Ex parte JOHNSON et al.

Board of Patent Appeals and Interferences

Jul 23, 1998

08160348 (B.P.A.I. Jul. 23, 1998)

Application for patent filed December 1, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM J. JOHNSON and MICHAEL D. SMITH
_____________
Appeal No. 95-4377
Application 08/160,3481
______________
ON BRIEF
_______________
Before MARTIN, BARRETT and FLEMING, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
final rejection of claims 1 and 7, all of appellants' pending
claims, under § 103. We reverse.
Appeal No. 95-4377
Application 08/160,348
- 2 -
The invention relates to a data processing system which a
cursor is used to select displayed objects (e.g., icons) and more
particularly to altering the appearance of the cursor to indicate
that a predefined process has been selected which is thereafter
to be applied to the selected object or objects. Appellant
treats both claims as standing or falling together (Brief at 4).
Claim 1 reads as follows:
1. A graphic method for efficient execution of a predefined
process within a data processing system having a keyboard, a
plurality of objects and a movable cursor displayed therein, said
method comprising the steps of:
specifying a predefined process within said data processing
system, said predefined process comprising a plurality of
keystrokes, said plurality of keystrokes specifying a user
defined executable process which may be applied to one or more
objects within said data processing system;
associating said predefined process with said movable cursor
within said data processing system;
altering a graphic appearance of said movable cursor in
response to said association of said predefined process with said
movable cursor; and
executing said predefined process on a particular object
within said data processing system in response to a graphic
selection of said particular object by a user utilizing said
movable cursor.
Appeal No. 95-4377
Application 08/160,348
The Answer additionally cites, as "technical background,"2
the following two articles: Tempo II, the Next Step in Macintosh
Automation, Affinity Microsystems, Ltd., 1988, pp. 1-117 (of
which only pages 33-117 are in the application file); and Takada
et al., A Method of Generating User-Desired Service Macro in an
Icon-Based Environment, 8169 Systems & Computers in Japan 19
(1988), sec. 5.5. Since these articles are not relied on the
rejection, they have not been considered. In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); Ex parte
Movva, 31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993).
The examiner's criticism of the term "which" (final3
Office action at 2) is not repeated in the Answer and is
therefore treated as withdrawn.
- 3 -
Both claims stand rejected under 35 U.S.C. § 112, second
paragraph, and also under § 103 as unpatentable for obviousness
over the following reference:
Cowart "Mastering Windowsâ„¢ 3.1" 19932
A. The § 112 rejection
The examiner contends that the terms "may be" and "one or
more" in the phrase "may be applied to one or more objects"
render each claim indefinite: 3
"[M]ay be" is indefinite since it includes the meaning of
may not be. "[O]ne or more" is indefinite since it appears
that a process defined for the execution of one object may
not be used for more than one object. [Examiner's emphasis.]
[Final Office action at 2.]
We agree with Appellants that while it is true that a process
which is predefined for execution with only one object may not be
used with another object, it is also true that a process which is
Appeal No. 95-4377
Application 08/160,348
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predefined for use with an (i.e., any) object can be used with
more than one object. The fact that the claims are broad enough
to encompass both types of processes does not render them
indefinite. See In re Miller, 441 F.2d 689, 693, 169 USPQ 597,
600 (CCPA 1971) (breadth should not be confused with
indefiniteness). As a result, we do not agree with the
examiner's contention (Answer at 5)that it is unclear which of
the following conditions (a) to (f) is covered by the claims for
the example of a macro A and objects B and C:
(a) macro A is applicable to B or C;
(b) macro A is applicable to B but not C;
(c) macro A is applicable to C but not B;
(d) macro A is not applicable to B or C;
(e) macro A is applicable to both B and C at the same time;
and
(f) macro A is not applicable to both B and C at the same
time.
The fact that the claims recite the step of, or means for,
"executing said predefined process on a particular object" makes
it clear that the predefined process A is executable with at
least one of the objects B and C, thereby ruling out condition
Appeal No. 95-4377
Application 08/160,348
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(d). Each of the remaining conditions is possible, depending on
the details of the predefined process.
B. The § 103 rejection
Cowart describes the features of the Windowsâ„¢ 3.1 operating
system. The features on which the examiner relies (Answer at 5-
6) as evidence of obviousness are: defining macros (at 421-23);
assigning an icon to a macro (at 741); using a cursor to select a
macro or object (at 424); changing the cursor shape (at 834);
using a macro to run another macro (at 427); and running a macro
in one or more applications (at 425). The examiner contends that
"it is within the level of skill of one or ordinary skill in the
art to create macros representing standard functions such as
Print, Cut, Copy, Paste, Open, etc... Such macros can be used as
universal macros." Thus, he continues, "the combined teaching of
assigning icons to macros, selecting icons with [a] cursor, and
running a macro by another macro or running an application by a
macro suggests that a user may define [a] universal macro, such
as [an] OPEN macro, assign[] the OPEN macro with a[n] OPEN macro
icon, select[] the OPEN macro icon to run another macro icon or
object" (Answer at 6). Furthermore,
changing cursor appearance is well known, and is disclosed
by Cowart on pages 834-836. It is well known to change the
cursor's appearance to indicate the state or function being
performed on the computer. Changing of the cursor
Appeal No. 95-4377
Application 08/160,348
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appearance in response to the associating of the cursor with
a macro is also to indicate a state of computer operation.
Thus it would have been obvious to one of ordinary skill in
the art, at the time the invention was made, to change the
appearance of the cursor in response to . . . associating
the cursor with a macro to indicate the state of operation.
[Answer at 6-7.]
Appellants do not dispute that Cowart discloses using a
macro to create a predefined process consisting of a pluraility
of keystrokes. However, they argue, and we agree, that Cowart
does not disclose or suggest that a macro can be initiated on an
object in response to selection of that object by a movable
cursor. Instead, it discloses (at 424, 741) initating a macro in
any of the following ways: (a) opening the Recorder window and
double-clicking on the macro to be run; (b) highlight the macro
and then choosing Macro, Run; (c) pressing the shortcut key
(e.g., Ctr + P) from any location; and (d) clicking on a icon
associated with the macro. None of these techniques involves
associating the macro with the cursor such that selection of an
object by the cursor causes the macro to be performed on or in
that object.
Appeal No. 95-4377
Application 08/160,348
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Appellants also correctly note that Cowart does not disclose
or suggest changing the appearance of the cursor to represent
selection of predefined process. Instead, Cowart (at 835-36)
describes various programs for changing the appearance of the
cursors to make them earlier to locate on the screen: "BCursor,"
which doubles the cursor's size and making it solid rather than
hollow; "ChngCrsr," which modifies the look and/or size of both
the hourglass and pointer cursors; "Microsoft Mouse Driver 8.1,"
which sets the accelaration speed, horizontal and vertical
sensitivity control, color, and size of the mouse pointer,
including making the size of the pointer increase in size as it
is moved; and "Cursorific!," which permits modification of the
look, shape, and size of all the Windows cursors, with some of
the available styles being shown in Figure 21.14, at 836.
Appeal No. 95-4377
Application 08/160,348
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For the foregoing reasons, the rejection of claims 1 and 7
under 35 U.S.C. § 103 as unpatentable for obviousness over Cowart
is reversed.

REVERSED
)
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-4377
Application 08/160,348
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Andrew J. Dillon
FELSMAN, BRADLEY, GUNTER & DILLON
Suite 350 Lakewood on the Park
7600B North Capital of Texas Highway
Austin, TX 78731