Ex Parte Dye et al

Patent Trial and Appeal Board

Dec 12, 2012

10772518 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/772,518 02/05/2004 Robert E. Dye 5150-38605 5410
7590 12/12/2012
Jeffrey C. Hood
Meyertons, Hood, Kivlin, Kowert & Goetzel PC
P.O. Box 398
Austin, TX 78767
EXAMINER
CHEN, QING
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
12/12/2012 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 ROBERT E. DYE, DARSHAN SHAH, STEVE ROGERS,
GREG RICHARDSON, and DEAN A. LUICK
____________
Appeal 2010-007817
Application 10/772,518
Technology Center 2100
____________

Before JONI Y. CHANG, MICHAEL R. ZECHER, and
RAMA G. ELLURU, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 59-104. App. Br. 2. Claims 1-58 were cancelled. Supp.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a computer accessible memory medium, method,
and system for executing a graphical program on a first computer and
providing a user interface of the graphical program on a second computer.
Abstract. According to Appellants, the user interface of the graphical
program is displayed on the second computer to facilitate interaction
between a user of the second computer and the graphical program executing
on the first computer. Id.
Illustrative Claim
Claims 59, 73, 81, 82, 96 and 104 are independent claims.
Independent claim 59 is illustrative:
59. A computer accessible memory medium that stores
program instructions executable to:
establish a network connection with a client computer
system over a network;
receive user input from the client computer system
indicating a graphical program for execution;
execute the graphical program, wherein the graphical
program includes a block diagram that comprises a plurality of
interconnected function icons representing graphical data flow
of a desired function, and wherein said executing the graphical
program comprises executing the block diagram;
send information describing a user interface of the
graphical program over the network to the client computer
system after establishing the network connection with the client
computer system, wherein the information regarding the user
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interface is useable by the client computer system to display the
user interface on the client computer system; and
send information regarding the block diagram of the
graphical program over the network to the client computer
system after establishing the network connection with the client
computer system, wherein the information regarding the block
diagram is useable by the client computer system to display the
block diagram on the client computer system;
wherein the user interface is operable to facilitate
interaction between a user and the graphical program over the
network.

Prior Art Relied Upon
Kodosky US 4,901,221 Feb. 13, 1990
Huntsman US 5,801,689 Sept. 1, 1998
(filed Jan. 22, 1996)

