.) The Examiner also notes the difficulty in
ascertaining what the "paths" are due to the lack of any disclosure in the
Specification. We agree with the Examiner, but note that the broadest
reasonable interpretation would be that there is a sequence of commands or
nodes taught and suggested by the Schrader reference to teach and suggest
the use of Java run-time environments for both Netscape Navigator and
Microsoft Internet Explorer (Shrader col. 1 ). The Examiner further explains
how a pointer to PolicyFile object 140 can provide a second path to a
sessionDynamic object 130 or a permanentDynamic PermissionCollection
object 135 usable for building, generating, and displaying a second screen on
a Netscape Communicator general purpose viewer. (Ans. 28.) We agree
with the Examiner.
Appellants further respond to the Examiner's reliance upon column 1
of the Schrader reference and contend:
At best, the portion merely describes building two applets
tailored to a specific browser to access that browser's security
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methods or building one applet capable of generically accessing
security methods in either browser. Even assuming, arguendo,
that the cited portion described generating a screen, the screen
generated by the applets would be one screen displayed on one
browser or the other. That is, the applet's screen would be the
same screen. There are not two separate screens generated and
displayed via two different paths in parallel. Moreover, there
appears to only be one path, if any, which is the applet executing
via a browser.
(Reply Br. 6.) We find Appellants' argument is not commensurate in
scope with the express language recited in independent claim 1 because the
language of independent claim 1 merely sets forth a first and second paths
for a generating the separate screens. We agree with the Examiner that the
two paths are taught and fairly suggested by the Shrader reference.
Appellants further argue "[ t ]he cited combination does not disclose 'a
second user viewable screen building path comprising a server application
on the interface device in parallel with the first path' as recited by claims 1
and 11." (App. Br. 14, emphasis omitted.) Appellants argue:
[T]he examiner cited Shrader as disclosing these recitations of
independent claims 1and11. Final Office action, pages 5 and 7.
However, the appellants respectfully assert that the portions of
Shrader relied upon by the examiner do not teach or suggest these
claim recitations. Specifically, there is no mechanism disclosed
in Shrader that provides two user viewable screen building paths
on an interface device that generate and display two user
viewable screens in parallel. The examiner stated that the
"dynamic objects 130/140 can be simultaneously used in parallel
with the first path to the static policy files to define multimedia
image content associated with the Netscape Communicator
general purpose viewer that is used to show the Java device
elements for the applets or application" without pointing to the
specific portion of Shrader that actually discloses this as claimed
by the current invention. Final Office action, page 5. It appears
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Shrader fails to disclose this recitation presumably as a result of
the fact that Shrader is not related to providing two parallel user
viewable screen building paths that generate and display two user
viewable screens. As discussed above, Shrader does not even
disclose generating a second user viewable screen. Instead,
Shrader discloses providing an architecture for dynamically
modifying permissions in the Java 2 security model. Shrader
simply has no reason to disclose providing two user viewable
screen building paths on an interface device that generate and
display two user viewable screens in parallel. Thus, Shrader
fails to disclose this recitation, and Ballard fails to obviate the
deficiency.
(App. Br. 14, emphasis added.)
The Examiner repeats similar responses as discussed above with
regards to the Shrader reference disclosing most of the claim limitation and
further maintains:
Said dynamic objects 130 and 140 can be simultaneously used in
parallel with the first path to the static policy files to define
multimedia and image content associated with the Netscape
Communicator general purpose viewer that is used to show the
Java device elements for the applet or application.), and Ballard
discloses the remaining portion of a ''path comprising a server
application." (col. 14 lines 27-33, Fig. 3 item 305)(i.e. The
application server serves the interface via the lntemet.)(col. 9
lines 18-20)(i.e. The browser can access the address of the
interface on a server).
(Ans. 29.) In the Reply Brief, Appellants do not respond to the Examiner's
further clarifications in the Examiner's Answer. As a result, Appellants'
arguments do not show error in the Examiner's conclusion of obviousness of
representative independent claim 1.
Appellants further contend that "The cited combination does not
disclose a 'second user viewable screen building path' as recited by claims 1
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and 11." (App. Br. 15, emphasis omitted.) Appellants contend that the
pointer in the Shrader reference is merely a reference to a memory address
where the pointer to the Policyfile object will provide the memory address to
a PolicyFile object, which provides access to the PolicyFile object's
attributes and functions. (App. Br. 15.) Appellants further contend that the
PolicyFile object does not include access to the sessionDynamic object and
PermanentDynamic PermissionCollection object. Appellants then conclude
that "the PolicyFile object pointer does not provide a second user viewable
screen building path. Further, Ballard also does not teach or suggest "a
second user viewable screen building path comprising a server application
on the interface device in parallel with the first path." (App. Br. 15-16.)
