Ex Parte Kemp

Patent Trial and Appeal Board

Mar 29, 2013

11054118 (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KIRK O. KEMP
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Appeal 2010-010487
Application 11/054,118
Technology Center 2100
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Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 33, 39, 40, and 57-62. Claims 1-32, 34-38, and 41-56
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s invention is directed to a method and system for
determining differences between an existing graphical user interface (GUI)
and a current GUI by comparing a list of objects from the existing GUI with
a list of objects from the current GUI. See Spec. 24, Abstract of the
Disclosure.

Claim 33 is illustrative, with key disputed limitations emphasized:
33. A method for determining differences between an
existing graphical user interface (GUI) mapping file and a
current GUI, said method comprising:

constructing, by a processor of a computer system, a first
list of all parent objects from the existing GUI mapping file and
recursively adding thereto all child objects from the existing
GUI mapping file, wherein the existing GUI mapping file
pertains to a previous version of a program;

said processor constructing a second list of all parent
objects from the current GUI and recursively adding thereto all
child objects from the current GUI, wherein the current GUI
pertains to a current version of the program;

first ascertaining, by the processor, each object in the
first list that is not in the second list;

second ascertaining, by the processor, each object in the
second list that is not in the first list;

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after said first ascertaining and said second ascertaining,
displaying a removal message for each object in the first list
ascertained to not be in the second list and identified in the
removal message as not existing in the current GUI and having
a tag in a non-dynamic format consisting of a one-line
description of the object in the removal message; and

after said first ascertaining and said second ascertaining,
displaying an addition message for each object in the second
list ascertained to not be in the first list and identified in the
addition message as being new to the current GUI and having a
tag in a dynamic format consisting of more than a one-line
description of the object in the addition message.

The Examiner relies on the following as evidence of unpatentability:
Birum US Pat. App. Pub. No.: 2003/0221189 A1 Nov. 27, 2003
Lin US Pat. App. Pub. No.: 2003/0184585 A1 Oct. 2, 2003
Dubovsky US Pat. App. Pub. No.: 2003/0052917 A1 Mar. 20, 2003
DeBoskey US 6,073,161 Jun. 6, 2000

THE REJECTION
The Examiner rejected claims 33, 39, 40, and 57-62 under 35 U.S.C. §103(a)
as unpatentable over Birum, Lin, Dubovsky and DeBoskey. Ans. 3-11.1

ISSUES
Based upon our review of the record, the arguments proffered by
Appellant and the findings of the Examiner, we find the following issues to
be dispositive of the claims on appeal:

1 Throughout this opinion, we refer to the Appeal Brief filed January 25,
2010; and, the Examiner’s Answer mailed April 28, 2010.
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1. Has the Examiner erred by relying upon the Birum, Lin and
Dubovsky references to reject claims 33, 39, 40, and 57-62, despite
the Declaration under 37 C.F.R §1.131 submitted by Appellant on
July 24, 2009?
2. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“displaying a removal message for each object …” as set forth in
independent claim 33 and similarly set forth in independent claims
57 and 60?
3. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“displaying an addition message for each object in the second list
ascertained to not be in the first list…” as set forth in independent
claim 33 and similarly set forth in independent claims 57 and 60?
4. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“displaying a removal message for each object in the first list
ascertained to not be in the second list…” as set forth in
independent claim 33 and similarly set forth in independent claims
57 and 60?
5. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“displaying a removal message for each object in the first list
ascertained to not be in the second list…and having a tag in a non-
dynamic format consisting of a one-line description of the object in
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the removal message” as set forth in independent claim 33 and
similarly set forth in independent claims 57 and 60?
6. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“displaying an addition message for each object in the second list
ascertained to not be in the first list…and having a tag in a non-
dynamic format consisting of more than a one-line description of
the object in the addition message” as set forth in independent
claim 33 and similarly set forth in independent claims 57 and 60?
7. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“constructing, by a processor of a computer system, a first list of
all parent objects from the existing GUI mapping file and
recursively adding thereto all child objects from the existing GUI
mapping file, wherein the existing GUI mapping file pertains to a
previous version of a program” as set forth in independent claim
33 and similarly set forth in independent claims 57 and 60?
8. Under §103 has the Examiner erred by rejecting claims 33, 57 and
60 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“said processor constructing a second list of all parent objects from
the current GUI and recursively adding thereto all child objects
from the current GUI, wherein the current GUI pertains to a
current version of the program” as set forth in independent claim
33 and similarly set forth in independent claims 57 and 60?
9. Under §103 has the Examiner erred by rejecting claims 39, 58 and
61 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
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“generating the existing GUI mapping file during test of the
previous version of the program” as set forth in dependent claim
39 and similarly set forth in dependent claims 58 and 61?
10. Under §103 has the Examiner erred by rejecting claims 40, 59 and
62 because Birum, Lin, Dubovsky and DeBoskey fail to disclose
“wherein said displaying the removal message for a first object in
the first list that is ascertained to not be in the second list
comprises displaying that the first object does not exist in a current
build of a product under test” as set forth in dependent claim 40,
and similarly in dependent claims 59 and 62?