Rejection on Appeal
Claims 59-104 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Huntsman and Kodosky. Ans. 3-60.
Examiner’s Findings and Conclusions
The Examiner finds that Huntsman’s Microsoft (“MS”)-Windows
program is one type of graphical program, albeit not a “graphical program
[that] includes a block diagram,” as recited in independent claim 59. Ans.
62. However, the Examiner finds that Kodosky teaches the claimed
“graphical program [that] includes a block diagram.” Id. at 62 ; see also id.
at 66 (citing col. 7, ll. 44-59; col. 8, ll. 8-23). Moreover, the Examiner
concludes that an ordinarily skilled artisan would have readily
comprehended that Huntsman’s MS-Windows program is a graphical
program (e.g., icons, panels, and windows) because it can be manipulated by
a user using a graphical user interface (“GUI”) (e.g., buttons and menus).
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Id. at 62-63 (citing col. 8, ll. 20-23). The Examiner also finds that
Huntsman’s MS-Windows programs are graphical programs because they
are pictorial rather than text-based. Id. at 63 (citing col. 1, ll. 26-36).
Further, the Examiner concludes that an ordinarily skilled artisan would
have readily comprehended that Huntsman’s graphics interchange format
(“GIF”) file represents the GUI features and the graphical program features
of the executing GUI-based program (e.g., MS-Windows programs such as
Windows Explorer.) Id. at 64-65 (citing col. 9, ll. 31-50).
In addition, the Examiner finds that Huntsman’s is directed to GUI-
based programs running on a first computer that are remotely controlled by a
second computer by sending a GIF file representation of an executing GUI-
based program. Id. at 71 (see Abstract; col. 8, ll. 20-23; col. 9, ll. 31-50).
As such, the Examiner finds that Huntsman does not teach away from
independent claim 59. Id. Finally, the Examiner concludes that an
ordinarily skilled artisan would have been motivated to modify Huntsman’s
MS-Windows program (represented by the GIF file) with Kodosky’s block
diagram, “so that [a] user can have access to the block diagram information
executing on another computer in a different part of the world (see
Huntsman—Column 1: 10-20).” Id. at 66. Moreover, the Examiner
concludes that an ordinarily skilled artisan would have readily
comprehended that modifying Huntsman’s MS-Windows program to include
Kodosky’s block diagram merely involves replacing one type of graphical
program with another type of graphical program. Id. at 66-67.
Appellants’ Contentions
Appellants contend that the combination of Huntsman and Kodosky
fails to teach the step of “send[ing] information describing a user interface of
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the graphical program,” as recited in independent claim 59. App. Br. 8.
Appellants allege that the Examiner erred in rejecting the aforementioned
claim limitation for numerous reasons including: (1) the Examiner
improperly determined that any program with a GUI that includes “icons,
panels, and windows,” such as Huntsman’s text-based programs (i.e., MS-
Windows program), teaches the claimed “graphical program” (App. Br. 8-9;
see also Reply Br. 4); (2) Huntsman’s GIF file only represents a text-based
GUI program and does not teach the claimed graphical program and
corresponding block diagram (App. Br. 9; see also Reply Br. 6); (3) while
Kodosky discloses graphical programs, it fails to teach sending information
regarding a block diagram of a graphical program over a network to a client
system for display (App. Br. 11); (4) Huntsman teaches away from
independent claim 59 (id. at 10-11); and (5) the disclosure in Huntsman’s
Abstract does not support the Examiner’s finding that GUI-based programs,
such as the MS-windows program, teaches the claimed “graphical program”
(App. Br. 13-14; see also Reply Br. 5).
Appellants contend that the combination of Huntsman and Kodosky
fails to teach the claimed step of “send[ing] information regarding the block
diagram of the graphical program,” as recited in independent claim 59. App.
Br. 14. Appellants allege that the Examiner erred in rejecting the
aforementioned claim limitation for numerous reasons including: (1) while
Huntsman discloses sending information regarding a Windows computer
screen, e.g., GUI, over a network, and Kodosky discloses a block diagram,
neither reference teaches the desirability of sending information regarding a
block diagram over a network (id.); (2) Huntsman discloses sending GUI
information for a conventional text-based program, not information
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describing a user interface of the claimed “graphical program” (id. at 15
(emphasis omitted)(citing col. 9, ll. 31-50)); and (3) the Examiner does not
provide a proper motivation to combine Huntsman and Kodosky, but rather
appears to rely upon impermissible hindsight reconstruction (id.).

II. ISSUE
Has the Examiner erred in determining that the combination of
Huntsman and Kodosky renders independent claim 59 unpatentable? In
particular, the issue turns on whether:
(a) the combination of Huntsman and Kodosky collectively teaches
“send[ing] information describing a user interface of the graphical program
over the network to the client computer system after establishing the
network connection with the client computer system, wherein the
information regarding the user interface is useable by the client computer
system to display the user interface on the client computer system[,]” as
recited in independent claim 59; and
(b) the combination of Huntsman and Kodosky collectively teaches
“send[ing] information regarding the block diagram of the graphical
program over the network to the client computer system after establishing
the network connection with the client computer system, wherein the
information regarding the block diagram is useable by the client computer
system to display the block diagram on the client computer system[,]” as
recited in independent claim 59;
(c) Huntsman teaches away from the claimed invention; and
(d) the Examiner provides an articulated reason with some rational
underpinning to justify the legal conclusion of obviousness.
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III. ANALYSIS
Claim 59
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of independent claim 59, which recites,
inter alia:
[1)] send[ing] information describing a user interface of the
graphical program over the network to the client computer
system after establishing the network connection with the client
computer system, wherein the information regarding the user
interface is useable by the client computer system to display the
user interface on the client computer system; and [2)] send[ing]
information regarding the block diagram of the graphical
program over the network to the client computer system after
establishing the network connection with the client computer
system, wherein the information regarding the block diagram is
useable by the client computer system to display the block
diagram on the client computer system[.]