The Examiner maintains the same line of reasoning discussed above
regarding the Shrader reference. Again, we agree with the Examiner and
find that Appellants have not identified a reversible error in the Examiner's
factual findings and line of reasoning concerning the conclusion of
obviousness of independent claim 1.
Furthermore, Appellants generally contend that the prior art relied
upon does not teach the claimed limitation and merely repeats the language
of the claim limitation without identifying a difference. Consequently,
Appellants' arguments are merely unsupported attorney argument.
Moreover, attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). "Argument in the brief does not take
the place of evidence in the record." In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). As a
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result, Appellants' arguments do not show error in the Examiner's reasoned
conclusion of obviousness of representative independent claim 1.
Appellants further contend that the cited combination does not
disclose "a second user viewable screen building path comprising a server
application on the interface device in parallel with the first path" as recited
by claims 1 and 11. (App. Br. 16, emphasis omitted.) Appellants
specifically contend that the Examiner relied on the Ballard reference as
disclosing this element of independent claims 1 and 11.
Specifically, the examiner stated, "Ballard discloses a system for
automatically generating interfaces including applications that
comprise applications executed on a server." Id. However, the
appellants note that the claim recites, inter alia, that the "second
user viewable screen building path comprising a server
application on the interface device in parallel with the first path
for generating and displaying a second user viewable screen for
a general purpose viewer."
(App. Br. 16.) Appellants further generally contend that there is no reason
to combine the two references. (App. Br. 17 .)
Again, we find Appellants' argument is not commensurate with the
rejection as proffered by the Examiner. The Examiner maintains that the
Ballard reference was relied upon to teach the portion of the limitation
regarding an item that can "comprise a server application" (col. 3 lines 24-
27) and was not relied upon for the remaining portions of this limitation.
The Examiner further maintains that Appellants are arguing the references
individually, and the Examiner repeats the same reliance upon the Shrader
reference as discussed above. (Ans. 31-32.) We agree with the Examiner
and further find Appellant has not set forth a convincing line of reasoning
regarding the combination. As a result, Appellants' arguments do not show
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error in the Examiner's reasoned conclusion of obviousness of representative
independent claim 1.
Claims 2 and 13
With respect to dependent claims 2 and 13, Appellants maintain that
the additional prior art references do not remedy the deficiency in the base
combination. (App. Br. 20-21; Reply Br. 7-8.) We agree with the
Examiner. Because we found no deficiency in the base combination, we
similarly find Appellants' argument to be unpersuasive of error in the
Examiner's conclusion of obviousness of dependent claims 2 and 13. (Ans.
32-33.)
Claims 14 and 22
Appellants elected to argue claims 14 and 22 together. (App. Br. 17.)
We select independent claim 22 as the representative claim for the group and
will address Appellants' arguments thereto. 37 C.F.R. § 41.37(c)(iv).
We agree with the Examiner that the Shrader reference teaches and
discloses programming code stored on a medium defining instructions for
generating to user viewable screens on a user interface. (Final Act. 10-11.)
Appellants contend the cited combination does not disclose
"generating a second user viewable screen on the interface device ... for a
general purpose viewer by defining images associated with the device
elements," as generally recited by claims 14 and 22. (App. Br. 17; Reply Br.
7.) Appellants specifically contend:
As argued above, Shrader does not teach or suggest that a
second user viewable screen is generated. There certainly is no
teaching or suggestion that the "sessionDynamic object" and the
"permanentDynamic PermissionCollection objects" are "usable
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for building and generating a second screen, ;; as stated by the
examiner. (Emphasis added.) Final Office action, pages 9 and
11. The cited portions disclose that the sessionDynamic and
permanentDynamic PermissionCollection objects contain
attributes that indicate whether permissions are granted for a
session or for all invocations of a JRE. Shrader, col. 6, lines 37-
55. Nothing about these objects or any other feature of Shrader
teaches or suggests the ability to generate a second user viewable
screen at all, let alone in parallel with a first user viewable screen
on the interface device, as discussed in detail below. Further,
the relied upon portions also clearly do not teach or suggest that
the dynamic PermissionCollection objects generate the second
user viewable screen for a general purpose viewer by defining
images associated with the device elements, as recited by
independent claims 14 and 22. Indeed, there is no mention of
images or defining images associated with device elements
anywhere in Shrader. Ballard fails to obviate these deficiencies.
