Ex Parte Cuomo et al

Board of Patent Appeals and Interferences

Jun 9, 2004

08657510 (B.P.A.I. Jun. 9, 2004)

1The appellants also attempt to appeal the examiner's objection to claim 6.
(Appeal Br. at 2.) Rather than by appeal to the Board of Patent Appeals and
Interferences ("Board"), however, such an issue is to be settled by petition to the
Director of the U.S. Patent and Trademark Office ("USPTO"). See In re Hengehold, 440
F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971).
The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GENNARO A. CUOMO, BINH Q. NGUYEN, and RICHARD J. REDPATH
____________
Appeal No. 2003-0509
Application No. 08/657,510
____________
ON BRIEF
____________
Before RUGGIERO, GROSS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-5, 7, 8, and 10-19. The appellants appeal
therefrom under 35 U.S.C. § 134(a).1 We affirm-in-part.
BACKGROUND
The invention at issue on appeal is a visual programming environment for
developing a computer software application. (Spec. at 32.) According to the appellants,
the "difficulty of use associated with . . . software" has been a drawback for developers
Appeal No. 2003-0509 Page 2
Application No. 08/657,510
of software, (id. at 1), and the use and manipulation of hierarchical data, e.g., object
oriented class libraries, has been of particular concern. They explain that a developer
must know or understand the relationship of components within a hierarchy and the
content of specific components within the hierarchy. While it is simple to present one of
these concepts to a developer in a graphical user interface ("GUI"), they have observed
difficulty presenting both simultaneously. (Id. at 2.)
Accordingly, the appellants' visual programming environment simultaneously
displays a "class window," a "methods window," and a "composition editor window." A
class library with which a developer is working can be displayed in the class window
either as a tree, as a list, or in a format graphically representating the classes. The
developer may select a class for inclusion in the application under development, e.g., a
GUI. The methods window displays the software code for the selected class. Using the
methods window, the developer can modify the existing code or add new code. The
composition editor window displays a graphical view of the application under
development. (Id. at 32.) A further understanding of the invention can be achieved by
reading the following claim.
15. In a data processing system, a system for permitting a user to include
selectable classes from available class packages in an application being
Appeal No. 2003-0509 Page 3
Application No. 08/657,510
2Although the examiner's statement of the rejection over Rodens, Xu, and IBM,
(Examiner's Answer at 7), omits claim 4, the claim depends from claim 2, which stands
rejected under Rodens, Xu, and IBM. Therefore, we treat claim 4 as also rejected
under Rodens, Xu, and IBM.
created, comprising:
first means for displaying classes from a first class package;
second means for displaying code for one of the classes, wherein
said first and second means display the selectable classes and the code
simultaneously;
third means for permitting the user to select a different class
package from among the available class packages for display of its
classes by said first means; and
fourth means for retreiving [sic] the selected class package over a
network if the selected class package is not stored locally.
Claims 1, 3, 7, 8, 10, 11, and 13-17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ira Rodens ("Rodens"), Examining Symantec C++ 7.0, Dr. Dobb's Journal
(Aug. 1995) and U.S. Patent No. 5,715,432 ("Xu"). Claims 2, 4,2 12, 18, and 19 stand
rejected under § 103(a) as obvious over Rodens; Xu; and Example-then-Domain
Approach in an Object-Oriented Application Builder, IBM Technical Disclosure Bulletin
("IBM") vol. 37, no. 02B (Feb. 1994). Claim 5 stands rejected under § 103(a) as
obvious over Rodens; Xu; and U.S. Patent No. 5,187,788 ("Marmelstein").
Appeal No. 2003-0509 Page 4
Application No. 08/657,510
OPINION
Our opinion addresses the claims in the following order:
• claims 1-5, 7, 8, and 10-14.
• claims 15-19.
A. CLAIMS 1-5, 7, 8, AND 10-14
Rather than reiterate the positions of the examiner or the appellants in toto, we
focus on a point of contention therebetween. The examiner asserts, "Rodens
teaches . . . [a] second subprocess for simultaneously displaying (left pane) a
representation of the application under development (display classes in the application,
page 1, last line - page 2, line 1)," (Examiner's Answer at 4), but admits "Rodens . . .
does not teach that . . . the representation of the application under development in the
second subprocess is a graphical representation. . . ." (Id. at 4-5.) He further asserts,
"Xu teaches visual application development environment (AppBuilder 214 XuView class
library 220 in particular), wherein . . . the representation of the application under
development (general purpose applications/network analysis and modeling applications,
col. 1, lines 59-62, col. 4, line 36-40) is a graphical representation (graphical
representation, col. 7, lines 17-18). . . ." (Id. at 5.) The appellants argue, "[n]etworks
have been graphically modeled for years; networks are by no means the same things as
applications." (Appeal Br. at 7.)
Appeal No. 2003-0509 Page 5
Application No. 08/657,510
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the independent claims at issue to determine their scope. Second,
we determine whether the construed claims would have been obvious.
1. Claim Construction
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000).
Here, claim 1 recites in pertinent part the following limitations:
first subprocesses for displaying a hierarchy of selectable classes in a
class tree, the selectable classes being selectable for inclusion in the
application under development from the class tree; second subprocesses
for simultaneously displaying a graphical representation of the application
under development; and third subprocesses for simultaneously displaying
code for one of the selectable classes.
Claim 7 includes similar limitations. Giving claims 1 and 7 their broadest, reasonable
construction, the limitations require simultaneously displaying a graphical representation
of an application under development, a hierarchy of selectable classes, and code for
one of the selectable classes.

