Ex Parte Kumhyr et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10351561 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID BRUCE KUMHYR, JOSEPH C. ROSS, MICHAEL
DAVID SKIBO, and MINTO TSAI
____________________

Appeal 2008-004709
Application 10/351,5611
Technology Center 2400
____________________

Decided:2 June 5, 2009
____________________

Before LEE E. BARRETT, LANCE LEONARD BARRY,
and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on January 23, 2003. The real party in interest is International
Business Machines Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter a new ground of rejection.

Appellants’ Invention
Appellants invented a method and system for providing a translator
with context information to facilitate the translation of a particular
ambiguous word or phrase. (Spec. 3, ll. 3-21.) As depicted in Figure 4,
upon receiving original text strings from a program file (402), a mock tool
(404) changes each of the text strings into an expanded text string by
attaching the filename of the source file, a key name and a value name pair
thereto. (Spec. 12, ll. 23-26.) The mock tool (404) outputs the expanded text
strings into output files that are stored in a database (412). (Spec. 13, ll. 10-
12.) The mock tool (404) also outputs mock files (406) including the
expanded text strings against which a set of test cases are run in order to
generate screen captures (408). (Spec. 13, ll. 15-20.) A correlator tool (414)
then associates each extended text string with a corresponding screen
capture, and subsequently forwards the correlated pairs to the translator
(416). (Spec. 14, ll. 6-14.)
Illustrative Claims
Independent claims 1, 12, and 22 illustrate the invention as follows:
1. A method for providing a context for a program to be translated,
wherein the program has one of more program files, the method comprising:
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generating a mock output for the one or more program files, wherein
each text string in the one or more program files is replaced with an
extended text string in the mock output;
generating a plurality of screen captures for the program; and
associating each extended text string in the mock output with a
corresponding one of the plurality of screen captures to form correlation
data.

12. A method for providing a context for a program to be translated,
wherein the program has one or more program files, the method comprising:
receiving a text search expression from a translator;
expanding one or more text strings into corresponding extended text
strings that each contains an identifying element adapted for use in
searching, said extended strings being included in correlation data;
searching said correlation data for the text search expression;
responsive to the text search expression matching apportion of one of
said extended text strings in the correlation data, identifying a screen capture
image associated with the extended text string; and
presenting the screen capture image.

22. A computer program product, in a computer readable medium, for
providing a context for a program to be translated, wherein the program has
one or more program files, the computer program product comprising:
instructions for generating a mock output for the one or more program
files, wherein each text string in the one or more program files is replaced
with an extended text string in the mock output that has been expanded to
contain an identifier for locating the extended text string during a search;
instructions for generating a plurality of screen captures for the
program; and
instructions for associating each extended text string in the mock
output with a corresponding one of the plurality of screen captures to form
correlation data.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Chou US 5,583,761 Dec. 10, 1996
Stone US 5,903,859 May 11, 1999
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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 3 and 5 through 10 stand rejected under
35 U.S.C. § 102(b) as being anticipated over Chou.
B. Claims 4 and 11 through 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Chou and Stone.

Appellants’ Contentions
1. Appellants argue that Chou does not teach replacing original text
strings in a program file with extended text strings in a mock output, as
recited in independent claim 1. (App. Br. 16-18, Reply Br. 3-5.) According
to Appellants, Chou teaches translating an original string to a target string,
which is not an extended string (i.e. a text string that has been augmented or
enlarged in quantity, volume, scope or size). (App. Br. 16-18,
Reply Br. 3-4.)
2. Appellants argue that the combination of Chou and Stone does not
teach expanding a text string into a corresponding extended text string
containing an identifying element adapted for use in searching the extended
text string in correlation data, as recited in independent claim 12. (App. Br.
21-22.)

Examiner’s Findings/Conclusions
1. The Examiner finds that Chou’s disclosure of providing a target text
string to replace an original text string teaches the extended text string, since
the disclosed target string performs the same functionality as the claimed
extended text string. (Ans. 10.)
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2. The Examiner finds that Stone’s disclosure of converting text strings
in a native language into other languages using a macro including a message
key that replaces the text strings complements Chou’s teachings to render
independent claim 12 unpatentable. (Ans. 13.)
II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that Chou
teaches replacing original text strings in a program file with extended text
strings in a mock output, as recited in independent claim 1?
2. Have Appellants shown that the Examiner erred in finding that the
combination of Chou and Stone teaches expanding a text string into a
corresponding extended text string containing an identifying element
adapted for use in searching the extended text string in correlation data, as
recited in independent claim 12?

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Chou
1. As depicted in Figures 8, Chou discloses an application
program language translator that includes an application specific translation
table (ASTT) for translating original strings (8C) in a selected language into
equivalent strings (8D) in a target language. (Col. 7, l. 65- col. 8, l. 17.)
2. Chou discloses pairing the original strings and target strings
with respective screen captures, and subsequently modifying the target
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strings by editing corresponding screen captures. (Col. 8, ll. 17-19, col. 9, ll.
13-34, ll. 59-61.)
Stone
3. As shown in Figure 2, Stone discloses a software translation
management system (200) that inserts a macro (210) into the source files of
a source code program (212) to generate an executable file (250) and text
strings in multiple languages. (Col. 4, ll. 22-29.)
4. In particular, the macro (210) and a dummy place holder (222)
are inserted into the location of the original text string in the source code
program to thereby derive a message key therefrom. Consequently, the
insertion, modification, and translation of the text string can be performed
without further updating the source code. (Col. 4, ll. 30-46.)

