Ex Parte Crewe

Patent Trial and Appeal Board

Oct 31, 2012

10630020 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/630,020 07/30/2003 Matthew Crewe DYOUP0253US 7762
23908 7590 10/31/2012
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
WHIPPLE, BRIAN P
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
10/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MATTHEW CREWE

________________

Appeal 2010-005793
Application 10/630,020
Technology Center 2400
________________

Before, ALLEN R. MacDONALD, DEBRA K. STEPHENS, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-19 as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over Brandt et al. (US 5,875,327, February 23,
1999) (“Brandt”) and Cooke, Jr. et al. (US 6,574,629 B1, June 3, 2003)
(“Cooke”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS of rejection
pursuant to 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellant’s invention is directed to a software application for
integration into a picture archiving and communications systems (“PACS”)
network. Abstract. Because Appellant argues that the Examiner erred for
substantially the same reasons with respect to claims 1-13, we select claim
1 as representative of these claims. Claim 1 recites:
1. A software product containing a medical-imaging
visualization application, the software product comprising
computer executable instructions embodied on a computer
readable medium that are configured when executed to function
as a model component in a model-view-controller software
architecture, and having an interface having a set of user
interface control parameters and a set of data handling
parameters, the sets of parameters being chosen to allow
flexible integration of the visualization application into a
proprietary Picture Archiving and Communications Systems
(PACS) network.

App. Br. 20.
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Because Appellant argues that the Examiner erred for substantially
the same reasons with respect to claims 14-19, we select claim 14 as
representative of these claims. Independent claim 14 recites:
14. A method of offering a medical-imaging data
visualization application to a PACS network integrator, the
method comprising:

providing a first version of the application contained in a
high-level software component;

providing a second version of the application contained
in a plurality of lower-level software components; and

allowing the integrator to decide between use of the
different versions for integrating the application into a PACS
network.

App. Br. 22.

CLAIM 1
Issue
Appellant argues that the Examiner erred in finding that claim 1 is
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Brandt and Cooke. App. Br. 4. Specifically, Appellant
argues that the Examiner erred by finding that the configuration parameters
included in the preference files disclosed by Brandt correspond to the data
handling parameters and user interface parameters of the interface included
in the claimed software product. App. Br. 7. Appellant contends that the
language of claim 1 reciting “a model-view-controller software
architecture” refers to an architecture that includes a model component, a
view component, and a controller component. App. Br. 5. Appellant
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argues that the model component defines the fundamental aspects of the
functionality of an application, the view component manages the graphical
and/or textual output, and the controller interprets user inputs in order to
direct the model and/or view components to respond appropriately. App.
Br. 5-6.
According to Appellant, the Examiner erred by finding that the
preference files taught by Brandt read on the “model component” of the
claimed invention, the user’s level of operation in the Brandt network reads
on the “view component” included in the claimed PACS network, and the
ability to control the hierarchical order of preference files in Brandt reads
on the “controller component” also included in the PACS network. App.
Br. 7. Appellant further argues that that the term “model-view-controller
software architecture” has specific meaning in the art of software
engineering, as described above, and that one of ordinary skill in the art
would not interpret the Brandt disclosure as describing the software
architecture, or even the features of such architecture. Id.
We are consequently presented with the issue of whether the
Examiner erred in finding that Brandt discloses or suggests a “model-view-
controller software architecture” as recited in claim 1.

Analysis
The Examiner responds that Appellant has not pointed to any section
of Appellant’s specification that provides support for Appellant’s
interpretation of a “model-view-controller software architecture” as
constituting a model component which defines the fundamental aspects of
the functionality of an application, a view component which manages the
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graphical and/or textual output, and a controller component which interprets
user inputs in order to direct the model and/or view components to respond
appropriately. Ans. 9. The Examiner finds further that Appellant has made
no citation to any references (patent-related or otherwise) that show that the
term “model-view-controller software architecture” is in any way limited to
the specific meaning alleged by Appellant. Ans. 10. Accordingly, the
Examiner, giving the terms the broadest reasonable interpretation for the
purposes of a prior art rejection, finds that the preference files of Brandt
disclose the “model component” of the claimed invention, the user's level of
operation in the Brandt network disclose the “view component” included in
the claimed network, and the ability to control the hierarchical order of
preferences files in Brandt disclose the “controller component” also
included in the network. Ans. 10 (citing Brandt, Fig. 2; Col. 9, ll. 9-25).
Appellant replies by pointing to recitations in the specification that
Appellant argues do indeed provide support for Appellant’s interpretation
of a “model-view-controller software architecture.” Appellant points to a
number of recitations in which the model component performs the
functionality of the application. For example, the specification discloses
that:
This approach means that an application provider is able to
supply a generic model component encapsulating the
functionality of his application to all PACS network providers,
and need only write a specific glue bridge for each network
provider to accommodate any non-conformant aspects of their
network.