We begin our analysis by first considering the scope and meaning of
the claim term a “graphical program,” which must be given its broadest
reasonable interpretation consistent with Appellants’ disclosure. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) (stating that during examination “claims must be
interpreted as broadly as their terms reasonably allow”). As support for the
disputed claim term, Appellants direct us to the Specification at page 3, lines
27-29, page 4, lines 1-26, page 20, line 1 through page 21, line 20, and
Figure 8B. App. Br. 3. The relevant portions of Appellants’ Specification
are reproduced below:
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(1) Appellants’ Specification discloses that “[a] graphical program
may be compiled or interpreted by a computer using [] data structures.
Therefore a user can create a computer program solely by using a
graphically based programming environment.” Spec. 3:27-29.
(2) Appellants’ Specification further discloses that “[d]uring
creation of the graphical program, the user selects various functions that
accomplish his desired result and connects the function icons together. For
example, the functions may be connected in a data flow and/or control flow
format.” Spec. 4:17-19.
(3) In addition, Appellants’ Specification discloses that “[a]
graphical program may include a block diagram comprising objects referred
to herein as ‘nodes’ which are connected together to model the program
execution logic, data flow and/or control flow.” Spec. 20:2-4.
Upon reviewing the relevant portions of the Appellants’ Specification,
we do not find any explicit or special definition set forth for the claim term
“graphical program.” Therefore, we resort to its ordinary and customary
meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(en banc) (claim terms are “generally given their ordinary and customary
meaning”). While we were unable to find the exact claim term defined, the
definition of a “computer program” informs our construction of the claim
term a “graphical program.” A general purpose dictionary defines a
“computer program” as a series of instructions to a computer, telling it to do
a particular piece of work. 1 Based on that definition, we conclude that an

1 S.M.H. Dictionary, © A&C Black Publishers (1988,1994, 1998, 2002)
(retrieved from
http://www.xreferplus.com/entry/acbcomp/computer_program) (last visited
Dec. 6, 2012)
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ordinarily skilled artisan would have understood that the claim term a
“graphical program” is a computer program that enables a user to manipulate
graphics or visual representations on a computer in order to instruct the
computer to do a particular piece of work. With this claim construction in
mind, we turn to the merits of the Examiner’s obviousness rejection.
The Examiner takes the position that Huntsman’s GUI-based
program, such as the MS-Windows program, teaches the claimed “graphical
program.” Ans. 62-63 (citing col. 1, ll. 26-36; col. 8, ll. 20-23.) We agree
with the Examiner. That is, consistent with our claim construction, an
ordinarily skilled artisan would have understood that Huntsman’s MS-
Windows program constitutes a computer program that enables a user to
manipulate graphics or visual representations (e.g., icons, panels, or
windows) on a computer using a GUI. See Ans. 63. As such, the textual
portions of Huntsman relied upon by the Examiner properly accounts for the
claim term “graphical program.”
Next, the Examiner indicates that Huntsman discloses a second
controlling computer that is connected to a first computer over the Internet.
Ans. 3 (citing col. 9, ll. 12-14). Huntsman further discloses that a user on
the second computer employs a standard web browser to locate a GIF image
file that includes the screen image of the GUI on the first computer. Id. at 4
and 64-65 (citing col. 9, ll. 31-50). After locating the GIF image file,
Huntsman discloses that the web browser of the second computer requests
and retrieves the GIF image file prior to displaying the GIF image file on the
screen of the second computer. Id.

