Ex Parte Kodosky et al

Patent Trial and Appeal Board

Oct 31, 2012

11256918 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY L. KODOSKY, DARSHAN SHAH, and
STEVEN W. ROGERS
____________________

Appeal 2010-005390
Application 11/256,918
Technology Center 2100
____________________

Before JOSEPH L. DIXON, THU A. DANG,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-6, 8-11, and 13-15 (App. Br. 4). Claims 2, 7, 12, and 16-23 have
been cancelled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a system and method for creating
programs using graphical iconic-based techniques; wherein, a user may drag
and drop an icon on a configuration diagram including device icons
(representing devices) and program icons (representing code) to be
associated with the other icons while interacting with graphical program
nodes (Abstract).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 11 are exemplary:
1. A computer accessible memory medium that stores
program instructions for configuring a graphical program,
wherein the program instructions are executable by a processor
to perform:

displaying a first program icon on a display of a first
computer system, wherein the first program icon corresponds to
a first graphical program, wherein the graphical program
comprises a plurality of interconnected nodes which visually
indicate functionality of the graphical program;

displaying source code of a second program on the
display of the first computer system, wherein the source code of
the second program is of a text-based programming language;
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associating the first program icon into the source code of
the second program at a first location in response to user input;
and

inserting new source code into the second program at the
first location, wherein the new source code comprises a
function call to the first graphical program, wherein the new
source code is executable to invoke the first graphical program.

11. A system for graphically configuring a program,
comprising:

means for displaying a first program icon on a display of
a first computer system, wherein the first program icon
corresponds to a first graphical program, wherein the graphical
program comprises a plurality of interconnected nodes which
visually indicate functionality of the graphical program;

means for displaying source code of a second program on
the display of the first computer system, wherein the source
code of the second program is of a text-based programming
language;

means for associating the first program icon into the
source code of the second program at a first location in
response to user input; and

means for inserting new source code into the second
program at the first location, wherein the new source code
comprises a function call to the first graphical program,
wherein the new source code is executable to invoke the first
graphical program.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chainini US 5,760,788 Jun. 02, 1998
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IBM Technical Disclosure Bullentin, A context-sensitive drag
drop protocol for visual code generation, Research Disclosure
Journal, Mar. 1993 (hereinafter “IBM TDB”).

Claims 11 and 13-15 stand rejected under 35 U.S.C. § 101 as being
directed toward non-statutory subject matter.
Claims 1, 3-6, 8-11, and 13-15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over IBM TDB in view of Chainini.

