Ex Parte Bader et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10289868 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LANCE D. BADER and MARK R. WAINWRIGHT
__________

Appeal 2008-004339
Application 10/289,868
Technology Center 2100
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Decided:1 June 26, 2009
__________

Before JAMES D. THOMAS, JOHN C. MARTIN, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/289,868

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

Invention
The invention relates to an adapter for allowing a source application
running on one computer system to interact with different target applications
running on the same or other computer systems (Spec. 1, ll. 8-10).
Independent claim 1 is illustrative:
1. A dynamic interface adapter for enabling a source
application to interact with a target application without changing the
programming code in either application, said adapter comprising:

an application profile processor for extracting from a profile a
description of parameter values required for formatting a request from
the source application to the target application; and

a parameter value marshaling processor for defining the sources
from which the parameter values are to be extracted.

References
The Examiner relies upon the following references as evidence in
support of the rejections:
Lippert US 6,356,906 B1 Mar. 12, 2002

Apple Computer, Inc., Inside Macintosh, Interapplication
Communication, (June 1993) (“AppleScript”).
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The Rejections
1. The Examiner rejects claims 1-5 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. The Examiner rejects claims 1, 2, 6, 7, 10, and 11 under 35 U.S.C.
§ 102(b) as being anticipated by AppleScript.
3. The Examiner rejects claims 3-5 under 35 U.S.C. § 103(a) as being
unpatentable over AppleScript and Lippert.
4. The Examiner rejects claims 8, 9, 12, and 13 under 35 U.S.C. § 103(a)
as being unpatentable over AppleScript.

ISSUE #1
Appellants argue that claims 1-4 recite statutory subject matter
because “the claimed invention [recited in claims 1-4], as a whole, is
directed to a machine” (App. Br. 6) and that claim 5 is statutory under 35
U.S.C. § 101 because “a credible utility has been asserted” (id.).
Did Appellants show that the Examiner erred in finding that claims 1-
5 are directed to non-statutory subject matter?
ISSUE #2
Appellants argue that “AppleScript fails to identically disclose all of
the features” (Reply Br. 9) of the claimed invention.
Did Appellants show that the Examiner erred in finding that
AppleScript discloses all of the features of the claimed invention?

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Application 10/289,868

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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. AppleScript discloses that “[a] script is any collection of data that,
when executed by the appropriate program, causes a corresponding
action or series of actions” (page 7-4).
2. AppleScript discloses that “[s]cripting components control the
behavior of scriptable applications by means of Apple events” (page
7-8).
3. AppleScript discloses that “when the AppleScript component
executes the AppleScript script . . . it sends the Apple events . . . to
trigger the actions described by the script” (page 7-8).
4. AppleScript discloses that “a client application is any application that
uses Apple events to request a service or information” (page 7-10).
5. AppleScript discloses that “the AppleScript component first performs
the action . . . [by sending] a Get Data event to the SurfWriter
application” (page 7-10). The SurfWriter “returns the data to the
AppleScript component . . . [t]hen . . . the AppleScript component
sends a Set Data event to the SurfCharter application” (id.).
6. Appellants define the term “profile” to refer to “a set of
characteristics or qualities that identify a type or category of person
or thing” (Reply Br. 9), citing Webster’s College Dictionary, 1995,
pg. 1077.

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PRINCIPLES OF LAW
Statutory Subject Matter
While “[p]atentable subject matter under the 1952 Act is extremely
broad . . . the Supreme Court has made clear that [§ 101 is not without]
limits or that it embraces every discovery.” In re Comiskey, 554 F.3d 967,
977 (Fed. Cir. 2009) (citations and quotations omitted). To encompass
patentable subject matter, first a patent “claim must be within at least one
category [process, machine, manufacture, or composition of matter] . . . . If
a claim covers material not found in any of the four statutory categories, that
claim falls outside the plainly expressed scope of § 101 even if the subject
matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354
(Fed. Cir. 2007).

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“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 California, 814 F.2d
628, 631 (Fed. Cir. 1987).

