Ex parte Anthias

Board of Patent Appeals and Interferences

Oct 28, 1998

08163416 (B.P.A.I. Oct. 28, 1998)

Application for patent filed December 6, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TAF ANTHIAS
_____________
Appeal No. 97-1227
Application 08/163,4161
______________
ON BRIEF
_______________
Before KRASS, FLEMING and LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's final rejection of claims 1-4. Claims 5-8 have
been cancelled. No claim has been allowed.
References relied on by the Examiner
Eagen et al. (Eagen) 5,461,716 Oct. 24,
1995
Appeal No. 97-1227
Application 08/163,416
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(Effective filing date May 22, 1990)
Appeal No. 97-1227
Application 08/163,416
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The Rejections on Appeal
The rejections set forth in the final Office action
(Paper No. 7) are presumed to have been withdrawn by the
examiner, since they are not reiterated in the examiner’s
answer. The following new grounds of rejection, however, are
set forth in the examiner’s answer (Paper No. 12):
1. Claims 1 and 3 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Eagen.
2. Claims 2 and 4 stand rejected under 35 U.S.C. § 103
as being unpatentable over Eagen.
The Invention
The invention is directed to management or storage of the
window display data in a distributed client/server
presentation system. Claim 1 is the sole independent claim
and is reproduced below:
1. A data processing system comprising:
a display terminal,
a local processor connected to said display terminal and
connected to a local processor memory,
a remote processor connected to said local processor and
connected to a remote processor memory,
said remote processor including means for executing a
plurality of application programs and means for sending window
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display data generated by said application programs to said
local processor,
said local processor including means for receiving said
window display data and drawing respective application
windows, each of said application windows containing at least
one subarea window within its perimeter,
said application programs designating at least one of
said subarea windows as an action field through which a user
may access a respective application program,
means for storing said respective application program
window display data and said corresponding action field in the
local processor memory, and
means for storing remaining display data in the remote
processor memory.
Opinion
We do not sustain the examiner’s rejection of claims 1
and 3 under 35 U.S.C. § 102(e) as being anticipated by Eagen.
We do not sustain the examiner’s rejection of claims 2
and 4 under 35 U.S.C. § 103 as being unpatentable over Eagen.
Our opinion is based only on the arguments raised in the
appellant’s briefs. Arguments not raised by the appellant are
not before us, are not at issue, and are considered as waived.
In the reply brief on page 4, the appellant states:
This division of storage [feature] is
fundamental to applicant’s invention and is clearly
recited in the last two paragraphs of applicant’s
claim 1. (Emphasis in original.)
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Application 08/163,416
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According to the appellant (reply brief at 3), "[e]ach claim
requires storage of the respective application program window
display data and corresponding action field in the local
processor memory, and storage of remaining display data in the
remote processor memory." The appellant states (Reply at 4):
"[I]n Eagen et al., there is no division of storage, as
claimed by the appellant." [Emphasis added].
The appellant’s argument is misplaced. Claim 1 has no
language which actually requires any "division of storage."
Both the host processor and the local processor can store the
entirety of the display data and that would still be within
the defined scope of claim 1. All that is required is that
the local processor memory stores certain display data and the
host processor stores certain remaining display data. Nothing
precludes either processor from storing additional data
including data already stored in the other processor.
Citing column 9, lines 26-29 and column 9, line 68 to
column 10, line 2, the examiner finds that Eagen teaches
transmitting only the desired window panel contents to the
local processor from the host processor (Supp. Answer at 5).
Citing column 8, lines 29-32, the examiner finds that
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remaining display data is stored at the host site until the
user requests display of the information at the remote site
(Supp. Answer at 5). We have reviewed the above-noted
portions of Eagen cited by the examiner and can find no
reasonable basis for the examiner’s findings. In Eagen, the
desired window panel contents is the entirety of the desired
window display and is transmitted from the host to the local
processor. There is no indication that after the transmission
the host stores in the host’s memory any of the display data
which has been transmitted to the local processor.
Furthermore, with regard to Eagen, it appears that the
examiner has regarded the "underlying panel data" replaced by
a desired window display as the remaining data. With regard
to the "remaining display data," the examiner cited (Supp.
Answer at 4) to column 11, lines 7-9 of Eagen, which states:
"Finally, underlying panel data does not need to be
transmitted from the host processor to the DWS when a window
is removed, which also significantly reduces communications
time required to support remote workstations." It is an