II. ISSUES
The issues are whether the Examiner has erred in determining that:
1. Claim 11 is directed to non-statutory matter. In particular, the
issue turns on whether the claim is directed to software per se.
2. The combined teaching of IBM TDB and Chainini teaches or
would have suggested “inserting new source code into the second program at
the first location, wherein the new source code comprises a function call to
the first graphical program, wherein the new source code is executable to
invoke the first graphical program” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
IBM TDB
1. IBM TDB discloses a context-sensitive drag drop protocol for
visual code generation; wherein, when a user drops an icon on a code line,
the system replaces or inserts the source code represented by the icon in the
code line (p. 1). A visual builder embodiment enables the dragging of an
icon into the area designated for visual building which produces a visual
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representation of the object; wherein, the user may modify the visual object,
which changes its underlying code (id.).
Chainini
2. Chainini discloses graphical programming system and method
that enable a user to select a graphic object and an associated event, defining
actions that will occur when the event triggers to develop or modify a
graphical program (Abstract). In particular, the user may select a specific
action to be associated with a selected object, for example by indicating that
the object “Kongo King” is to be associated with the action “runs into the
wall” (Fig. 11; col. 15, ll. 35-40).
3. The user may drag and drop graphic objects from one point on
the screen to another in an effort to design and modify a graphic program
(col. 6, ll. 9-13).
4. The user may select an icon (key) related to a construct or a
function which adds plain text program statement to the code (Fig. 15; col.
17, ll. 53-63). For example, when the user selects a key labeled “MATH,” a
dialog box will open on the screen to assist the user adding mathematical
statements to the program (id.).
5. The system enables the user to freely enter and modify
commands of the text-based programming language to further design and
modify the graphical program; wherein, the user may simultaneously view
both an editor for the graphical program and the text-based programming
language whereby corresponding changes in either the graphical program or
the text-base programming are immediately reflected in the commands of
either (col. 4, ll. 23-34).
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IV. ANALYSIS
35 U.S.C. §101
Claims 11 and 13-15
As to independent claim 11, Appellants contend that the
“[S]pecification describes typical components of a computer system
configured to implement embodiments of the invention on pages 37-38 of
the specification and in Figure 4” including a “‘means for displaying’ [that]
cannot be simply code, but rather also requires hardware (e.g., CPU 160,
video display subsystem 180, etc.) to execute the code in order to display of
display device (App. Br. 11).
However, the Examiner finds that “that each of the means in the
system claim can be interpreted in view of the specification as [a] software
means” (Ans. 11). The Examiner notes that “page 6, lines 12-19 of the
specification describe[s] software means for graphically configuring a
program” and “the LabVIEW VI program [disclosed in the Specification]
can be the means for displaying the icons and source code” (id.).
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. “[A] machine is a
‘concrete thing, consisting of parts, or of certain devices and combination of
devices.’ This ‘includes every mechanical device or combination of
mechanical powers and devices to perform some function and produce a
certain effect or result.’” In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir.
2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007).
To determine whether the claims are directed to statutory matter, we
give the claims their broadest reasonable interpretation. See In re Zletz, 893
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F.2d 319 (Fed. Cir. 1989). Though we agree with the Examiner that
Specification does disclose that the LabVIEW VI program can be the means
for displaying the icons and source code (Ans. 11; Spec. 13:16-28 and 14:4-
20), we however look to the Specification for corresponding structure when
interpreting means-plus-function claim language.
Our reviewing Court has found that “[t]he plain and unambiguous
meaning of paragraph six is that one construing means-plus-function
language in a claim must look to the specification and interpret that language
in light of the corresponding structure, material, or acts described therein,
and equivalents thereof, to the extent that the specification provides such
disclosure.” In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994).
In particular, the Specification discloses a computer system having a
Central Processing Unit (CPU), main memory, a host bus, a video display
subsystem, hard drive, network interface and expansion bus as the system
that displays source code, associates a first program icon with a second
program and inserts new source code into the second program (Fig. 4; Spec.
37:10- 38:8). Thus, we reasonably interpret “means for displaying a first
program icon,” “means for displaying source code of a second program,”
“means for associating the first program icon into the source code of the
second program,” and “means for inserting new source code into the second
program at the first location” (claim 11) as the corresponding structural parts
of a machine, such as a computer having a CPU, memory, hard drive, and
video display. Therefore, the claimed limitations in the system claim cannot
reasonably “be interpreted in view of the specification as [a] software
means” (Ans. 11) as the Examiner finds. Rather, we find the system to be
directed a machine which is patentable subject matter.
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Accordingly, we find that Appellants have shown that the Examiner
erred in rejecting claim 11 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter, as well as that of dependent claims 13-15
standing therewith.
35 U.S.C. §103
Claims 1, 4-6, 9-11, 14, and 15
Appellants contend that IBM TDB and Chainini do “not teach
program icons which correspond to graphical programs” (App. Br. 12).
Appellants contend further that “Chainini’s graphical interface is a tool for
visualizing and modifying underlying textual code, but is not itself a
functional program” and, therefore, “an icon corresponding to the ‘graphical
program’ of Chainini would essentially be an icon corresponding to a
graphical interface for visualizing and modifying textual code” and
“manipulating such an icon would seem nonsensical in the context of IBM
TD[B]” and “non-functional” (id.). Appellants finally argue the “neither
reference teaches inserting a function call to a graphical program into
textual source code as a result of associating a program icon
representative of that graphical program into the textual source code”
(App. Br. 13).
However, the Examiner finds “that IBM TDB teaches in the first and
second paragraphs, an object icon that represents associated code
(effectively a function called by the graphical icon), therefore a graphical
representation of a program (graphical program), being dragged and dropped
