Ex Parte Hartel et al

Board of Patent Appeals and Interferences

Jan 29, 2009

09882172 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN MARK HARTEL, JOHN CONRAD SANCHEZ, and
KARALEE BROWN LEBLANCE
____________

Appeal 2008-0801
Application 09/882,172
Technology Center 2100
____________

Decided: January 29, 2009
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-37 and 39-41, which are all of the claims remaining in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
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We affirm the Examiner’s rejections against claims 1-37 and 39-41.
We add a new ground of rejection under 35 U.S.C. § 101 against claims
25-36.

Invention
Appellants’ invention relates to a method in a data processing system
for editing a property. The method identifies one or more methods invoked
by a property editor, selects a graphical user interface based on the one or
more invoked methods, and provides the graphical user interface for use in
editing the property.

Representative Claim
1. A method, in a data processing system, for editing a
property, comprising:

identifying one or more methods invoked by a property
editor associated with the property;

selecting a graphical user interface based on the one or
more methods invoked by the property editor; and

providing the graphical user interface for use in editing
the property.

Prior Art
The Examiner relies on the following references:
Lindhorst US 6,337,696 B1 Jan. 8, 2002
Zimmerman US 6,417,872 B2 Jul. 9, 2002
Miller US 6,661,437 B1 Dec. 9, 2003

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Examiner’s Rejections
I. Claims 1-3, 7, 8, 13-15, 19, 20, 25-27, 31, 32, and 37 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Miller.
II. Claims 4-6, 16-18, and 28-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Miller and Lindhorst.
III. Claims 9, 12, 21, 24, 33, 36, 40, and 41 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Miller and Zimmerman.
IV. Claims 10, 11, 22, 23, 34, 35, and 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Miller, Zimmerman, and
Lindhorst.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 3, 4, 7, 9, 10, 40, and 41. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
1. Miller discloses selecting a “subtitle language” menu item (Fig.
5, element 545).
2. Miller’s selecting identifies and invokes methods of editing a
subtitle language property by a property editor of the subtitle language
property. Specifically, the subtitle language property is edited by invoking a
method of changing the subtitles from one language to another (Fig. 5 and
col. 6, l. 65 - col. 7, l. 18).
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3. Based on the invoked method, a graphical user interface such as
a dialog box is selected for editing the subtitle language property (Fig. 5,
element 555).
4. The graphical user interface is provided to the user for editing
the subtitle language property (Fig. 5 and col. 6, l. 65 - col. 7, l. 18).
5. The graphical user interface is selected based on editing
methods that are identified when the user selects the appropriate menu item
(Fig. 5 and col. 6, l. 65 - col. 7, l. 18).
6. Appellants’ Specification states: “A ‘property’ as the term is
used herein, refers to anything that can be represented by a Java class, i.e. a
data type. Examples of properties include text color, background color, text
string, windspeed, percentage, computer operating system, and the like.”
(Spec. 14: 4-8).
7. Appellants’ Specification discloses embodiments of a Java
PropertyEditor Interface (e.g., Spec. 14: 14 - 17: 15), but we do not find any
limiting definition for the term “PropertyEditor Interface.”
8. Miller discloses “an on-screen User Interface display . . . for
maintaining User viewability of the currently selectable menu items” (col. 6,
l. 65 to col. 7, l. 1).
9. Appellants’ Specification describes embodiments of a custom
property editor (e.g., Spec 14: 9 - 15: 7).
10. Zimmerman discloses a “GetPredefinedStrings” function that
returns character strings such as red, blue, and green (col. 8, ll. 55-67).
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11. Zimmerman discloses the MapPropertyToPage function enables
switching from a per-property browsing list to a property sheet page
containing the particular property (col. 8, ll. 20-23).
12. Appellants’ Specification indicates that the present invention
may be embodied in transmission-type “computer readable media,” such as
digital and analog communications links. (See Spec. 29: 3-15).

PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). “An essential purpose of
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” Zletz, 893
F.2d at 322. “Construing claims broadly during prosecution is not unfair to
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the applicant . . . because the applicant has the opportunity to amend the
claims to obtain more precise claim coverage.” American Academy, 367
F.3d at 1364.
Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). “Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into a claim limitations
that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment.” Superguide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed Cir. 2004) (citing Electro
Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir.
1994)).
While the patent specification includes an embodiment showing
the use of “a C++ class hierarchy derivation of the program
logic,” . . . and uses terms characteristic of object-oriented
programming in connection with that example, neither the
written description nor the claims anywhere state or imply that
the invention must use object-oriented programming in general,
or C++ in particular. Without more, the use of an example that
employs object-oriented programming is not sufficient to
require that the claims be limited to embodiments using C++ or
a similar programming language.

Tivo, Inc. v. EchoStar Communications Corp., 516 F.3d 1290, 1307 (Fed.
Cir. 2008).

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Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
What a reference teaches is a question of fact. In re Baird, 16 F.3d
380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir.
1992). The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact. In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000).

Statutory Subject Matter
“A transitory, propagating signal is not a ‘process, machine,
manufacture, or composition of matter.’ Those four categories define the
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explicit scope and reach of subject matter patentable under 35 U.S.C. §
101.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). “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.” Id. at 1354.

ANALYSIS
I. Section 102 rejection of claims 1, 2, 13, 14, 25, and 26
Appellants argue that Miller does not disclose selecting a graphical
user interface based on the one or more methods invoked by a property
editor associated with a property, because only one graphical user interface
is selected to edit a given property (Br. 14). Appellants further submit that
in Miller the user interface components for a parameter are static, and the
same graphical user interface will always be provided for editing a property
when a user selects the appropriate menu item (id.).
The Examiner found that “Miller teaches this limitation because each
option on its menu is a method for a property. Appellant has defined a
‘property’ as a data type, which includes text color, background color, text
string, windspeed, percentage, computer operating system, and the like.”
(Ans. 12) (citations omitted).
Issue: Have Appellants shown that the Examiner erred in finding that
Miller discloses selecting a graphical user interface based on the one or more
methods invoked by the property editor?
Miller describes identifying and selecting a subtitle language property
using an editor associated with the property (FF 1-2). Miller further
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describes selecting a graphical user interface dialog box based on the one or
more methods invoked by the property editor (FF 3) and providing the
graphical user interface for use in editing the property (FF 4-5). Thus, we
find that Miller’s selecting the user interface for editing a subtitle language
property is consistent with selecting a graphical user interface based on
methods invoked by the property editor.
Appellants further argue that the terms “method,” “property,” and
“property editor” should be limited to object-oriented runtime environments
such as a Java runtime environment as disclosed in the Specification (Br. 15-
16).
Issue: Have Appellants shown that the claims are limited to object-
oriented runtime environments?
Although the claim language may be aided by explanations contained
in the written description, Appellants cannot import into a claim limitations
that are not part of the claim. Here, Appellants are trying to improperly read
particular embodiments appearing in the written description into a claim
when the claim language is broader than the embodiment. In view of
Appellants’ broad definition of “property editor” in the Specification (FF 6),
and absent an improper reading of embodiments from Appellants’ written
description into the terms of representative claim 1, we are not persuaded
that the claims are limited to object-oriented runtime environments. Further,
Appellants have provided no evidence in support of the view that the terms
“method,” “property,” or “property editor” have ordinary and customary
meanings in the pertinent art that would distinguish over Miller’s disclosure.
Thus, Appellants have not shown that Appellants’ Specification or the
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claims state or imply that the invention must use object-oriented runtime
environments in general, or Java in particular.
Therefore, we sustain the rejection of claims 1, 2, 13, 14, 25, and 26
under 35 U.S.C. § 102(e) as being anticipated by Miller.

II. Section 102 rejection of claims 3, 15, 27 and 37
Appellants argue that the claim 3 recitation “PropertyEditor Interface”
is defined in the Specification, and limited to that definition (Br. 16).
The Examiner found that “by allowing [the] user to adjust the
properties of a device through an interface, Miller teaches a property editor.”
(Ans. 13).
Issue: Have Appellants shown that the term “PropertyEditor
Interface” is limited by Appellants’ Specification?
Appellants’ Specification merely discloses embodiments of a Java
PropertyEditor Interface (FF 7). However, Appellants have not shown and
we do not readily find a lexicographic definition for the term
“PropertyEditor Interface” in the Specification. The scope of a claim cannot
be narrowed by reading disclosed embodiments into the claim. The claim
language itself measures the invention. Absent an improper reading of
Appellants’ “PropertyEditor Interface” methods from the written description
into representative claim 3, we are not persuaded of error in the Examiner’s
findings.
Therefore, we sustain the rejection of claims 3, 15, 27, and 37 under
35 U.S.C. § 102(e) as being anticipated by Miller.

