Ex Parte Charisius et al

Patent Trial and Appeal Board

Sep 8, 2017

13085388 (P.T.A.B. Sep. 8, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/085,388 04/12/2011 Dietrich Charisius 344232-000048 2043
64828 7590 09/12/2017
HarnlH MofTiirk
EXAMINER
The Law Office of Clay McGurk UNG, LANNY N
P.O. BOX 1488
Orange, CA 92856 ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
09/12/2017 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):
CLAYMCGURK@GMAIL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETRICH CHARISIUS and ALEXANDER APTUS
Appeal 2017-004807
Application 13/085,3881
Technology Center 2100
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21—40. We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Data Engine Technologies, LLC as the real party in
interest. (App. Br. 2.)
Appeal 2017-004807
Application 13/085,388
THE INVENTION
Appellants’ disclosed and claimed invention is directed to a software
development tool that generates a web page containing a diagrammatic
graphical representation of a distributed computing component. (Spec.,
Abstract.)
Independent claim 21, reproduced below, is illustrative of the subject
matter on appeal:
21. A computer-implemented method comprising:
the computer receiving a request to generate an
Enterprise JavaBean (EJB);
in response to the request, the computer automatically
generating source code of at least one method corresponding to
the EJB; and
the computer displaying a graphical representation of the
EJB wherein methods having a method type are displayed
adjacent to each other with a symbol representing the method
type and are displayed in a separately bordered area from
methods having a different method type.
REJECTIONS
The Examiner rejected claims 21—40 under 35 U.S.C. § 102(a) as
being anticipated by IBM (Joaquin Picon et al., Enterprise JavaBeans
Development Using VisualAge for Java, IBM 1—195 (1999) (hereinafter
“IBM”)). (Final Act. 2.)
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Appeal 2017-004807
Application 13/085,388
ISSUE ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
dispositive issue:2
Whether the Examiner erred in finding IBM discloses the independent
claim 21 limitation,
the computer displaying a graphical representation of the
EJB wherein methods having a method type are displayed
adjacent to each other with a symbol representing the method
type and are displayed in a separately bordered area from
methods having a different method type,
and the commensurate limitations recited in independent claims 30 and 40.
(App. Br. 8—11; Reply Br. 1—3.)
ANALYSIS
For the limitation at issue, the Examiner relies on the disclosure in
IBM Davidson of
methods with icon[s] . . . displayed on top of each other
(adjacent) such as getFirstName() and getLastName() and each
method is on a separate line (separate bordered area) from
methods without the icon (different method type).
(Final Act. 3; IBM, Fig. 75). The Examiner further relies on the disclosure
in IBM of: (1) a “separately bordered area” created “when a user selects a
particular method”; and (2) displaying a “different icon (method type) than
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 4, 2016) (herein, “App.
Br.”); the Reply Brief (filed Feb. 1, 2017) (herein, “Reply Br.”); the Final
Office Action (mailed Feb. 4, 2016) (herein, “Final Act.”); and the
Examiner’s Answer (mailed Dec. 1, 2016) (herein, “Ans.”) for the respective
details.
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Appeal 2017-004807
Application 13/085,388
ones that do not have the icon (different method type).” (Ans. 8; IBM, Fig.
106, ejbCreate(TransactionRecordKey).)
Appellants argue, “[a]s shown in Fig. 75 of the IBM Manual, methods
which share the same icon are not adjacent to each other and are not in a
separately bordered area from other methods having a different method
type,” noting “ejbCreate(CustomerKey) is not adjacent to getFirstName() or
setFirstName(String) — where these methods share the same icon.” (Reply
Br. 3, citing IBM, Fig. 75 at 138.)
Appellants also contend:
[a] “separately bordered area” is not equivalent to
ejbCreate(TransactionRecordKey) being highlighted from a
selection by the user, because ejbCreate(TransactionRecordKey)
is in the same “Methods” area as all the other methods. The areas
shown in Fig. 106 for “EBJS”, “Types” and “Methods” would
properly be considered to be separately bordered areas. Whether
ejbCreate(TransactionRecordKey) is highlighted or not, this
method is still in the same bordered area as the other methods.
(Reply Br. 2—3, citing IBM, Fig. 106 at 176.)
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal, 814 F.2d 628, 631
(Fed. Cir. 1987). “The identical invention must be shown in as complete
detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868
F.2d 1226, 1236 (Fed. Cir. 1989).
We agree with Appellants that the claimed “separately bordered area”
is not equivalent to IBM’s disclosure of highlighting a single entry from a
common “Methods” area. See Reply Br. 2. We also note that the particular
icon symbol referenced by the Examiner is indicated in the caption of Figure
75 as identifying “[mjethods added to the Remote Interface,” which is
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Appeal 2017-004807
Application 13/085,388
separate from the type designation appearing in the figure that appears to be
common to all displayed methods.3
Accordingly, we are constrained by the record to find the Examiner
errs in rejecting independent claims 21, 30, and 40.
CONCLUSION
For the reasons stated above, we do not sustain the rejection of
independent claims 21, 30, and 40. We also do not sustain the anticipation
rejection of claims 22—29 and 31—39, which depend from claims 21 or 30.
DECISION
We reverse the Examiner’s rejection of claims 21—40.
REVERSED
3 For example, the text accompanying Figure 75 instructs the user to
“[sjelect the CustomerBean Class in the Types list; this displays its
corresponding methods.” (IBM at 138.) Thus all methods displayed in
Figure 75 would appear to have the common type of “CustomerBean.”
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