(App. Br. 17.) Appellants further contend:
In the examiner's answer, the examiner relied upon the
same portions from Shrader that were cited in the rejections of
claims 1 and 11 for similar claim recitations. examiner's answer,
pages 33-35. As discussed above with respect to claims 1 and
11, and to reiterate the arguments made in the appeal brief,
Shrader and Ballard fail to teach or suggest generating a second
user viewable screen on the interface device in parallel with the
first user viewable screen for a general purpose viewer, as also
generally recited in independent claims 14 and 22. Shrader is
not related to providing two user viewable screens at all, let alone
generating two screens in parallel. Shrader discloses providing
an architecture for dynamically modifying permissions in the
Java 2 security model. Shrader, col. 2, lines 6-25. As such,
Shrader simply has no reason to disclose generating two user
viewable screens on an interface device in parallel. Thus,
Shrader fails to disclose this recitation, and Ballard fails to
obviate this deficiencies.
(Reply Br. 7.)
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We disagree with Appellants and find that the Shrader reference
discloses the use of two separate browsers as the reason for having to
generate to different screens for the two different browsers. We further note
that the language of independent claim 22 merely sets forth two steps of
generating, but does not set forth displaying anything (with respect to claim
14, the first user viewable screen on an interface device is being displayed,
but the second generating step does not require a separate step of displaying
something). Moreover, only one interface device is recited in representative
claim 22. The Examiner repeats the same line of reasoning as advanced
with respect to independent claim 1 and further maintains that:
Said dynamic objects 130/140 can be simultaneously
used in parallel with the first path to the static policy files for
the first screen that is viewable by the user to define multimedia
and image content for the screens associated with and displayed
by the Netscape Communicator general purpose viewer that is
used to show the Java device elements for the applet or
application.).
(Ans. 33-34.) We agree with the Examiner.
Appellants further contend the cited combination does not disclose
"generating a first user viewable screen on an interface device" and
"generating a second user viewable screen on the interface device via a
server application in parallel with the first user viewable screen," as recited
by claims 14 and 22. (App. Br. 18.) Appellants set forth similar arguments
advanced with respect to independent claim 1 and contend "[ s ]pecifically,
there is no mechanism disclosed in Shrader that is capable of generating two
user viewable screens in parallel on an interface device." (App. Br. 18-19.)
The Examiner disagrees with Appellants and maintains:
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Schrader does disclose the limitations of "generating a first user
viewable screen on an interface device" (col. 3 lines 32-55, col.
3 line 66 to col. 4 line 5, col. 4 lines 3-19, Fig. 1items10 and 16,
Fig. 2 items 50 and 52)(i.e. On initialization, the PolicyFile class
reads from at least one first path in the filesystem to access the
policy files usable for building and generating a first screen and
displaying said first screen, via a java applet or application used
for driving the generation and display of said first screen, on the
Netscape Communicator general purpose viewer that is viewable
by the user who is interacting with the Java Runtime
Environment on the computer 10 interface device. Said screen is
generated and built in accordance with the properties in the
policy files stored in the file system on the computer interface
device that are used for defining the permissions for the Java
device element for the applet or application) and "generating a
second user viewable screen on the interface device via a server
application in parallel with the first user viewable screen" (col.
1 lines 15-17, col. 3 lines 32-55, col. 3 line 66 to col. 4 line 5,
col. 4 lines 3-19, col. 6 lines 37-55, Fig. 1 item 10, Fig. 4 items
130, 135, and 140)(i.e. A pointer to a PolicyFile object 140 can
provide a second path to a sessionDynamic object 130 or a
permanentDynamic PermissionCollection object 135 usable for
building and generating a second screen on the Netscape
Communicator general purpose viewer that is viewable by the
user who is interacting with the Java Runtime Environment on
the computer 10 interface device. Said dynamic objects 130/140
can be simultaneously used in parallel with the first path to the
static policy files for the first screen that is viewable by the user
to define multimedia and image content for the screens
associated with and displayed by the Netscape Communicator
general purpose viewer that is used to show the Java device
elements for the applet or application.).
(Ans. 34--35.) We agree with the Examiner. We find Appellants' argument
is not commensurate in scope with the express language of independent
claim 22 where claim 22 does not recite any "mechanism."
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Moreover, Appellants' general argument does not show error in the
Examiner's reasoned conclusion of obviousness of representative
independent claim 22.
Appellants further contend "[t]he cited combination does not disclose
'generating a second user viewable screen on the interface device via a
server application in parallel with the first user viewable screen' as recited
by claims 14 and 22." (App. Br. 19.) Appellants present arguments similar
to those addressed above with respect to independent claim 1. (App. Br. 19.)
Appellants argue the totality of the claimed limitation with respect to each
individual reference rather than addressing the claims as the Examiner has
set forth in the statement of the grounds of rejection.
