Ex Parte Ireland

Board of Patent Appeals and Interferences

Mar 26, 2012

10709917 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/709,917 06/04/2004 Evan P. Ireland 1933.1650001 3916
82515 7590 03/26/2012
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
EXAMINER
WANG, RONGFA PHILIP
ART UNIT PAPER NUMBER
2197
MAIL DATE DELIVERY MODE
03/26/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte EVAN P. IRELAND
________________

Appeal 2010-002097
Application 10/709,917
Technology Center 2100
________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY, III, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-61. We have jurisdiction under 35 U.S.C.
§ 6(b).
We pro forma reverse the Examiner’s rejections under § 103 of claims
1-46 and enter a new ground of rejection under 37 C.F.R. § §41.50(b). We
affirm the Examiner’s obviousness rejection of claims 47-61.

STATEMENT OF THE CASE
According to Appellant, the invention on appeal relates to
“information processing environments, and more particularly, to an
attribute-based component programming system and methodology for
object-oriented programming languages.” (Spec. para. [0006]).

Exemplary Claim 1
A method for dynamically generating program code adding
behavior to a program based on attributes, the method comprising:
adding a static field of type Component to a program class of
the program to create a component;
defining at least one attribute specifying declaratively behavior
to be added to the program, wherein said at least one attribute
comprises active metadata used to generate program code for
inclusion in the program;
associating said at least one attribute with the component; and
in response to instantiation of the component at runtime,
generating a subclass based on the program class and said at least one
attribute, the subclass including dynamically generated program code
based on said at least one attribute.
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(App. Br. 24, claim 1).
Rejections
1. Claims 1-5, 15-19, 21-26, 28-30, 33, 40-43, and 45-46 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of DeGroot (U.S. Patent No. 6,182,277 B1 (filed Jan. 30,
2001)) and McGurrin (U.S. Patent No. 5,913,063 (filed Jun. 15, 1999)).
2. Claims 6-14, 20, 31-39, and 44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of DeGroot, McGurrin,
and Foster (U.S. Patent No. 7,103,885 B2 (filed Sep. 5, 2006)).
3. Claims 27, 47-61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of DeGroot, McGurrin, and Zhang
(U.S. Pub. No. 2003/0055936 (filed Nov. 14, 2001)). 1

NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)

ISSUE (Claims 1-46)
We do not reach the merits of the Examiner’s obviousness rejections
because we find it necessary to first address the threshold issue of whether
independent claims 1 and 26 (and associated dependent claims 2-25 and 27-
46) are indefinite under 35 U.S.C. §112, second paragraph.

1 Claim 27 depends directly from independent claim 26. We observe that
the Examiner sets forth a detailed statement of rejection for dependent claim
27 under the third-stated rejection on page 27 of the Answer. However, the
Examiner omits claim 27 from the heading of the third-stated rejection.
(Ans. 20 ).
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PRINCIPLES OF LAW
Claim Construction
During prosecution, “the United States Patent and Trademark Office
(USPTO)] gives claims their ‘broadest reasonable interpretation.’” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000)).
The USPTO is not required in the course of prosecution to interpret
claims in the same manner as courts are required to during infringement
proceedings. “It would be inconsistent with the role assigned to the PTO in
issuing a patent to require it to interpret claims in the same manner as judges
who, post-issuance, operate under the assumption the patent is valid.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