IV. PRINCIPLES OF LAW
Statutory Subject Matter
Our reviewing court has recently held that transitory, propagating
signals, such as carrier waves, are not within any of the four statutory
categories (process, machine, manufacture or composition of matter).
Therefore, a claim directed to computer instructions embodied in a signal is
not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007).

Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). "[T]he ordinary and
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customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313
(citations omitted).
"[T]he PTO 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)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
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Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).
Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 415, 417.
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The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
418).
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).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account “not only the specific teachings of
the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968) (citation omitted).

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V. CLAIM GROUPING
Appellants argue separately the patentability of the following groups:
(A) claims 1-3 and 5-10; (B) claim 4 and 11-23. In accordance with 37
C.F.R. § 41.37(c)(1)(vii), we will consider groups A and B above as
standing and falling respectively with claims 1 and 12.

VI. ANALYSIS
Claim 1
Independent claim 1 recites in relevant part replacing each text string
in a program file with an "extended text string" in a generated mock output
for the program file.
We first consider the scope and meaning of the phrase “extended text
string” which must be given its broadest reasonable interpretation consistent
with Appellant’s disclosure. As explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); See also In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted as
broadly as their terms reasonably allow”). Appellants’ Specification states
the following:
The mechanism includes a mock tool, which changes the text
strings from their original form to an expanded string
that allows for searching and unique identification.
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(Spec. 3, ll. 6-9.)

The Specification further states:
The mock tool, which may be a script, changes the text strings
in the program files from their original form to an expanded
string. The expanded string may contain, for example, the
filename of the source file and a key/value pair to enable the
string to be found in the product source.
(Spec. 12, ll. 24-29.)

Our reviewing court further states: “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips, 415 F.3d at 1321. Upon reviewing Appellants’ Specification, we
fail to find an express definition for the phrase “extended text string.” We,
therefore, construe the cited phrase consistent with its ordinary meaning as
provided in a dictionary. The Examiner has relied on the language of claim
as support for construing the phrase “extended text strings” to mean any
string that replaces an original string. (Ans. 9.) On the other hand,
Appellants assert that American Heritage College Dictionary, Fourth Edition
defines the term “extended” as “enlarged in area, range or scope”. Similarly,
it defines the term “expanded” as “increased or enlarged in quantity, size,
volume or scope.” (Reply. Br. 4.) Since the Examiner has failed to provide a
broader definition of the term “extended”, we will apply the definition
offered by Appellants.
As set forth in the Findings of Fact section, Chou discloses generating
target text strings to replace original text strings to thereby convert source
code in a first language into source code in another language. (FF. 1.)
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Further, Chou discloses pairing screen captures with each generated target
text string to determine the context of a string. (FF. 2) We agree with the
Examiner that Chou’s target text strings reasonably teaches the claimed
extended text strings. In particular, we find that, consistent with the adopted
definition above, Chou’s target text strings are extended or enlarged in size
so long as they exceed one character or more. We find nothing in
Appellants’ claim language that requires the extended text strings to be an
enlargement, an expansion, an extension or an increase in size of the original
text strings. While we agree with Appellants that Chou does not teach
expanding or extending the original text strings to generate the target text
strings, we also agree with the Examiner that the claim is not so limiting. It
merely requires that any extended, expanded or enlarged text strings be used
to replace the original text strings. We are thus satisfied that Chou’s
disclosure teaches such limitation. It follows that Appellants have not shown
that the Examiner erred in finding that Chou anticipates independent claim
1.
Claim 12
Independent claim 12 recites in relevant part expanding a text string
into a corresponding extended text string containing an identifying element
adapted for use in searching the extended text string in correlation data. As
noted, above, we find that Chou does not teach expanding an original text
string to generate a target text string. Further, we agree with Appellants that
Stone does not cure Chou’s deficiencies. As set forth in Findings of Fact,
Stone discloses replacing a text string in a source code with a dummy place
holder annexed to a macro to thereby derive a message key therefrom so as
to update the string without updating the source code associated therewith.
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(FF. 3-4.) We find that the annexation of the dummy place holder to the
macro can be construed as an extended text string that replaces the original
string in the source code. We find, however, that the annexed macro and
dummy place holder is not an extension, an expansion, or an increase in the
size of the original string itself, as required by the claim. It follows that
Appellants have shown that the Examiner erred in concluding that the
combination of Chou and Stone renders claim 12 unpatentable.

VII. NEW GROUND OF REJECTION
Independent claims 22 and 23 recite in relevant part a computer
program product in a computer readable medium.
Appellants’ Specification describes such transmission-type media to
include wireless communications links using radio frequency and light wave
transmissions. (Spec. 20, ll. 1-17.) We find that such transmissions
implicate a carrier wave or a signal modulated by a carrier over a
transmission medium. Therefore, independent claims 22 and 23 encompass
the use of a computer data signal embodied in a carrier wave to store,
transmit, or transfer information. A computer data signal embodied in a
carrier wave is a transitory, propagating signal not within any of the four
statutory categories, and is therefore non-statutory. See Nuijten, 500 F.3d at
1357. It follows that claims 22 and 23 are directed to non-statutory subject
matter.

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VIII. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding that
Chou anticipates claims 1 through 3, and 5 through 10, as set forth above.
2. Appellants have shown that the Examiner erred in concluding that the
combination of Chou and Stone renders claims 4, and 11 through 23
unpatentable, as set forth above.
3. We have entered a new ground of rejection against claims 22 and 23
as being directed to non-statutory subject matter.

IX. DECISION
1. We affirm the Examiner’s decision to reject claims 1 through 3, and 5
through 10.
2. We reverse the Examiner’s decision to reject claims 4 and 11 through
23.
3. We reject claims 22 and 23.
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).
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.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b)) 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 …
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(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

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