incorrect assumption from the quoted portion of Eagen that the
host stores the underlying panel data. A reading from column
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10, line 64, to column 11, line 13, reveals that when removing
a window display the host need not send the underlying panel
data back to the local processor for display because the local
processor did not at first, when originally creating the
window on display, send to the host the underlying panel data
for storage.
For the foregoing reasons, the rejection of claims 1 and
3 as being anticipated by Eagen and claims 2 and 4 as being
unpatentable over Eagen cannot be sustained on the basis of
the examiner’s stated rationale regarding what data is stored
in the host. Additionally, the rejection of claims 2 and 4
cannot be sustained because the examiner has cited no prior
art which reasonably would have suggested to one with ordinary
skill that the appearance of the cursor changes as it enters
and leaves an action field within the display. Eagen’s
generally teaching a "full range" of cursor controls
nonetheless still fail to reasonably suggest changing the
cursor’s appearance as it enters and leaves the action field.
New Grounds of Rejection
under 37 CFR § 1.196(b)
Unpatentable over Eagen
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Claim 1 specifies that the window display data and the
action field are stored in the local processor. But the
action field as defined in claim 1 is a subset of the window
display data. Claim 1 recites: "said application programs
designating at least one of said subarea windows as an action
field through which a user may access a respective application
program." In the context of appellant’s claim 1, to the
extent that it can be understood, then, no window display data
remains. Therefore, the host processor need not store any
display data, to satisfy claim 1. On this rationale, it does
not matter what the host processor stores, because it need not
store anything. And we have already determined above that in
Eagen, the local processor stores the entirety of the window
display which, of course, includes the subarea action field.
Thus, claim 1 is herein rejected as being anticipated by Eagen
under 35 U.S.C. § 102(e).
With respect to claim 3 which depends from claim 1, the
examiner’s finding (Supp. Answer at 4) that Eagen teaches that
user input data is entered in one of the action fields has not
been challenged or refuted. Accordingly, claim 3 is also
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herein rejected as being anticipated by Eagen under 35 U.S.C.
§ 102(e).
Indefiniteness under 35 U.S.C. § 112, Second Paragraph
Claim 1 is vague and indefinite because the reference to
"remaining display data" has no clear meaning. Since the
action field is a subset of the window display, it is
necessarily included in the window display data. In the
context of the claim, no display data remains, once the window
display data and the corresponding action field is stored in
the local processor memory. Thus, the reference to "remaining
display data" is indefinite. Additionally, having all window
display data stored in the local processor memory is not the
subject matter which the appellant regards as his invention as
it is disclosed in the specification. A plain reading of the
specification reveals that the action field display data is
stored in the local processor and the other portions of the
window display is stored in the host processor memory. For
instance, on page 3 of the specification, in lines 24-30, it
is stated:
. . . . and is characterized in that display data
common to both an application window and a
corresponding action field is stored in the memory
associated with the local processor and remaining
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display data is stored in the memory associated with
the remote processor. (Emphasis added.)
Original claim 1 filed with the specification recites language
similar to the foregoing. It should be noted that the term
"common to both" specifies the intersection between the two,
which is the action field and not the entire window display.
For all of the foregoing reasons, claims 1-4 are herein
rejected under 35 U.S.C. § 112, second paragraph, for failing
to particularly define and distinctly claim that subject
matter which the applicant regards as his invention.
Conclusion
The rejection of claims 1 and 3 under 35 U.S.C. § 102(e)
as being anticipated by Eagen is reversed.
The rejection of claims 2 and 4 under 35 U.S.C. § 103 as
being unpatentable over Eagen is reversed.
Pursuant to 37 CFR § 1.196(b), claims 1 and 3 are herein
rejected under 35 U.S.C. § 102(e) as being anticipated by
Eagen.
Pursuant to 37 CFR § 1.196(b), claims 1-4 are herein
rejected under 35 U.S.C. § 112, second paragraph, for failing
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Application 08/163,416
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to particularly point out and distinctly claim that subject
matter which the applicant regards as his invention.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
37 CFR § 1.196(b) also provides that the 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 proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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Application 08/163,416
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED-196(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 97-1227
Application 08/163,416
13
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
sd
J. B. Kraft
INTERNATIONAL BUSINESS MACHINES CORP.
Intellectual Property Law Dept.
11400 Burnet Road, Internal Zip 4054
Austin, TX 78758