Ex Parte Friskel

Board of Patent Appeals and Interferences

Mar 8, 2012

10058097 (B.P.A.I. Mar. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES FRISKEL
____________________

Appeal 2010-000609
Application 10/058,097
Technology Center 2100
____________________

Before: LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000609
Application 10/058,097
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STATEMENT OF CASE
The Patent Examiner rejected claims 29-32, 34-44, and 46. The
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
INVENTION
Claim 29, which follows, is illustrative of the claimed subject matter.
29. A method of creating and modifying a graphical user
interface (GUI) using a graphics file and configuration file pair,
comprising:
executing a graphics engine process on a user computer,
wherein the user computer is connected to a server computer
through a computer network;
accessing said graphics file on the user computer with the
graphics engine process, wherein said graphics file comprises
the full extent and external boundary of said graphical user
interface;
accessing said configuration file on the user computer
with the graphics engine process wherein said configuration file
comprises header information, skin points and
activation region definitions, wherein said activation region
definitions comprise definitions associated with importing
dynamically linked library (dll) files into a process running on a
computer system and the initiation of a recursive use of
respective graphics file and configuration file pairs;
updating said graphics file and said configuration file
with the server computer; and modifying data in said graphics
file and configuration file pair with the graphics
engine process to effect the creation and modification of said
GUI.

REFERENCES AND REJECTIONS
Ko US 6,292,185 Sep. 18, 2001
Wishoff US 2002/0070978 A1 June 13, 2002
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Claims 29-32, 34-44, and 46 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Wishoff and Ko.

DISCUSSION
Based on the Appellant's arguments, we will decide the appeal of
claims 29-32, 34-44, and 46 on the basis of claim 29. See 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, the issue before us follows.
Did the Examiner err in finding that the combined teachings of
Wishoff and Ko would have suggested a graphics file and a configuration
file and modifying data in the files, as required by representative claim 29?
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, 1383 (Fed. Cir. 2001)
(citations omitted). "The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)).
Here, Wisoff describes its invention as follows:
A system and method that provides for presenting a
dynamically configurable graphical user environment. The
invention as embodied defines both an interface, and an
interface engine. The look, layout and to some extent the
behavior of a graphical desktop produced with the invention is
defined by a configuration file called a "skin". The skin is
passed by an interface engine at runtime, which is
communication with a library of graphical elements, produces
the visual display. This methodology allows changes to the
desktop to be made quickly without any changes to the
interface engine itself.
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(Abstract.) More specifically, we agree with the Examiner's finding that the
same reference's "library of graphical elements is a graphic file (abstract,
0011, 0114) and the 'skin' file is a configuration file as clearly defined by
Wishoff (0012, 0067, 0115). " (Ans. 7.)
The Appellant argues " that the Wishoff et al. Publication makes no
such distinction between the claimed features of a 'graphics file comprises
the full extent and external boundary of said graphical user interface' and a
'configuration file comprises header information, skin points and activation
region definitions.'" (App. Br. 9.)
Non-functional descriptive material refers to the content of data that
does not exhibit a functional interrelationship with a substrate and does not
affect the way a computing process is performed. See MPEP § 2106.01. An
expanded panel of the Board held that descriptive material that does not
"functionally affect the [claimed] process" is non-functional material. Ex
parte Nehls, 88 USPQ2d 1883, 1887 (BPAI 2008) (precedential).
"Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious." Ex parte Curry, 84 USPQ2d 1272,
1274 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)),
aff’d, Appeal No. 2006-1003 (Fed. Cir. 2006). "[W]hen descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of
patentability." Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006) (citing In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
Here, the claimed "full extent and external boundary of said graphical
user interface" content and "header information, skin points and activation
region definitions " content (claim 29) "cannot alter how the process steps
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are to be performed to achieve the utility of the invention." Mathias, 84
USPQ2d at 1279. Consequently, the content are not entitled to patentable
weight and will not distinguish the invention from the prior art in terms of
patentability.
The Appellant also argues that "[t]here is simply no reason to suppose
that dynamically linked library files taught in the prior art lead to the
claimed 'the initiation of a recursive use of respective graphics file and
configuration file pairs.'" (App. Br. 11.)
"An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.'' Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
''[s]uch statements often . . . appear in the claim's preamble,'' In re Stencel,
828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose
can appear elsewhere in a claim. Id.
Here, the phrase "initiation of a recursive use of respective graphics
file and configuration file pairs" merely states an intended use or purpose for
data in the claimed configuration file. Consequently, the phrase will not
limit the scope of the claim and will not distinguish the claimed invention
from the prior art in terms of patentability.
The Examiner's finds that "Wishoff clearly teach[es] modifying data
in the graphic file, wherein 'the user may change certain aspects of the
screen. The library of graphical elements can be modified to add further
elements or change those already present.' (0011,0114). The configuration
file is also editable by authorized personnel (0069, 0071, 0118)." (Ans. 7.)
"[T]he Board reviews the particular finding(s) contested by an
appellant anew in light of all the evidence and argument on that issue." Ex
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Application 10/058,097
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parte Frye, No. 2009-006013, 2010 WL 889747, at *4 (BPAI Feb. 26, 2010)
(precedential). "Filing a Board appeal does not, unto itself, entitle an
appellant to de novo review of all aspects of a rejection. If an appellant fails
to present arguments on a particular issue - or, more broadly, on a particular
rejection - the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection." Id. (citations omitted).

Here, the Appellant chose not to file a reply brief to address the
Examiner's aforementioned findings. We decline to unilaterally review
those uncontested findings.
Therefore, we conclude that the Examiner did not err in finding that
the combined teachings of Wishoff and Ko would have suggested a graphics
file and a configuration file and modifying data in the files, as required by
representative claim 29.

DECISION
We affirm the rejection of claim 29 and of claims 30-32, 34-44, and
46, which fall therewith.
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) (2009).

AFFIRMED

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