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III. Section 102 rejection of claims 7, 8, 19, 20, 31, and 32
Appellants argue that Miller does not teach or suggest that an ability
of the property editor includes “an ability to edit a property using tags, and
the graphical user interface includes at least one of a popup choice selection
area virtual button and a current selection display field” as recited in claim 7
(Br. 17).
The Examiner found that “Miller teaches this limitation because the
menu for subtitle has a popup choice selection that includes a currently
selected field.” (Ans. 14).
Issue: Have Appellants shown that the Examiner erred in finding that
Miller discloses that the graphical user interface includes at least one of a
popup choice selection area virtual button and a current selection display
field?
Miller discloses an on-screen display that displays currently selectable
items (FF 8). Here, Miller discloses selection tags as part of the graphical
user interface. These tags represent a current selection display field because
once a tag is selected, the tag displays the user’s current selection of the
subtitle language property. Thus, we find that claim 7’s “current selection
display field” reads on Miller’s on-screen display selection tags.
Therefore, we are not persuaded of error in the Examiner’s finding of
anticipation with respect to representative claim 7.
We sustain the rejection of claims 7, 8, 19, 20, 31, and 32 under
35 U.S.C. § 102(e) as being anticipated by Miller.

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IV. Section 103 rejection of claims 4-6, 16-18, and 28-30
Appellants argue, in defense of claim 4, that there is no motivation in
the prior art for combining Miller and Lindhorst, because Miller makes no
mention of an object-oriented runtime environment or editing of event
handlers (Br. 18-19).
The Examiner found:
Miller’s menu options are designed for personal computer and
other Internet compatible device. Lindhorst teaches a software
program for creating and editing event handlers that are linked
to an object with HTML and other Internet documents.
Therefore, in order for an Internet preference menu to operate
on a computer or an internet compatible device, a programmer
would want to combine Lindhorst’s teaching with Miller’s
method.

(Ans. 14) (citations omitted).

Issue: Have Appellants shown that the claims are limited to object-
oriented runtime environments which affect the motivation to combine the
references?
As noted supra regarding claim 1, we do not interpret Appellants’
claims as being limited to object-oriented runtime environments.
Furthermore, Appellants had the opportunity to amend the claims to be
commensurate with the arguments made. However, in this case the claims
are drafted far broader than the arguments relied upon. The Examiner has
articulated a reason for combining the references and Appellants’ reliance on
the claims being limited to object-oriented runtime environments to dispute
such a motivation is flawed.
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Therefore, we are not persuaded of error in the Examiner’s rejection
of representative claim 4, and thus sustain the rejection of claims 4-6, 16-18,
and 28-30 under 35 U.S.C. § 103(a) as being unpatentable over Miller and
Lindhorst.

V. Section 103 rejection of claims 9, 12, 21, 24, 33 and 36
Appellants allege, in defense of claim 9, that the Specification
provides an “exemplary definition” of a custom editor as an editor that uses
methods created by a programmer rather than defined by the programming
language, thus distinguishing over Zimmerman (Br. 22-23).
However we find that Appellants have not shown and we do not
readily find any limiting definition in the Specification for the term “custom
editor” (FF 9).
Appellants further allege (for claim 9) that Miller and Zimmerman
cannot be properly combined, because Miller does not recognize a problem
for which the teachings of Zimmerman would be a solution (Br. 24).
Appellants also argue that Miller is non-analogous art because Miller is not
directed towards property editors in an object-oriented runtime environment
(App. Br. 23).
As noted supra, “object-oriented runtime environment” is not in the
claims and there is no basis for reading this limitation into representative
claim 9. Further, Appellants neglect to explain how alleging that a
reference’s (Miller’s) alleged lack of recognizing a problem for which the
teachings of another reference (Zimmerman) would be a solution
demonstrates a defect in a prima facie case for obviousness, or might
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otherwise tend to show nonobviousness. Appellants have not addressed the
Examiner’s finding that the artisan would have incorporated the method of
Zimmerman with the method of Miller to provide a single application having
only a desired functionality to users without requiring creation of several
versions of the application (Ans. 7).
Therefore, we are not persuaded of error in the Examiner’s rejection.
We sustain the § 103(a) rejection of claims 9, 12, 21, 24, 33, and 36 over
Miller and Zimmerman.