Appeal No. 2003-0509 Page 6
Application No. 08/657,510
2. Obviousness Determination
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. "In rejecting claims under 35
U.S.C. Section 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992)). "'A prima facie case of obviousness is established when the teachings from the
prior art itself would . . . have suggested the claimed subject matter to a person of
ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).
Here, Rodens describes "[t]he Symantec C++ 7.0 Integrated Development and
Debugging Environment (IDDE). . . ." P. 1. "Two of the most innovative features of the
development environment are the hierarchy and class editors, which work together to
provide a smooth visual method for program design and coding." Id. "The hierarchy
editor can be used to build a complete class hierarchy for the application; the class
editor can then fill in the class members and provide the required program
functionality." Id. The class "editor is a three-paned window. . . ." Id. "The left pane
Appeal No. 2003-0509 Page 7
Application No. 08/657,510
contains a list of classes in the application; the right pane shows the members, data,
and typedefs for the class; and the bottom pane shows the source." Id. at 1-2.
As aforementioned, the examiner equates the editor's left pane to the claimed
display of a graphical representation of an application under development. We are
unpersuaded that the left pane, however, displays an application under development.
Instead, the left pane shows "a list of classes in the application. . . ." Rodens, pp. 1-2.

For its part, Xu discloses "a method and system for developing computerized
network analysis and modeling applications." Col. 1, ll. 46-48. Although the secondary
reference displays a graphical representation, we are unpersuaded that it represents an
application under development, e.g., a network analysis and modeling applications
under development. To the contrary, one of the passages cited by the examiner, supra,
explains that Xu "display[s] a graphical representation of at least a portion of the
network to be modeled." Id. at ll. 63-64. We agree with the appellants that displaying a
network being modeled, "does not teach, suggest or disclose displaying a graphical
representation of an application being developed." (Appeal Br. at 7.)
The examiner does not allege, let alone show, that the addition of IBM or
Marmelstein cures the aforementioned deficiency of Rodens and Xu. Absent a teaching
Appeal No. 2003-0509 Page 8
Application No. 08/657,510
or suggestion of simultaneously displaying a graphical representation of an application
under development, a hierarchy of selectable classes, and code for one of the
selectable classes, we are unpersuaded of a prima facie case of obviousness.
Therefore, we reverse the rejection of claim 1; of claims 2-5, which depend therefrom; of
claim 7; and of claims 8 and 10-14, which depend therefrom.
B. CLAIMS 15-19
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained." In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing 37
C.F.R. §1.192(c)(7) (2001)). "If the brief fails to meet either requirement, the Board is
free to select a single claim from each group of claims subject to a common ground of
rejection as representative of all claims in that group and to decide the appeal of that
rejection based solely on the selected representative claim." Id., 63 USPQ2d at 1465.
Appeal No. 2003-0509 Page 9
Application No. 08/657,510
Here, the appellants stipulate, "[d]ependent Claims 16, 17 . . . stand or fall with
Claim 15." (Appeal Br. at 4.) With this stipulation in mind, we focus on the following
points of contention between the examiner and the appellants:
- displaying class package
- displaying code for selected class
- retrieving class package.
1. Displaying Class Package
The examiner finds, "a class package as disclosed refers to a class, a part, a
component, or a set of related classes." (Examiner's Answer at 3-4.) The appellants
argue, " the cited art does not teach displaying classes from a class package. . . ."
(Appeal Br. at 10.)
a. Claim Construction
"Claims are not interpreted in a vacuum, but are part of and are read in light of
the specification." Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1
USPQ2d 1563, 1566 (Fed. Cir. 1987) (citing Hybritech Inc. v. Monoclonal Anti-bodies,
Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed. Cir. 1986); In re Mattison, 509
F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975)). Here, claim 15 recites in pertinent
part the following limitations: "displaying classes from a first class package. . . ."
According to the appellants' specification, "the term 'class package' is used to
describe a class library, a class, a part, a component, or a set of classes that are
Appeal No. 2003-0509 Page 10
Application No. 08/657,510
presented together for selection by a developer for inclusion in the application being
created." (Spec. at 19 (emphases added).) Reading the limitation in light of the
specification, and giving the representative claim its broadest, reasonable construction,
the limitations require displaying members of a class.
b. Obviousness Determination
The question of obviousness is "based on underlying factual determinations