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Based on those textual portions of Huntsman relied upon by the
Examiner, we agree with the Examiner that an ordinarily skilled artisan
would have readily comprehended that the Huntsman’s GIF image file
represents the graphical features of the GUI-based program (i.e., MS-
Window program) executing on the first computer. See Ans. 64-65. In
other words, an ordinarily skilled artisan would have understood that
Huntsman’s first computer sends a GIF image file (i.e., information
describing the user interface of the MS-Window program executing on the
first computer) over the Internet to the second computer after establishing a
network connection with the second computer. Moreover, an ordinarily
skilled artisan would have recognized using Huntsman’s GIF image file to
display a user interface on the screen of the second computer. Thus, we
agree with the Examiner that Huntsman teaches “send[ing] information
describing a user interface of the graphical program over the network to the
client computer system after establishing the network connection with the
client computer system, wherein the information regarding the user interface
is useable by the client computer system to display the user interface on the
client computer system[,]” as recited in independent claim 59.
Further, the Examiner relies upon Kodosky (Ans. 5-6 and 66), and
Appellants readily admit (Spec. 4:4-6; App. Br. 11), that Kodosky teaches a
graphical program that includes a block diagram. See col. 7, ll. 44-59; col.
8, ll. 8-23. In light of our analysis supra, an ordinarily skilled artisan would
have readily appreciated substituting Kodosky’s graphical program that
includes a block diagram for Huntsman’s MS-Windows program and
corresponding GIF image file, and sending information regarding Kodosky’s
block diagram from Huntsman’s first computer over the Internet to the
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second computer after establishing a network connection with the second
computer. Moreover, an ordinarily skilled artisan would have recognized
using information pertaining to Kodosky’s block diagram to display the
block diagram on the screen of Huntsman’s second computer. Thus, we
agree with the Examiner that the combination of Huntsman and Kodosky
collectively teaches “send[ing] information regarding the block diagram of
the graphical program over the network to the client computer system after
establishing the network connection with the client computer system,
wherein the information regarding the block diagram is useable by the client
computer system to display the block diagram on the client computer
system[,]” as recited in independent claim 59.
Teaching Away
We are not persuaded by Appellants’ argument that Huntsman teaches
away from the claimed invention. App. Br. 11-12. Appellants’ teaching
away argument is predicated on the notion that Huntsman does not send
textual source code across a network for display. Id. at 11. However, as
discussed supra, an ordinarily skilled artisan would have understood that
Huntsman’s first computer sends a GIF image file—otherwise considered
graphical information that describes the user interface of the MS-Windows
program—across the Internet to the second computer for display to a user.
See col. 9, ll. 31-50. Moreover, we note that Appellants have not pointed to
an explicit disclosure within Huntsman that acts to “criticize, discredit, or
otherwise discourage” sending information describing a user interface of a
graphical program, or information regarding a block diagram of a graphical
program, over a network for display to user, as claimed. In re Fulton, 391
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F.3d 1195, 1201 (Fed. Cir. 2004). Therefore, we are not convinced that
Huntsman teaches away from the claimed invention.
Rationale to Combine
We are not persuaded by Appellants’ argument that the Examiner
does not provide a proper motivation to combine Huntsman and Kodosky,
but rather appears to rely upon impermissible hindsight reconstruction. App.
Br. 15. The U.S. Supreme Court has held that “[t]he obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is
whether the Examiner has set forth “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550
U.S. at 418). In addition, the Court instructs that the simple substitution of
one known element for another is likely to be obvious if it does no more than
yield predictable results. See KSR, 550 U.S. at 417.
Upon reviewing the record before us, we find that the Examiner’s
suggestion for modifying Huntsman with Kodosky suffices as an articulated
reason with a rational underpinning to justify the legal conclusion of
obviousness. That is, an ordinarily skilled artisan in the art of graphical
programming, at the time of the claimed invention, would have combined
Huntsman’s second controlling computer connected to a first computer over
the Internet (col. 9, ll. 12-14), with Kodosky’s graphical program that
includes a block diagram (see col. 7, ll. 44-59; col. 8, ll. 8-23), “so that [a]
user can have access to the block diagram information executing on another
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computer in a different part of the world (see Huntsman—Column 1: 10-
