Ex Parte Bedell et al

Board of Patent Appeals and Interferences

Jan 15, 2009

09883508 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY A. BEDELL, MICHAEL CODINI, ARTURO GAY,
WILLIAM HURWOOD, BENJAMIN Z. LI, FABRICE MARTIN,
RAMKUMAR RAMACHANDRAN, STEPHEN S. TRUNDLE,
ABHIMANYU WARIKOO, and KYLE N. YOST
__________

Appeal 2008-3433
Application 09/883,508
Technology Center 2100
__________

Decided: January 15, 2009
__________

Before JAMES D. THOMAS, JEAN R. HOMERE, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b). An Oral Hearing was held on November 18, 2008. We affirm-in-
part.

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The Invention
The disclosed invention relates generally to manipulating program
objects (Spec. 1). Specifically, a system checks dependencies between
objects as they are moved from one stage to another (Spec. 2).
Independent claim 1 is illustrative:
1. A computer implemented method for managing
groups of objects for use in a reporting system project
comprising the steps of:

receiving a command to perform a selected
function on a selected object;
automatically identifying dependent objects
referred to by the selected object;
determining using a computer processor an
appropriate manner of executing the selected function on
the selected object;
determining using a computer processor
appropriate functions to be performed on the dependent
objects;
automatically causing the appropriate functions to
be performed on the dependent objects; and
automatically causing the execution of the selected
function on the selected object in the appropriate manner.

The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Mariani US 5,854,932 Dec. 29, 1998

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Almond US 6,112,024 Aug. 29, 2000
Fontana US 6,167,563 Dec. 26, 2000

The Rejections
1. The Examiner rejects claims 1, 3-5, 10-12, and 16-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Mariani and Fontana.
2. The Examiner rejects claims 2, 6-9, and 13-15 under 35 U.S.C.
§ 103(a) as being unpatentable over Mariani, Fontana, and Almond.

ISSUES
Issue #1(claims 1, 3, 18)
The Examiner finds that Mariani discloses that “the recompiling
function [i.e., the “selected function”] determines which files to recompile”
(Ans. 15) and that “[b]y determining the changed files and its dependent
files, the recompile function determines a particular manner of rebuilding of
the executable program” (Ans. 16).
Appellants assert that the Examiner “continues to rely on the simple
determination of whether or not to recompile a file” and that “[a]voiding
recompiling is . . . not ‘an appropriate manner of executing the selected
function on the selected object’” (Reply Br. 5).
Did Appellants demonstrate that the Examiner erred in finding that
Mariani discloses or suggests determining a manner of executing a selected
function on a selected object?

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Issue #2
Appellants assert that “updating dependent components in response to
a user prompt does not satisfy the ‘automatically identifying dependent
objects,’ ‘automatically causing the appropriate functions to be performed
on the dependent objects’ and ‘automatically causing the execution of the
selected function on the selected object in the appropriate manner’
recitations” (Reply Br. 6-7).
The Examiner finds that “[a]utomatically performing a function is
interpreted as performing the function with a machine” (Ans. 18) and that
“Fontana’s invention . . . [is] automatically performed by the machine that is
executing the program code” (id.).
Did Appellants demonstrate that the Examiner erred in finding that
Fontana discloses automatically identifying dependent objects, causing
functions to be performed, and executing a selected function on a selected
object in an appropriate manner?
Issue #3
Appellants assert that “the Office has failed to provide any proper
motivation for modifying Mariani [with Fontana], so the proposed
modification fails” (App. Br. 12).
Did Appellants demonstrate that the Examiner erred in combining
Mariani with Fontana?

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Issue #4
Appellants assert that “[t]here is no disclosure of ‘managing objects
with and between projects of a reporting system’ in Mariani” (Reply Br. 7).
The Examiner finds that “the recitation ‘managing objects with and
between projects of a reporting system,’ has not been given patentable
weight because the recitation occurs in the preamble” (Ans. 19).
Did Appellants demonstrate that the Examiner erred in determining
that the recitation of “a reporting system” is given no patentable weight?