including . . . what th[e] prior art teaches explicitly and inherently. . . ." In re Zurko, 258
F.3d 1379, 1386, 59 USPQ2d 1693, 1697(Fed. Cir. 2001) (citing Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); In re Dembiczak, 175 F.3d 994,
998, 50 USPQ 1614, 1616 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed. Cir. 1995)). Here, because its "right pane shows the members . . . for
the class," p. 2, we find that Rodens' class editor displays members of a class.
2. Displaying Code for Selected Class
The appellants argue, "Rodens does not teach displaying classes that are
selectable. . . ." (Appeal Br. at 10.)
Appeal No. 2003-0509 Page 11
Application No. 08/657,510
a. Claim Construction
Appeal No. 2003-0509 Page 12
Application No. 08/657,510
Claim 15 recites in pertinent part the following limitations: "second means for
displaying code for one of the classes, wherein said first and second means display the
selectable classes and the code simultaneously. . . ." Giving the representative claim its
broadest, reasonable construction, the limitations require displaying code for a selected
member of a class.
b. Obviousness Determination
In Rodens' class editor, "[w]hen you select a class in the left pane, the members
of the class appear in the right pane." P. 2 Because "clicking on a member name
brings up the member source code, which can then be edited directly in its pane," id.,
we find that a developer can select a member to display the code associated therewith.
3. Retrieving Class Package
The examiner finds, "Rodens teaches building an application over a network
(NetBuild part of Symantec C++ 7.0, allows distributed builds over networks, page 2, 5th
full para.)" (Examiner's Answer at 7.) The appellants "are unable to find a passage . . .
which teaches that classes (much less class packages) are retrieved from over a
network. . . ." (Appeal Br. at 10-11.)
a. Claim Construction
Appeal No. 2003-0509 Page 13
Application No. 08/657,510
Claim 15 recites in pertinent part the following limitations: "retreiving [sic] the
selected class package over a network if the selected class package is not stored
locally." Giving the representative claim its broadest, reasonable construction, the
limitations require retreiving a class via a network.
b. Obviousness Determination
Rodens includes a "feature that allows you to distribute build tasks over a [local
area network], p. 1; it "allows distributed builds over networks. P. 2 The reference
explains the desirability of distributing builds over a network, viz., it "lets you off-load
parts of the build onto cooperating machines, thus speeding up builds on large
development projects." P. 2. When one such cooperating machine needed access to a
class that had been off-loaded to another cooperating machine (to speed up a build), it
would have been obvious to enable the former to retrieve the class from the later via the
network. Because Rodens would have suggested retreiving a class via a network, the
teachings of Wu in this regard are cumulative. Therefore, we affirm the rejection of
claim 15 and of claims 16 and 17, which fall therewith.
Rather than separately arguing the patentability of claims 18 and 19, the
appellants rely on the aforementioned arguments for claim 15. (Appeal Br. at 11.)
Appeal No. 2003-0509 Page 14
Application No. 08/657,510
Having been unpersuaded by those arguments, we affirm the rejection of claims 18 and
19.
Besides presenting the aforementioned arguments, the appellants "request that
the Board of Appeals to [sic] find that the treatement [sic] of the Appeal and the Appeal
Brief of December 11, 2000, was improper and erroneous, and requests that the
examining branch be directed to properly handle these items in accordance with the
MPEP." (Appeal Br. at 12.) They also argue that "the failure by the PTO to withdraw
the finality of the Office Action mailed on March 30,1998, was arbitrary and capricious,
and respectfully requests that the Board of Appeals directs the examining branch to
follow the requirements of the MPEP." (Id. at 13.) Rather than by appeal to the Board,
however, such an issue is to be settled by petition to the Director of the USPTO. See
Hengehold, 440 F.2d at 1403, 169 USPQ at 479.
CONCLUSION
In summary, the rejections of claims 1-5, 7, 8, and 10-14 under § 103(a) are
reversed. The rejections of claims 15-19, however, are affirmed. "Any arguments or
authorities not included in the brief will be refused consideration by the Board of Patent
Appeals and Interferences. . . ." 37 C.F.R. § 1.192(a). Accordingly, our affirmance is
based only on the arguments made in the brief. Arguments or authorities omitted
Appeal No. 2003-0509 Page 15
Application No. 08/657,510
therefrom are neither before us nor at issue but are considered waived. Cf. In re Watts,
354 F.3d 1362, 1368, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the
applicant challenging a decision not be permitted to raise arguments on appeal that
were not presented to the Board.") No time for taking any action connected with this
appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal No. 2003-0509 Page 16
Application No. 08/657,510
AFFIRMED-IN-PART
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2003-0509 Page 17
Application No. 08/657,510
IBM CORPORATION
3039 CORNWALLIS RD.
DEPT. T81 / B503, PO BOX 12195
RESEARCH TRIANGLE PARK, NC 27709