20).” Ans. 66. In addition, the mere substitution of Kodosky’s graphical
program that includes a block diagram for Huntsman’s MS-Windows
program and corresponding GIF image file predictably uses prior art
elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. at 417. Moreover, Appellants have not provided any
evidence that such a substitution is beyond the level of an ordinarily skilled
artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007). It follows that the Examiner has not erred in
concluding that the combination of Huntsman and Kodosky renders
independent claim 59 unpatentable.
Claims 60-64, 66, 67, 70-73, 76, 77, 79-89, 91-99, and 101-104
Appellants do not provide separate and distinct arguments for
patentability with respect to independent claim 73, 81, 82, 96, and 104, and
dependent claims 60-64, 66, 67, 70-72, 76, 77, 79, 80, 83-89, 91-95, 97-99,
and 101-103. See App. Br. 8-16; Reply Br. 3-9. Therefore, we select
independent claim 59 as representative of these aforementioned claims. See
37 C.F.R. § 41.37(c)(1)(vii). Consequently, independent claim 73, 81, 82,
96, and 104, and dependent claims 60-64, 66, 67, 70-72, 76, 77, 79, 80, 83-
89, 91-95, 97-99, and 101-103, fall with independent claim 59.
Claims 65 and 74
Appellants present essentially the same argument set forth in response
to the obviousness rejection of independent claim 59 to rebut the
obviousness rejection of dependent claim 65 and 74. See App. Br. 16-17.
We have already addressed this argument in our discussion of independent
claim 59, and we found it unpersuasive. It follows that the Examiner did not
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err in concluding that the combination of Huntsman and Kodosky renders
dependent claims 65 and 74 unpatentable.
Claims 68 and 75
Appellants generally allege that both Kodosky and Huntsman do not
disclose the claim limitation recited in dependent claim 68, and similarly
recited in dependent claim 75. See App. Br. 17-18. Merely pointing out
what a claim recites and nakedly asserting that the cited prior art does not
teach the corresponding claim limitation does not amount to a separate
patentability argument. See 37 C.F.R. § 41.37(c)(vii) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”). It
follows that the Examiner has not erred in concluding that the combination
of Huntsman and Kodosky renders dependent claims 68 and 75
unpatentable.
Claims 69, 78, 90, and 100
Appellants contend that Huntsman fails to disclose “receiv[ing] user
input specifying an edit to the block diagram from the client computer
system over the network; and edit[ing] the block diagram according to the
user input specifying the edit[,]” as recited in dependent claim 69, and
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similarly recited in dependent claims 78, 90, and 100. App. Br. 18. In
particular, Appellants argue that Huntsman—namely at column 9, lines 50-
57, 61-67, and column 10, lines 1-6—discloses a web browser that
determines mouse coordinates with respect to the presented GUI, and sends
those coordinates to the URL-address computer via hypertext-to-GUI-
response means. Id. Appellants allege that Huntsman is silent with respect
to a block diagram, let alone receiving user input over the network editing a
block diagram, and editing the block diagram accordingly. Id. Moreover,
Appellants allege that Kodosky does not remedy the above-noted deficiency
in Huntsman because it only teaches locally editing a block diagram. Id.
We do not agree with Appellants.
Based on the underlying MS-Window program being remotely
controlled (e.g., edited) by the second computer, Huntsman discloses that the
GUI interface of the first computer will typically respond by changing the
screen to another visual state. See Col. 10, ll. 2-6. As such, we agree with
the Examiner that Huntsman teaches that the first computer receives user
input specifying an edit to the MS-Window program from the second
computer over the network. See Ans. 87. In light of our analysis with
respect to independent claim 59, by merely substituting Kodosky’s graphical
program that includes a block diagram for Huntsman’s MS-Windows
program and corresponding GIF image file, an ordinarily skilled artisan
would have appreciated that Huntsman’s first computer receives user input
specifying an edit to Kodosky’s block diagram from Huntsman’s second
computer over the network. Moreover, depending on the user input
specifying the edit received from Huntsman’s second computer, an
ordinarily skilled artisan would have recognized that Huntsman’s first
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computer may edit Kodosky’s block diagram accordingly. Thus, we agree
with the Examiner that the combination of Huntsman and Kodosky
collectively teaches the disputed claim limitation. It follows that the
Examiner has not erred in concluding that the combination of Huntsman and
Kodosky renders dependent claims 69, 78, 90, and 100 unpatentable.

IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 59-104 as being unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 59-104.
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).

AFFIRMED

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