35 U.S.C. § 112, Second Paragraph
The Federal Circuit Court has held in post-issuance patent
infringement cases that the definiteness requirement “does not compel
absolute clarity” and “only claims ‘not amenable to construction’ or
‘insolubly ambiguous’ are indefinite.” Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted). The claim as
a whole must be considered to determine whether it apprises one of ordinary
skill in the art of its scope, and therefore serves the notice function required
by 35 U.S.C. § 112, second paragraph by providing clear warning to others
as to what constitutes the infringement of the patent. Solomon v. Kimberly-
Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000)(emphasis added).
However, when a patent application is pending before the USPTO, “if
a claim is amenable to two or more plausible claim constructions, the
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USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential),
available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd073300.pdf.
Thus, a claim that is not indefinite under the Federal Circuit Court’s
“insolubly ambiguous” standard (as applied to issued patent claims), may be
considered indefinite under the USPTO Miyazaki standard of review that
employs a lower threshold of ambiguity for pending patent application
claims.
A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of the claim language. See In re Steele, 305 F.2d
859, 862-863 (CCPA 1962).
ANALYSIS
Independent Claims 1 and 26
Based upon our review of Appellant’s claims viewed in light of the
Specification, we are unable to ascertain the scope of the limitation “a static
field of type Component,” as recited in independent claims 1 and 26. In
reviewing the final rejection, we observe that the Examiner initially set forth
a rejection under § 112, second paragraph, regarding this limitation (Final
Office Action, p. 3), but withdrew the rejection in the Answer (2). In our
view, the Examiner’s legal conclusion was correct in the first instance.
As discussed above, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
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more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Miyazaki, 89 USPQ2d at 1211. See also Steele, 305 F.2d at
862.
According to Appellant’s Specification:
A "Component" class included in the library allows a developer
to create a component out of a given Java class and obtain
instances of that component. As described below, the
Component class includes functionality for generating a
subclass of the original class and allows one to obtain instances
of the subclass. The developer can then compile the resulting
code/classes that are developed with a standard Java compiler
in order to generate a compiled Java subclass that may contain
additional behavior based on attributes (if any) defined by the
developer.
(Spec. para. [0071]).
Further, Appellant’s Specification discloses:
At step 501, a developer/user may provide for creating a
component from the class he or she is developing (e.g., a plain
Java class named "MyClass") by the addition to the class of a
static component field (or object) from a "Component" class.
The Component class is a component of the above-described
library and comprises a main workhorse routine implementing
the methodology of the present invention. For example, a static
field named "component" may be added to the class as
illustrated in the example described below in this document.
(Spec. para. [0081], emphasis added).
While it appears that “Component” is a name of an object class,
claims 1 and 26 do not define what a “type Component” is. Although “[a]
[patent applicant] may act as [his/her] own lexicographer and assign to a
term a unique definition that is different from its ordinary and customary
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meaning . . . a [patent applicant] must clearly express that intent in the
written description.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527
F.3d 1379, 1381 (Fed. Cir. 2008) (emphasis added). Any special meaning
assigned to a term “must be sufficiently clear in the specification that any
departure from common usage would be so understood by a person of
experience in the field of the invention.” Multiform Desiccants Inc. v.
Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
We find the aforementioned support in the Specification is merely
exemplary. (Spec. paras. [0071], [0081]) . We are of the view that
Appellant’s Specification and claims fail to set forth a definition of the
recited “static field of type Component” with reasonable clarity,
deliberateness, and precision that would render the incorporation of such
definition into the claims appropriate. In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
We conclude that under a broad but reasonable construction, the claim
term “a static field of type Component” (claims 1, 26) is amenable to two or
more plausible claim constructions, and therefore falls under the
precedential holding of Miyazaki. We decline to engage in speculative
assumptions concerning the meaning and scope of the “type Component”
claim limitation. (Id.).
Since prior art rejections cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of the claim language, a material issue
of claim interpretation is present, and must be resolved before the merits of
the Examiner’s and Appellant’s positions can be properly considered. See
Steele, 305 F.2d at 862-863.
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Therefore, we pro forma reverse the Examiner’s obviousness
rejections of independent claims 1 and 26, and associated dependent claims
2-25, and 27-46.
We emphasize that our reversal is based on procedure rather than on
the merits of the obviousness rejection. Our pro forma reversal does not
mean that we consider claims 1-46 to be patentable over the cited prior art as
presently drawn.

