Ex Parte Benson et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10001212 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DOUGLAS S. BENSON and DENNIS E. GRIFFIN
____________

Appeal 2008-002295
Application 10/001,212
Technology Center 2100
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Decided:1 June 15, 2009
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BARRY, 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 Data (electronic delivery).
Appeal 2008-002295
Application 10/001,212

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 4-16, 19-29, 32-35, and 39-46.
The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The invention at issue on appeal enables a person to define
graphically behaviors associated with objects and automatically generates
computer-readable scripts or programs to define the behaviors. (Spec. 3.)

ILLUSTRATIVE CLAIM
1. A system for associating behaviors with objects, wherein a
script for said behaviors is automatically generated and is
accessible by a client from a host, said system comprising:
a source object;
a graphical behavior tool rendered as a part of said source
object for establishing a behavior relationship between said
source object and a target by using a pointer to perform a
gesture with said graphical behavior tool; and
an automated script generator for generating computer
readable script defining said behavior relationship.

PRIOR ART
Peterson 5,652,714 July 29, 1997

REJECTION
Claims 1, 4-16, 19-29, 32-35, and 39-46 stand rejected under 35
U.S.C. § 102(b) as anticipated by Peterson.
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ISSUE
The Examiner makes the following findings about Peterson.
In the example of Claims 1 and 14, the graphical behavior tool
and control handle are rendered (made available) and gestured.
This is done by Peterson in Figure 10. The user commands
ref. 296 to create an association between states using a
graphical behavior tool or control handle by displaying a
transition line as part of the source object connecting to the
target. Rendering is an association tool that is clearly done by
the teachings in Figure 10 which associate the respective
control function used by those creation tools with the selected
source.
(Answer 11.) The Appellants argue that "[r]endering the tool on a palette
separate from the source object is not the same or even similar to rendering
the graphical tool or control handle as a part of the source or trigger objects."
(Amended App. Br. 6.) Therefore, the issue before us is whether the
Appellants have shown error in the Examiner's finding that Peterson renders,
i.e., displays, a control icon as a part of a source object.

LAW
"[W]hen interpreting a claim, words of the claim are generally given
their ordinary and accustomed meaning, unless it appears from the
specification or the file history that they were used differently by the
inventor." In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing
Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1577
(Fed. Cir. 1993)).

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"[A]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.Cir. 1989)
(citing Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894
(Fed. Cir. 1984); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771-72
(Fed. Cir. 1983)). "[A]bsence from the reference of any claimed element
negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986).

FINDINGS OF FACT ("FFS")
1. In the field of computer science "[t]he term 'render' is defined as . . .
'[t]o convert (graphics) from a file into visual form, as on a video display[ ]'
by the American [H]eritage Dictionary of the English Language, Fourth
Edition, Copyright 2000." (Answer 10.)

2. Peterson "provides a software tool such as an authoring tool for
creating and/or modifying multimedia products on a computer system."
(Col. 5, ll. 35-38.) "[W]hen the tool is in authoring mode, [it] provides a
user interface having one or more state machine map windows 250 . . . ."
(Col. 13, ll. 10-12.)

3. "[T]he map window 250 includes a tool palette 280 and a map
display area of 282. The tool palette 280 provides a plurality of tools for
authors to create, edit and delete states and transitions." (Col. 16, ll. 28-32.)
More specifically, "[t]he tool palette 280 preferably includes a default
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tool 292, a state creation tool 294, [and] a transition creation tool 296."
(Col. 17, ll. 20-21.)

4. "The map display area 282 provides a region in which a map 284 of
the editable state machine is displayed on the display screen. The map 284
of the current state machine shows the various states 242 of the state
machines as well as the transitions 244 between the states." (Col. 16, ll. 32-
37.)

ANALYSIS
Independent claims 1, 14, and 28 respectively require rendering a
graphical tool, a control handle, or a control icon as a part of a source object.
In the field of computer science, the ordinary and accustomed meaning of
the term "render" is to convert graphics from a file into a visual form on a
video display. (FF 1.) Independent claim 35 requires displaying a control
icon as a part of a source object. Giving the term render its ordinary and
accustomed meaning, the independent claims all require displaying a control
icon as a part of a source object.

The Examiner reads the claimed source object on a state of the
reference's state machine (Answer 10) and the claimed control icon on the
reference's transition creation tool 296 (id. at 11). As observed by the
Appellants, however, the transition creation tool is "not displayed as a part
of the Peterson source object (e.g., elements 242a, b, or c in Peterson)."
(Amended App. Br. 6.) To the contrary, the reference displays the tool in a
tool palette 280 (FF 3), which is separate from the map 284 in which the
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states 242 of the state machines are displayed (FF 4). We agree with the
Appellants’ argument that "[r]endering the tool on a palette separate from
the source object is not the same or even similar to rendering the graphical
tool or control handle as a part of the source or trigger objects." (Amended
App. Br. 6.)

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's finding that Peterson renders,
i.e., displays, a control icon as a part of a source object.

DECISION
We reverse the rejection of claims 1, 4-16, 19-29, 32-35, and 39-46.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED

msc
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