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ANALYSIS
Issue 1
Claim 1 recites a “dynamic interface adapter” comprising two
processor elements (App. Br. 21) that include functional components. As
such, claim 1 recites an apparatus (i.e., an “adapter” comprising processors)
that constitutes a system or a machine and therefore falls within one of the
statutory subject matter classes of 35 U.S.C. § 101. We thus find that claim
1 and its dependent claims 2-4 are directed to patentable subject matter
under § 101.
Claim 5, however, recites a computer application profile comprising
definitions, commands, and operations “to be performed” that merely
constitute software code. Appellants have failed to demonstrate, nor do we
find, that software code falls within one of the statutory subject matter
classes of 35 U.S.C. § 101 (i.e., process, machine, manufacture, or
composition of matter). Nuijten, 500 F.3d at 1354. As such, we find that
claim 5 is directed to non-statutory subject matter.
We therefore conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claims 1-4 as being
unpatentable under 35 U.S.C. § 101 but have not met their burden of
showing that the Examiner erred in rejecting claim 5 as being unpatentable
under 35 U.S.C. § 101.
Issue 2
Claims 1, 5, 6, 9, 10, and 13 recite a profile that includes a description
or specification of parameter values. The Examiner finds that “[t]he script
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[as disclosed by AppleScript] is the profile [as recited in claims 1, 5, 6, 9,
10, and 13]” because “[t]he script has the elements the profile has” (Ans.
21). We do not readily identify any “elements” of a script that the profile
has, nor does the Examiner specifically identify the alleged common
elements or provide a definition for either term. In the absence of a
definition, we adopt a broad but reasonable interpretation of the term script
to include “any collection of data that, when executed by the appropriate
program, causes a corresponding action or series of actions” (FF 1).
Appellants provide a broad but reasonable definition of the term “profile,”
which the Examiner does not refute, to include a set of characteristics or
qualities to identify a type or category of a thing (FF 6).
Under this broad but reasonable interpretation, a script includes data
that is executed to cause a corresponding action but does not include a set of
characteristics or qualities that identifies a type/category of a thing (i.e., a
profile). Similarly, the Examiner has not demonstrated that a profile (i.e., a
set of characteristics or qualities) is equivalent to or suggestive of “data that
is executed to cause a corresponding action” (i.e., a script) or that the set of
characteristics or qualities of a profile can be executed to cause a
corresponding action (i.e., a “script”). Indeed, it does not appear that the
descriptive data of a profile is “executable” at all. Thus, we disagree with
the Examiner that “[t]he script [disclosed in AppleScript] is the profile [as
claimed].”
In addition, the Examiner finds that “the claimed source application is
the reference’s server application (SurfWriter), the claimed target
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application is the reference’s server application (SurfCharter), [and] the
claimed request is the reference’s Apple events” (Ans. 21). Claim 1 recites
“a request from the source application to the target application” (Claims
Appx. 21), thus requiring that an Apple Event, which the Examiner equates
to the “request” of claim 1, be sent from the SurfWriter application, which
the Examiner equates with the source application, to the the SurfCharter
application, which the Examiner equates with the target application.
However, as set forth above, AppleScript merely discloses an Apple event
being sent from the SurfWriter application to an AppleScript component,
and not to the SurfCharter Application (FF 5). Thus, we agree with
Appellants that “no ‘request,’ . . . is sent from the SurfWriter (i.e., the
alleged source application) to the SurfCharter (i.e., the alleged target
application)” (Reply Br. 9), as recited in claim 1.
Appellants further argue that “the Examiner performed this additional
(yet required) analysis only with claim 1” (Reply Br. 12) but failed to
correlate elements in AppleScript “[w]ith regard to the remainder of the
claims” (Reply Br. 12), including independent claim 5. We agree. Claim 5
recites a connection element, which the Examiner has not equated to a
specific component disclosed in AppleScript. Even assuming that the
recited “connection element” recites features similar to the “profile” recited
in claims 1, 6, 9, 10, or 13 and is thus equivalent to the “profile,” we
nevertheless agree with Appellants that “these terms . . . [script and profile]
describe very different items” (Reply Br. 9) for reasons set forth above.
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The Examiner does not find that Lippert discloses or suggests the
features of the independent claims. Thus, the Examiner has not
demonstrated, nor do we find, that Lippert makes up for the deficits of
AppleScript. Accordingly, we conclude that Appellants have met their
burden of showing that the Examiner erred in rejecting independent claims
1, 5, 6, 9, 10, and 13, and dependent claims 2-4, 7, 8, 11, and 12, which
depend therefrom.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate that the Examiner erred in finding that
claim 5 is directed to non-statutory subject matter but that Appellants have
demonstrated that the Examiner erred in finding that claims 1-4 are directed
to non-statutory subject matter and finding that AppleScript discloses or
suggests all of the features of the claimed invention.
DECISION
We affirm the Examiner’s decision rejecting claim 5 under 35 U.S.C.
§ 101. We reverse the Examiner’s decisions rejecting: claims 1-4 under
35 U.S.C. § 101; claims 1, 2, 6, 7, 10, and 11 under 35 U.S.C. § 102; and
claims 3-5, 8, 9, 12, and 13 under 35 U.S.C. § 103.

Appeal 2008-004339
Application 10/289,868

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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