into source code” (Ans. 15). The Examiner finds further that Chainini
discloses a “graphical program [which] is a combination of function calls to
the code that the graphical icon and or graphical constructs represent[]” (id.).
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We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not place any limitation on what “graphical program”
means, includes, or represents. The Specification discloses that a graphical
program enables a user to drag and drop a corresponding device icon into a
graphical program diagram (Spec. 13:9-11). Thus, we give “inserting new
source code into the second program at the first location, wherein the new
source code comprises a function call to the first graphical program” its
broadest reasonable interpretation as insertion of code associated with a
graphical icon, as consistent with the Specification and claim 1.
IBM TDB discloses a context-sensitive drag drop protocol for visual
code generation; wherein, when a user drops an icon on a code line, the
system inserts the source code represented by the icon in the code line (FF
1). We find that drag and drop feature comprises a graphical program. That
is, we find that IBM TDB’s context-sensitive drag drop protocol for visual
code generation comprises “inserting new source code into the second
program at the first location, wherein the new source code comprises a
function call to the first graphical program” (claim 1).
In addition, Chainini discloses a graphical programming system and
method that enables a user to associate a graphic object with an associated
event which develops or modifies a graphical program and enables the user
to drag-and-drop graphic objects from one point on the screen to another in
an effort to design and modify a graphic program (FF 2 and 3). The user can
select an icon (key), and in response, statements are added to the program
which correspond to a mathematical equation (FF 4). We find that
Chainini’s graphical programming system comprises a graphical program
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and graphical objects that enable the user to insert new source code
corresponding to mathematical equations at a specific location within the
graphical program. That is, we find that Chainini’s graphical programming
system comprises “inserting new source code into the second program at the
first location, wherein the new source code comprises a function call to the
first graphical program, wherein the new source code is executable to invoke
the first graphical program” (claim 1).
In view of our claim construction above, we find that the combination
of IBM TDB and Chainini at least suggests providing “inserting new source
code into the second program at the first location, wherein the new source
code comprises a function call to the first graphical program, wherein the
new source code is executable to invoke the first graphical program,” as
specifically required by claim 1.
Though Appellants also contend that “manipulating such an icon
would seem nonsensical in the context of IBM TD[B]” (App. Br. 12) and
that “modifying the object icons of IBM TD[B] to represent the ‘graphical
program’ of Chainini would result in a non-functional program” (id.), we
agree with the Examiner’s conclusion that the motivation for the
combination of IBM TDB and Chainini is to “allow[] for graphical
programming between multiple icons (each representing code) forming a
graphical program that can further be incorporated as a whole into the source
code” (Ans. 5).
Since IBM TDB discloses a context-sensitive drag drop protocol for
visual code generation that enables a user to drag and drop an icon on a code
line to insert code at the code line using the source code represented by the
icon (FF 1), we conclude that the combination of one known element (IBM
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TDB’s context-sensitive drag drop protocol) with another (Chainini’s
graphical programming system and method that enables a user to edit code
by selecting a graphical object) would have yielded predictable results to one
of ordinary skill in the art at the time of the invention. That is, we find that
context-sensitive drag drop protocol as taught by IBM TDB in addition to
Chainini’s graphical programming system and method is no more than a
simple arrangement of old elements, with each performing the same function
it had been known to perform, yielding no more than one would expect from
such an arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
presented no evidence that combining IBM TDB’s teaching of a
context-sensitive drag drop protocol with graphical programming system of
Chainini was “uniquely challenging or difficult for one of ordinary skill in
the art” or “represented an unobvious step over the prior art.” See Leapfrog
Enters. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing
KSR, 550 U.S. at 418-19).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting representative claim 1 under 35 U.S.C. § 103(a)
over IBM TDB in view of Chainini. Further, independent claims 6 and 11
having similar claim limitations and claims 4, 5, 9,10, 14, and 15 (depending
from claims 1, 6, and 11), having similar arguments, fall with claim 1.
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Claims 3, 8, and 13
Appellants argue that Chainini teaches “further embodiments of
graphically manipulating textual code;” yet, no “portion [of Chainini] relates
to associating first and second icons, which represent fundamentally
different types of programs (graphical and textual), and displaying the
source code of the textual program in response to associating the icon
corresponding to the graphical program with the icon corresponding to the
textual program” (App. Br. 14-15). However, the Examiner finds that
Chainini discloses “allowing for an association to be made between two
different graphical program elements where when the connection is
established the source code is automatically linked” (Ans. 16).
As noted supra, Chainini discloses that the user can freely edit the
commands of a text-based programming language to further design and
modify the graphical program while simultaneously viewing an editor for
the graphical program that illustrates the corresponding changes (FF 5). We
find a graphical program and a text-based programming language displays
comprise a first and second program icon. That is, Chainini’s associations
of a text-based programming language display and a graphical program
display comprise “associating the first program icon with the second
program icon in response to user input; wherein said displaying the source
code of the second program on the display of the first computer system is
automatically performed in response to said associating the first program
icon with the second program icon” (claim 3).
We therefore affirm the Examiner’s rejection of representative claim 3
under 35 U.S.C. § 103 (a) over IBM TDB in view of Chainini. Further,
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claims 8 and 13 (depending from claims 6 and 11), having similar claim
limitations, fall with claim 3.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 11 and 13-15 under 35 U.S.C. §
101 is reversed, while the Examiner’s rejection of claims 1, 3-6, 8-11, and
13-15 under 35 U.S.C. § 103(a) 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

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