ANALYSIS
Appellant argues that the Birum, Lin and Dubovsky references are
disqualified as prior art based upon the declaration submitted by Appellant
under 37 C.F.R §1.131 on August 28, 2001 in which Appellant stated that
his invention was workable on January 1, 2001. App. Br. 10-13.
As the Examiner found, a general allegation that the invention was
workable and completed prior to the date of a reference is not sufficient to
satisfy 37 C.F.R §1.131, citing Ex Parte Saunders, 1883 C.D. 23, 23 O.G.
1224. Further, the Examiner found that the declaration submitted under 37
C.F.R §1.131 contained a mere statement of diligence without any evidence
of facts that would establish diligence. Ans. 12-13.
We find the Examiner’s findings persuasive. Consequently, we find
that Birum, Lin and Dubovsky are valid references against Appellant’s
claims.
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Next, Appellant argues that independent claims 33, 57 and 60
distinguish from the prior art by virtue of “displaying” various removal
messages and addition messages, without disputing the Examiner’s position
that the cited references actually produce the information set forth in the
claims. App. Br. 13-22, 31-39, and 48-57. Further, we find that Appellant
has not submitted a Reply Brief, effectively acceding to the Examiner’s
findings.
The Examiner finds that it would have been obvious to one of
ordinary skill in the art to locate a purge list as created by Birum and display
that list; however, the Examiner cites DeBoskey for teaching the display of a
list of “conflicts” between various versions of a program. Ans. 15-16.
Appellant also argues that the cited references fail to disclose the
display of a tag in a non-dynamic format having either a one-line
description, or more than a one-line description as set forth in independent
claims 33, 57 and 60. Ans. 22-24, 39-41, and 57-59.
The Examiner finds that it would be obvious to one of ordinary skill
in the art to tag each object identified with a one line description or more
that a one-line description. Ans. 17.
We find the Examiner’s position persuasive, and we note once again
that the Appellant has failed to dispute the Examiner’s position in a Reply
Brief. Further, we find the characterization of a tag as having a one-line
description or a greater than one-line description to be a merely descriptive
aspect of the tag having no functional utility. And, it is well settled that
"[n]onfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious." Ex parte Curry, 84 USPQ2d 1272,
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1274 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)),
aff’d, Appeal No. 2006-1003 (Fed. Cir. 2006).
Appellant also argues that the cited references fail to disclose the
construction of a first and second list of parent objects from the existing GUI
and the current GUI. App. Br. 24-27, 41-44, and 59-62.
The Examiner finds that Lin teaches that mapping files for GUI
applications are recursively constructed by examining the parent-child
relationship and then recursively adding to the list. Ans. 5, citing Lin,
¶[0041].
We find that such a mapping file necessarily includes a list of parent
objects and consequently we find the Examiner’s arguments persuasive.
Appellant argues that the cited references fail to show generating a
GUI mapping file during test of the previous version of the program, as set
forth in claims 39, 58 and 61. App. Br. 27-29, 45- 46, and 62-64.
The Examiner finds that Appellant has admitted that Dubovsky
discloses a GUI test tool that generates a GUI map but then argues that
Dubovsky does not disclose testing of any kind. Further, the Examiner finds
that Dubovsky’s test tool map would necessarily have been created during a
test with a previous version of the GUI. Ans. 19. Once again, Appellant has
failed to attempt to rebut this position in a Reply Brief.
We find the Examiner’s argument, noted above, which was not
rebutted, persuasive.
Finally, Appellant argues that the cited references fail to show
“wherein said displaying the removal message for a first object in
the first list that is ascertained to not be in the second list comprises
displaying that the first object does not exist in a current build of a product
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under test” as set forth in dependent claim 40, and similarly in dependent
claims 59 and 62. App. Br. 29-30, 46-48, and 64-65.
Once again the Examiner’s position is that one of ordinary skill in the
art would find it obvious to display such lists, pointing out that the lists are
evident in the cited references.
Finally, Appellant argues that the Examiner has not demonstrated a
rationale for combing the teachings of Birum, Lin, Dubovsky and
DeBoskey. App. Br. 34. Appellant argues that it would not have been
obvious to modify Birum to include the “display” taught by DeBoskey. Id.
As addressed by the Examiner, we find it beyond cavil that one of
ordinary skill in the art would find it obvious to display a list created by
Birum, whether or not DeBoskey is cited for that purpose.
Consequently we do not find Appellant’s arguments persuasive.

CONCLUSION
The Examiner did not err in rejecting claims 33, 39, 40, and 57-62
under § 103.
ORDER
The Examiner’s decision rejecting claims 33, 39, 40, and 57-62 is
affirmed.
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).

AFFIRMED

Vsh

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