Reply Br. 3 (citing specification, p. 18, ll. 22-26; see also specification, p.
13, ll. 1-5; pp. 10-11, ll. 26-14; pp. 11-12 ll. 15-3; p. 12, ll. 20-23)
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(emphasis added). Similarly, Appellant argues that Appellant’s
characterization of the view and controller components of the claimed
model-view-controller software architecture are likewise supported in the
specification, e.g., “[t]he user is presented with a user interface defined by
the view and controller components. Reply Br. 4 (citing specification p. 12,
ll. 2-3; see also specification p. 19, ll. 10-12; p. 17, ll. 26-29).
Consequently, Appellant argues that Appellant’s interpretation of the
claimed model-view-controller software architecture is fully supported by
the specification. Reply Br. 4.
We are persuaded by Appellant’s reasoning. We find that the
citations to the specification provided supra adequately support Appellant’s
interpretation of the claimed model-view-controller software architecture
and that the Examiner therefore erred by interpreting the language of the
claim in a manner that is inconsistent with the specification. We are
persuaded that, in light of Appellant’s arguments and evidence, the
Examiner has not construed the term broadly or reasonably in light of the
specification. Thus, taking a broad, but reasonable interpretation of the
claim terms, we find that Brandt does not disclose the model-view-
controller-software architecture as recited in claim 1, when interpreted in
light of the specification.

CLAIM 14
Issue
Appellant argues that the Examiner also erred in rejecting claim 14
under 35 U.S.C. § 103(a) as being obvious over Brandt and Cooke. App.
Br. 15. Specifically, Appellant argues that the Examiner erred because
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Brandt neither discloses nor suggests anything to do with software
components containing applications, let alone software components
containing data visualization applications, as set forth in claim 14. App. Br.
16. Appellant contends that the terms “high-level software component” and
“lower-level software component” in claim 14 take their usual conventional
meaning, and that “low level” refers to programming and processing that
deal with the very fundamental inner operation of the computer, whereas
“high level” refers to the operations and interactions that are experienced by
and evident to the user, and therefore, are more specific to an individual
system or application. App. Br. 17. Hence, argues Appellant, the
hierarchical levels described in Brandt have nothing to do with high-level
and lower-level software components, as recited in claim 14. App. Br. 17.
We are thus presented with the issue of whether the Examiner erred
in finding that Brandt discloses or suggests the limitations of claim 14
reciting “providing a first version of the application contained in a high-
level software component; providing a second version of the application
contained in a plurality of lower-level software components; and allowing
the integrator to decide between use of the different versions for integrating
the application into a PACS network.”

Analysis
The Examiner responds by finding that Appellant’s definitions of
high and low level are not present in claim 14 itself and nothing in the
specification is indicated as tying the terms to the definitions provided by
Appellant supra. Ans. 14. Giving the language of the claim the broadest
reasonable interpretation, the Examiner finds that the preference manager of
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Brandt has different high-level and lower-level software components and
that the version of the preference manager will differ based on the various
implementations of these high- and lower-level software components. Ans.
15 (citing Brandt, Fig. 2; Col. 9, Il. 9-14). The Examiner finds, therefore,
that Brandt discloses or suggests the limitation of claim 14 reciting
“providing a first version of the application contained in a high-level
software component; providing a second version of the application
contained in a plurality of lower-level software components; and allowing
the integrator to decide between use of the different versions for integrating
the application into a PACS network.”
We are persuaded by the Examiner’s reasoning and adopt it as our
own. Brandt teaches:
[T]he merging or coalescing of preference files will typically
utilize some hierarchal scheme of precedence where
information from preference files located in higher levels of
the hierarchy take precedence over information from
preference files located in lower levels of the hierarchy (see
FIG. 2). However, it is recognized that under different
circumstances, configuration parameters from lower level
preference files may take precedence over configuration
parameters from higher level preference files.

and that:
Determining priority rules for different configuration
parameters is completely within the purview of the person
implementing this invention and such rules may be
incorporated in either or both of the client 23 and server 22
preference managers. Ultimately, the result for the user is an
automatically configured client workstation 14 configured with
a unique set of configuration.

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Brandt, col. 9, ll. 14-18; 21-28. We find therefore that Brandt, in
combination with Cooke (which teaches a PACS network) discloses the
limitations of claim 14 reciting “providing a first version of the application
contained in a high-level software component; providing a second version
of the application contained in a plurality of lower-level software
components; and allowing the integrator to decide between use of the
different versions for integrating the application into a PACS network.”
We conclude that the Examiner did not err in finding that claim 14 was
unpatentable under U.S.C. § 103(a) as being obvious over the combination
of Brandt and Cooke.
Moreover, since Appellant advances substantially the same
arguments with respect to claims 15-19, which depend on claim 14, we
likewise conclude that the Examiner did not err in finding those claims to
be unpatentable under 35 U.S.C. § 103(a) as being obvious over Brandt and
Cooke.