Issue #5
Appellants assert that “Mariani . . . does not disclose a method or
system wherein . . . each object has a unique identifier and a version
identifier” (Reply Br. 8) or “manipulating objects between projects” (id.).
The Examiner finds that Mariani discloses that “each object has a
unique identifier [search for a name in the scope of the class; col. 13, lines
25-50] and a version identifier [date and time of the last change made to the
header files; col. 10, lines 8-45]” (App. Br. 7). The Examiner further finds
that Mariani discloses “manipulating objects within and between projects
[For use in creating and editing the source code files 60 and header files 62
of the user’s project . . .] (App. Br. 7).

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Did Appellants demonstrate that the Examiner erred in finding that the
Mariani reference discloses that each object has a unique identifier and a
version identifier and manipulating objects between projects?

Issue #6
Appellants assert that Mariani fails to disclose “a system ‘wherein the
operational module interfaces with projects that reside in various
environments,’” (Reply Br. 8).
The Examiner finds that “Mariani discloses a development
environment that provides access to third party code libraries [i.e., Microsoft
Foundation Classes, or Object Linking and Embedding; col. 8, lines 22-43]”
(Ans. 20).
Did Appellants demonstrate that the Examiner erred in finding that the
Mariani reference discloses projects that reside in various environments?

Issue #7
The Examiner finds that Mariani discloses that “the minimal rebuild
system compiles the source file . . . [and] makes a copy of the current object
file” (Ans. 21).
Appellants assert that a “copy made as part of a system process to
recompile cannot be logically interpreted as disclosing a copy made in

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response to ‘receiving a command to copy a selected object from a source
project to a destination project.’” (Reply Br. 9).
Did Appellants demonstrate that the Examiner erred in finding that the
Mariani reference discloses receiving a command to copy a selected object
from a source project to a destination project?

Issue #8
Examiner finds that Almond discloses “an object contained in
metadata [maps an object into a meta model which facilitates version
control; col. 3, lines 1-54 and col. 6, lines 40-67] of an on-line analytical
processing program [View reports--quickly view project activity status; col.
39, lines 15-39].
Appellants assert that “the terms meta model and metadata are not the
same” (Reply Br. 9).
Did Appellants demonstrate that the Examiner erred in determining
that the cited references disclose or suggest metadata?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Mariani discloses that “the minimal rebuild system 100 determines
when recompiling can be avoided by determining how the object

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code files 82 are dependent on the header files 62 (‘dependency
analysis’ 112)” (col. 9, ll. 5-8).
2. Mariani discloses that “the minimal rebuild system 102 recompiles
all object code files 82 that are dependent on header files 62 detected
as having been modified” (col. 10, ll. 39-41) and “combines the
change and dependency information . . . to determine which of the
object code files 82 are to be recompiled (and conversely, which
recompilations to omit) when the user’s project is rebuilt” (col. 12, ll.
1-6).
3. Mariani discloses that “the user can directly modify or add C++
statements to the source code files 60 and header files 62” (col. 8, ll.
11-13).
4. Mariani discloses that “the dependency types of an object code file
on a class that are tracked by the minimal rebuild system 100 include
dependencies on a search for a name in the scope of the class” (col.
13, ll. 25-28).
5. Mariani discloses “various tools 54 for creating, editing, and
compiling source code files 60 and header files 62 for a user’s
programming project which is to be implemented in an executable
program 64” (col. 7, ll. 62-65).