Third-Stated Rejection under 35 U.S.C. § 103
Claims 47-612
Based on Appellant’s arguments in the Briefs, we decide the appeal
for the group consisting of claims 47-61 on the basis of representative claim
47. See 37 C.F.R. § 41.37(c)(1)(vii).
ISSUE 1
Under §103, did the Examiner err in finding that the cited
combination of DeGroot, McGurrin, and Zhang would have
taught or suggested “defining at least one attribute specifying
declaratively behavior which is desired to be added to an
application without access to the application source code,
wherein said at least one attribute comprises active metadata
used to generate code adding behavior to the application,”
within the meaning of independent claim 47?

2 Dependent claim 27 was also rejected by the Examiner under the third-
stated ground of rejection (Ans. 27). Claim 27 depends directly from
independent claim 26 and is addressed supra under our new grounds of
rejection.
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ANALYSIS
Appellant contends:
Appellant's claims are believed to be allowable for at least the
reasons cited above in Appellant's Second Ground of Appeal
(hereby incorporated by reference) pertaining to the
deficiencies of the DeGroot and McGurrin references as to
Appellant's claimed invention. Zhang does not cure these
deficiencies as it includes no teaching or suggestion of defining
attributes which comprise active metadata and using such
attributes for dynamically generating subclasses including code
that extends the functionality of a software program. Zhang is
also distinguishable from Appellant's claimed invention for the
additional reasons discussed below.
(App. Br. 20).
Regarding the aforementioned reference to Appellant’s “Second
Ground of Appeal” (Id.), we observe that Appellant’s arguments are
essentially directed to singular attacks on the cited references: (1) DeGroot is
discussed in the Brief from pages 11-14, and (2) McGurrin is discussed on
pages 14-17. We do not find this form of argument persuasive. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner relied on the
combined teachings of DeGroot and McGurrin to teach or suggest
dynamically generating program code adding behavior to the application.
(Id.). Based upon our review of the record, we agree with and adopt the
Examiner’s findings with respect to this limitation. (Ans. 21, 30).

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ISSUE 2
Under §103, did the Examiner err in finding that the cited
combination references would have taught or suggested
“storing said at least one attribute in a properties file external to
the application; creating a dynamic attributes class based on the
properties file; [and] compiling the application and the dynamic
attribute class,” within the meaning of independent claim 47?

ANALYSIS
Appellant contends that Zhang fails to cure the deficiencies of
DeGroot and McGurrin because the “attributes” disclosed in Zhang do not
comprise active metadata for adding behavior to a program. (App. Br. 21).
However, the Examiner relied on DeGroot to teach or suggest this limitation.
(Ans. 21). The Examiner’s rejection is based on the combined teachings or
suggestions of the cited references. Therefore, we find Appellant’s attack on
the Zhang reference in isolation is unavailing. On this record, we agree with
and adopt the Examiner’s findings regarding this limitation.
Appellant further contends that Zhang does not mention “compiling
the application and the dynamic attributes class so as to generate a subclass
which includes dynamically generated code adding behavior to the
application” as provided in claim 47. (App. Br. 22). Similar to the above
discussion, the Examiner relied on DeGroot to teach or suggest this
limitation. (Ans. 21). Therefore, we do not find persuasive Appellant’s
attack on Zhang in isolation.
A review of the record indicates that Appellant has not traversed the
Examiner’s specific findings on pages 21 and 22 of the Answer. For these
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reasons, we find Appellant’s arguments unpersuasive of Examiner error.
We sustain the Examiner’s §103 rejection of representative claim 47 and
claims 48-61 (not argued separately) which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejection of claims 47-61 under 35 U.S.C.
§ 103(a).
We pro forma reverse the Examiner’s obviousness rejections of
claims 1-46 under 35 U.S.C. § 103(a) and enter a new ground of rejection
for claims 1-46 under 35 U.S.C. § 112, second paragraph.
37 C.F.R. § 41.50(b) also provides that the Appellant, 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.…

ORDER
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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