NEW GROUNDS OF REJECTION
We enter the following new grounds of rejection for independent
claims 1 and 6 under the provisions of 37 C.F.R. § 41.50(b).
Claim 1 and 6 are rejected under 35 U.S.C. § 112 for lack of a written
description. Claim 1 recites:
1. A software product containing a medical-imaging
visualization application, the software product comprising
computer executable instructions embodied on a computer
readable medium that are configured when executed to function
as a model component in a model-view-controller software
architecture, and having an interface having a set of user
interface control parameters and a set of data handling
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parameters, the sets of parameters being chosen to allow
flexible integration of the visualization application into a
proprietary Picture Archiving and Communications Systems
(PACS) network.

App. Br. 20. 35 U.S.C § 112(a) states:

The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention.

35 U.S.C. § 112(a).
Claim 1, like many such computer-implemented inventions is
disclosed and claimed in terms of its functionality. Writing computer
programming code for software to perform specific functions is normally
within the skill of the art once those functions have been adequately
disclosed. See Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1549
(Fed. Cir. 1997). Nevertheless, for computer-implemented inventions, the
determination of the sufficiency of disclosure requires an inquiry into both
the sufficiency of the disclosed hardware as well as the disclosed software,
due to the interrelationship and interdependence of computer hardware and
software. See MPEP § 2161.01. The Federal Circuit has held that the
written description requirement may be satisfied when the particular steps,
i.e., an algorithm, necessary to perform the claimed function, are “described
in the specification.” See, e.g., In re Hayes Microcomputer Prods., Inc.
Patent Litigation, 982 F.2d 1527, 1533–34 (Fed. Cir. 1992). Moreover, the
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Hayes Court acknowledged that the level of detail required for the written
description requirement to be met is case-specific. Id.
We find that Appellant’s specification discloses no such algorithm
necessary to perform the claimed function. Such an algorithm may be in
the form of a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient provides sufficient structure. See
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
Because we find that Appellant’s specification does not disclose any such
algorithm necessary to perform the claimed function, we find that claim 1 is
unpatentable under 35 U.S.C. § 112(a) for lack of a written description.
Claim 6
Independent claim 6 recites:

6. A PACS network including a logic device for
executing instructions of a software component containing a
medical-imaging visualization application, the software
component configured to function as a model component in a
model-view-controller software architecture, and having an
interface having a set of user interface control parameters and a
set of data handling parameters, the sets of parameters being
chosen to allow flexible integration of the visualization
application into the PACS network.

App. Br. 21. 35 U.S.C. § 112(f) recites:
(f) Element in claim for a combination.--An element in a claim
for a combination may be expressed as a means or step for
performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
35 U.S.C. § 112.
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Claim 6 is therefore a means-plus-function claim, reciting “a logic
device for executing instructions of a software component” that functions as
“a model component in a model-view-controller software architecture.”
App. Br. 21. According to the Federal Circuit, in such cases:
involving a special purpose computer-implemented means-plus-
function limitation, “this court has consistently required that the
structure disclosed in the specification be more than simply a
general purpose computer or microprocessor.” Aristocrat
Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333
(Fed. Cir. 2008). We require that the specification “disclose an
algorithm for performing the claimed function.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008);
Aristocrat, 521 F.3d at 1333 (“Thus, in a means-plus-function
claim ‘in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the
disclosed structure is not the general purpose computer, but
rather the special purpose computer programmed to perform the
disclosed algorithm.’” (quoting WMS Gaming, Inc. v. Int'l
Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999))). The
specification can express the algorithm “in any understandable
terms including as a mathematical formula, in prose, or as a
flow chart, or in any other manner that provides sufficient
structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1340 (Fed. Cir. 2008) (internal citation omitted). Simply
disclosing software, however, “without providing some detail
about the means to accomplish the function[,] is not enough.”
Id. at 1340–41 (citation omitted).

Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).
Appellant has claimed a “logic device for executing instructions of a
software component,” which we construe as constituting “a general purpose
computer or microprocessor.” However, Appellant’s specification discloses
no algorithm in the form of a mathematical formula, in prose, as a flow
chart, or in any other manner that provides sufficient structure. We
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consequently find that claim 6 is unpatentable under 35 U.S.C. § 112(f) for
lack of a written description.
Accordingly, we conclude that claims 1 and 6 are unpatentable under
35 U.S.C. § 112. We have entered the new ground only for independent
claims 1and 6 and leave it to the Examiner to evaluate the patentability of
the other claims depending upon claims 1 and 6. We do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 1 and 6, nor the
rejections of dependent claims 2-5 and 7-13. Claim 1 and 6 are newly
rejected.

DECISION
The Examiner’s rejection of claims 1-13 as unpatentable under 35
U.S.C. §103(a) as being obvious over Brandt and Cooke is reversed.
The Examiner’s rejection of claims 14-19 as unpatentable under 35
U.S.C §103(a) as being obvious over Brandt and Cooke is affirmed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for independent claims 1 and 6.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2012).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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