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6. Mariani discloses that a “change detection in the class wizard 110
involves simply notifying the minimal rebuild engine 102 of the
particular change that the user selects to have made” (col. 10, ll. 2-5).
7. Mariani discloses that “for the header files 62 that are modified
outside the class wizard, the minimal rebuild system 100 avoids no
more recompiles than the prior make utilities” (col. 10, ll. 42-45).
8. Mariani discloses that “the minimal rebuild engine 102 is informed
of changes to class declarations in the header files 62 by the compiler
80” (col. 10, ll. 46-48).
9. Mariani discloses that the “compiler driver 104 controls compiling of
the object code files 82 by the compiler 80” (col. 12, ll. 18-19) and
“[f]or object code files 82 that the minimal rebuild engine 102
determines recompilation can be avoided, the compiler driver 104
causes updating of such object code files’ browser and debugger
information” (col. 12, ll. 23-26).
10. Mariani discloses “[i]f the changes made to a header file intersect the
dependencies of an object code file on the header file (meaning that
the change could affect the object code file), then the object code file
is recompiled. If there is no intersection of the changes with the
object code file’s dependencies on its header files (indicating the
change cannot affect the object code file), then the object code file is
not recompiled” (col. 12, ll. 9-15).

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11. Fontana discloses “dependency objects are obtained from the
repository . . . [and] are then analyzed to identify dependent
components” (col. 7, ll. 24-26).
12. Fontana discloses that “the dependent components are accordingly
updated (block 76)” (col. 7, ll. 52-53).
13. Fontana discloses “the components built in block 74 and the external
components are put back into the repository (block 78)” (col. 7, ll.
55-56).
14. Almond discloses a “meta model 300” that “allows the system to
map objects to representations other than that provided in relational
databases” and “serves as a container which facilitates version
control” (col. 6, ll. 42-46).

PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.

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Teleflex, Inc., 127 S. Ct. at 1742 (2007). In KSR, the Supreme Court
emphasized "the need for caution in granting a patent based on the
combination of elements found in the prior art," Id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. KSR,
127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The
operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. 1727,
1739 (2007)). The Federal Circuit relied in part on the fact that Leapfrog
had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art." Id. at 1162 (citing
KSR, 127 S. Ct. at 1740-41).

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ANALYSIS
Issue #1
Did Appellants demonstrate that the Examiner erred in finding that
Mariani discloses or suggests determining a manner of executing a selected
function on a selected object?
Mariani discloses implementing a programming project in an
executable program (FF 5). Using a broad but reasonable interpretation of
“determining a manner of executing” to include determining a possible,
customary, or preferred way of doing something (i.e., executing the
executable program), we agree with the Examiner that Mariani discloses
determining a manner of executing the program or function. For example,
one “manner” (i.e., way of accomplishing a task) in which Mariani executes
the program or function includes executing the program while “avoiding
recompiling the source code files 60 . . . and the header files 62 . . . into the
object code files 82 . . . where any changes to the header files 62 do not
affect the resulting object code files 82” (col. 9, ll. 1-5). In another
“manner” of executing a program, Mariani discloses using “header files 62
that are modified outside the class wizard” (col. 10, ll. 42-43) such that “the
minimal rebuild system 100 avoids no more recompiles than the prior make
utilities” (col. 10, ll. 43-44). In either case, Mariani discloses determining an
“appropriate manner” of executing the function.

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For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-18 with
respect to issue #1.
Issue #2
Did Appellants demonstrate that the Examiner erred in finding that
Fontana discloses automatically identifying dependent objects, causing
functions to be performed, and executing a selected function on a selected
object in an appropriate manner?
Fontana discloses obtaining dependency objects, analyzing the objects
to identify dependent components, updating dependent components, building
components, and putting external components back into a repository (FF 11-
13). We agree with the Examiner that Fontana discloses identifying
dependent objects (e.g., identifying dependent components), performing
functions on the dependent objects (e.g., updating dependent components),
and causing the execution of a function on an object in an appropriate
manner. Appellants argue that “updating dependent components in response
to a user prompt does not satisfy the ‘automatically identifying dependent
objects,’ ‘automatically causing the appropriate functions to be performed
on the dependent objects’ and ‘automatically causing the execution of the
selected function on the selected object in the appropriate manner’
recitations” (Reply Br. 6-7) but do not cite specific structural or functional