VI. Section 103 rejection of claim 40
Appellants argue, in defense of claim 40, that the getTags method in
Table 1 of Appellants’ Specification returns an array of tags if the property
value must be one of a set of known tagged values (Br. 24).
The Examiner finds that Zimmerman discloses a getTags method
(Ans. 8).
Issue: Have Appellants shown that the Examiner erred in finding that
Zimmerman discloses a getTags method?
Zimmerman discloses a function that returns an array of character
strings (FF 10). Appellants have failed to show how Zimmerman’s return of
such an array of tags is distinguishable from the claimed “getTags.” Absent
an improper reading of details of the “getTags” method described in
Appellants’ written description into claim 40, we are not persuaded of error
in the rejection.
Therefore, we sustain the § 103(a) rejection of claim 40 over Miller
and Zimmerman.
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VII. Section 103 rejection of claim 41
Appellants argue, in defense of claim 41, that the MapPropertyToPage
function is not the same as the getCustomEditor method described in Table 1
of Appellants’ Specification (Br. 24-25).
The Examiner finds that the MapPropertyToPage function in
Zimmerman is synonymous with the getCustomEditor method (Ans. 9).
Issue: Have Appellants shown that the Examiner erred in associating
Zimmerman’s MapPropertyToPage function with the getCustomEditor
method?
Here, Appellants are again trying to improperly read particular
embodiments appearing in the written description into a claim when the
claim language is broader than the embodiment. Appellants have not shown
how the claim language distinguishes the getCustomEditor function from
Zimmerman’s MapPropertyToPage function. Absent an improper reading of
details of Appellants’ disclosed “getCustomEditor” methods into claim 41,
we are not persuaded of error in the Examiner’s rejection.
Therefore, we sustain the § 103(a) rejection of claim 41 over Miller
and Zimmerman.

VIII. Section 103 rejection of claims 10, 11, 22, 23, 34, 35 and 39
Appellants contend that “neither Miller, Zimmerman, nor Lindhorst
teaches or suggests an ability to edit a property using a custom editor
interface” (App. Br. 25).
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The Examiner found that Miller, Zimmerman and Lindhorst teach the
above noted feature and that Lindhorst teaches a graphical user interface that
includes at least one of a text entry field and an entry error indicator (Ans.
9).
Issue: Have Appellants shown that the Examiner erred in finding that
Miller, Zimmerman, and Lindhorst disclose an ability to edit using a custom
editor interface?
For the most part, Appellants have not addressed the Examiner’s
finding that the artisan would have combined the teachings of Miller and
Lindhorst to allow a user to custom edit properties that must be input as
strings. Appellants merely argue that neither reference teaches or suggests
the above-noted limitations without providing any meaningful analysis that
explains why the Examiner erred.
Therefore, we are not persuaded of error in the Examiner’s rejection
and sustain the § 103(a) rejection of claims 10, 11, 22, 23, 34, 35, and 39
over Miller, Zimmerman, and Lindhorst.

IX. New Ground of Rejection -- 37 C.F.R. § 41.50(b)
We reject claims 25-36 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 25 through 36 purport a “computer program product in a
computer readable medium.” As taught by Appellants’ Specification, the
claimed subject matter may be embodied in signal bearing media, i.e., a
digital link, which is not within any statutory class (FF 12). Thereby, the
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claim covers material not found in any of the four statutory categories.
Therefore, claims 25-36 fall outside the plainly expressed scope of § 101.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-37 and 39-41.
Thus, claims 1-37 and 39-41 are not patentable.
Since we have entered a new ground of rejection against claims 25-36,
our decision is not a final agency action.

DECISION
The Examiner’s rejections of claims 1-37 and 39-41 are affirmed.
In a new ground of rejection, we have rejected claims 25-36 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that Appellants, 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 the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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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
37 C.F. R. § 41.50(b)

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