With respect to independent claim 22, the Examiner maintains in the
statement of the rejection:
On initialization, the PolicyFile class reads from at least one first
path in the filesystem to access the policy files usable for
building and generating a first screen on the 1'-J etscape
Communicator general purpose viewer that is viewable by the
user who is interacting with the Java Runtime Environment 16
on the computer 10 interface device. Ajava applet or application
is also utilized to drive the generation and display of said first
screen. Said screen is generated and built in accordance with the
properties in the policy files stored in the file system on the
computer interface device that are used for defining the
permissions for the Java device element for the applet or
application)(col. 3 lines 32-42, col. 3 line 67 to col. 4 line 5, col.
4 lines 15-17, Fig. 1items10, 13, and 14)(i.e. Java programming
code that defines instructions usable for carrying out the
processes of the present invention can be stored on the system
memory medium 13 or the permanent memory medium 14 that
are readable by the operating system machine 15).
(Ans. 11.) The Examiner further maintains:
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A pointer to a PolicyFile object 140 can provide a second path to
a sessionDynamic object 130 or a permanentDynamic
PermissionCollection object 135 usable for building and
generating a second screen on the Netscape Communicator
general purpose viewer that is viewable by the user who is
interacting with the Java Runtime Environment on the computer
10 interface device. Said dynamic objects 130/140 can be
simultaneously used in parallel with the first path to the static
policy files for the first screen that is viewable by the user to
define multimedia and image content for the screens associated
with and displayed by the Netscape Communicator general
purpose viewer that is used to show the Java device elements for
the applet or application.).
(Ans. 11-12.) The Examiner further maintains in the response to arguments
section of the Examiner's Answer:
In response to appellant's arguments against the references
individually, one cannot show nonobviousness by attacking
references individually \~1here the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 208
USPQ 871 (CCPA 1981 ); In re Merck & Co., 800 F.2d 1091,
231 USPQ 375 (Fed. Cir. 1986).
Furthermore, Schrader does disclose configuring user
viewable screens for a Netscape Navigator or Microsoft Internet
Explorer browser or "general purpose viewer" (col. 1 lines 24-
35), and the remaining portions of this limitation. (col. 1lines15-
17, col. 3 lines 32-55, col. 3 line 66 to col. 4 line 5, col. 4 lines
3-19, col. 6 lines 37-55, Fig. 1 item 10, Fig. 4 items 130, 135,
and 140)(i.e. A pointer to a PolicyFile object 140 can provide a
second path to a sessionDynamic object 130 or a
permanentDynamic PermissionCollection object 135 usable for
building and generating a second screen on the Netscape
Communicator general purpose viewer that is viewable by the
user who is interacting with the Java Runtime Environment on
the computer 10 interface device. Said dynamic objects 130/140
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can be simultaneously used in parallel with the first path to the
static policy files for the first screen that is viewable by the user
to define multimedia and image content for the screens
associated with and displayed by the Netscape Communicator
general purpose viewer that is used to show the Java device
elements for the applet or application.).
(Ans. 35-37.) We agree with the Examiner's findings and conclusion
of obviousness of representative claim 22. We find Appellants'
arguments do not show error in the Examiner's factual findings and
conclusion of obviousness of representative independent claim 22 and
independent claim 14 grouped therewith.
Claim 13
Appellants repeat the language of independent claim 11 and maintain
that the combination of the Shrader, Ballard, and Glancy references, do not
disclose or suggest all of the elements of the claim 13. (App. Br. 20; Reply
Br. 7.) Because \'X/e found 1A~ppellants' argument to be unpersuasive \'X1ith
respect to representative independent claim 1 (independent claim 11 grouped
therewith), we similarly find Appellants' argument to be unpersuasive with
respect to dependent claim 13 and group claim 13 as falling with
representative independent claim 1. 37 C.F.R. § 41.37(c)(iv).
Claim 2
Appellants repeat the language of independent claim 1 and maintain
that the combination of the Shrader, Ballard, and Deering references, do not
disclose or suggest all of the elements of the claim 2. (App. Br. 21; Reply
Br. 7-8.) Because we found Appellants' argument to be unpersuasive with
respect to representative independent claim 1, we similarly find Appellants'
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argument to be unpersuasive with respect to dependent claim 2 and group
claim 2 to as falling with representative independent claim 1. 3 7 C.F .R.
§ 41.37(c)(iv).
Dependent claims
Because Appellants have not set forth separate arguments for
patentability of any other of the dependent claims, we group these claims as
falling with representative independent claim 1. 37 C.F.R. § 41.37(c)(iv).
CONCLUSIONS
The Examiner did not err in rejecting representative independent
claim 1 based upon obviousness under 35 U.S.C. § 103(a). The Examiner
did not err in rejecting representative independent claim 22 based upon
obviousness under 35 U.S.C. § 103(a).
DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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