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differences between Fontana’s disclosure and the disputed features of claim
1.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-18 with
respect to issue #2.
Issue #3
Did Appellants demonstrate that the Examiner erred in combining
Mariani with Fontana?
Mariani discloses known elements of identifying modified files that
are dependent on object code files and compiling the object code files in a
project (FF 2). Fontana discloses identifying dependency objects and
components (FF 11) and updating or modifying the components (FF 12).
Hence, both Mariani and Fontana disclose known functions of identifying
components or objects and their dependencies and modifying or updating the
components or objects to achieve the expected results of modifying or
updating objects or components and/or their dependent objects or
components. Appellants have not demonstrated that the combination of
Mariani and Fontana would have resulted in anything more than what one of
ordinary skill in the art would have expected – namely, performing functions
(e.g., updating, modifying or compiling) on objects or components.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable

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results. . . . [W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.

KSR at 1395-66 (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).

For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 1-18 with
respect to issue #3.

Issue #4
Did Appellants demonstrate that the Examiner erred in determining
that the recitation of “a reporting system” is given no patentable weight?
We consider the Examiner’s rejection of claims 10, 12, 16, and 17 as
being unpatentable over Mariani and Fontana. Since Appellants’ arguments
have treated these claims as a single group which stand or fall together, we
select independent claim 10 as the representative claim for this group. See
37 C.F.R. § 41.37(c)(1)(vii).
“The preamble of a claim does not limit the scope of the claim when
it merely states a purpose or intended use of the invention.” In re Paulsen,
30 F.3d 1475, 1479 (Fed. Cir. 1994). Claim 10 recites a system for
managing objects between projects of a reporting system. The body of claim
10 recites receiving a user command and a module interfacing with projects,

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determining an appropriate manner of executing a user command,
determining functions to be performed, and executing a user command in an
appropriate manner. Thus, while the preamble of claim 10 recites an
intended purpose of a system application as managing objects in projects of
“a reporting system,” claim 10 does not recite within the body of the claim
any features that are specific to the “reporting system.”
Because Appellants have not demonstrated why the preamble phrase
of “projects of a reporting system” must be considered a limitation, we are
not persuaded of error in the rejection of claim 10.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 10, or of
claims 12, 16, and 17, which fall therewith with respect to issue #4.

Issue #5
Did Appellants demonstrate that the Examiner erred in finding that the
Mariani reference discloses that each object has a unique identifier and a
version identifier and manipulating objects between projects?
We consider the Examiner’s rejection of claims 4 and 5 as being
unpatentable over Mariani and Fontana. Since Appellants’ arguments have
treated these claims as a single group which stand or fall together, we select

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independent claim 4 as the representative claim for this group. See
37 C.F.R. § 41.37(c)(1)(vii).
Appellants assert that a “date time stamp . . . does not disclose a
version identifier” (Reply Br. 8). However, Mariani discloses that an engine
“tracks (i.e., stores) the date and time of the last change made to the header
files” (col. 10, ll. 17-18) and identifies changes in different versions of a
header file by comparing “the header file’s current date stamp (which
indicates the date and time it was last saved) to the previously stored date
stamp of the last class wizard edit to that header file” (col. 10, ll. 23-26).
Hence, Mariani discloses date/time stamps associated with different versions
(i.e., modified versions) of header files. Construing the term “version
identifier” broadly but reasonably to include any name or symbol
(“identifier”) that indicates or names a form or variety of a component
(“version”), we agree with the Examiner that the date/time stamp of Mariani
that identifies an edited or modified form of a header file includes a “version
identifier” as recited in claim 4.
In addition, Mariani discloses that “header files . . . of a project are
compiled into one or more object code files (generally having file names
with a ‘.obj’ extension)” (col. 2, ll. 19-21). Thus, Mariani also discloses that
object code files have “file names.” We find that the “file names” that
identify specific object code files that contain compiled header files

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constitute “a unique identifier” as recited in claim 4 because the file names
uniquely identify the object code files.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 4, and
claim 5, which falls therewith with respect to issue #5.

Issue #6
Did Appellant demonstrate that the Examiner erred in finding that the
Mariani reference discloses projects that reside in various environments?
Mariani discloses a “development environment 52” that “provides a
code library 76” (col. 8, ll. 23-24). The development environment of
Mariani includes, for example, “one or more editors 70, and automated
source code generators 72” (col. 8, ll. 9-10). Hence, the development
environment of Mariani includes any set of the “one or more editors” or
“automated source code generators” to create a particular set of conditions
for affecting an activity (i.e., compiling object code files). Because the set
of conditions created in the development environment may be of different
kinds depending on the components used, we agree with the Examiner that
Mariani discloses managing projects in various (i.e., different kinds of)
environments (i.e., set of conditions for compiling object code files).

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For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 11 with
respect to issue #6.

Issue #7
Did Appellants demonstrate that the Examiner erred in finding that the
Mariani reference discloses receiving a command to copy a selected object
from a source project to a destination project?
The Examiner finds that Mariani discloses that a minimal rebuild
system “makes a copy of the current object file” (Ans. 21). While we agree
with the Examiner that Mariani discloses “the minimal rebuild system 102
recompiles all object code files 82 . . .” (col. 10, ll. 39-40), we do not
identify a teaching or suggestion in Mariani that the minimal rebuild system
also copies a selected object from a source project to a destination project.
While the Examiner asserts that Mariani discloses a system that “makes a
copy of the current object file,” the Examiner does not specifically correlate
a specific teaching in Mariani with either copying the object file, receiving a
command to copy the object file, or copying the object file from a source
project to a destination project. In the absence of such a correlation, we find
that the Examiner has not demonstrated that Mariani discloses receiving a

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command to copy a selected object from a source project to a destination
project.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting claims 6-9 and 15. Therefore,
we reverse the Examiner’s rejection of independent claims 6-9 and 15.

Issue #8
Did Appellants demonstrate that the Examiner erred in determining
that the cited references disclose or suggest metadata?
Almond discloses a “meta model 300” (col. 6, l. 42) that “allows the
system to map objects to representations . . .” (col. 6, l. 44). Because
metadata includes any “data that provides information about other data”
(Merriam-Webster’s Collegiate Dictionary, 11th Edition, 2005), and because
the meta model of Almond includes information that describes other
information, we agree with the Examiner that Almond discloses or suggests
metadata. For example, the meta model of Almond may “accommodate
multiple names pointing to a single storage location” (col. 6, ll. 55-56). In
this example of Almond, the multiple names point to (or provide location
information about) a storage location of data. The multiple names of
Almond constitute metadata because the multiple names provide information
about other data.

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For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 2 with
respect to issue #8.

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:
1. finding that Mariani discloses or suggests determining a manner
of executing a selected function on a selected object (issue #1),
2. finding that Fontana discloses automatically identifying
dependent objects, causing functions to be performed, and executing a
selected function on a selected object in an appropriate manner (issue #2),
3. combining Mariani with Fontana (issue #3),
4. determining that the recitation of “a reporting system” is given
no patentable weight (issue #4),
5. finding that the Mariani reference discloses that each object has
a unique identifier and a version identifier and manipulating objects between
projects (issue #5),
6. finding that the Mariani reference discloses projects that reside
in various environments (issue #6), and

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7. determining that the cited references disclose or suggest
metadata (issue #8).
However, Appellants have demonstrated that the Examiner erred in
finding that the Mariani reference discloses receiving a command to copy a
selected object from a source project to a destination project (issue #7).

DECISION
We affirm the Examiner’s decision rejecting claims 1-5, 10-14, and
16-18 under 35 U.S.C. § 103. We reverse the Examiner’s decision rejecting
claims 6-9 and 15 under 35 U.S.C. § 103.
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-IN-PART

rwk

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