Ex Parte Martin et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10484541 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAURICE MARTIN, STEPHEN BRICKLEY, LEON AMDOUR,
ALEX KRAVETS, BRAIN FAN, DOMINIC INFANTE,
STUART LARKING, and PAUL ALDAMA
___________

Appeal 2009-013355
Application 10/484,541
Technology Center 2100
____________

Decided: April 21, 2010
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-98. We have jurisdiction under 35 U.S.C. § 6(b).
We Reverse.
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STATEMENT OF THE CASE
INVENTION
Appellants’ invention is directed to a system and process for
gathering, recording and validating requirements for computer applications
in the fields of requirements analysis for computer application development
and of computer application development. (Spec. 1).

ILLUSTRATIVE CLAIM
1. A method for collecting and validating requirements for a
proposed computer application, comprising:

creating a plurality of simulated pages for the proposed
computer application at least partly in response to user actions;

receiving a plurality of requirements for the proposed
computer application wherein the plurality of requirements are
configured to communicate to a designer or developer an
intended behavior of the proposed computer application;

creating a plurality of user interface components for the
proposed computer application;

in response to at least a first user action, associating one
or more requirements with at least one of the simulated pages or
user interface components to form a plurality of user interface
component requirement associations; and

displaying on a computer screen in a computer viewable
document;

the simulated pages;

the user interface components appearing on the simulated
pages;

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the requirements associated with the simulated pages;
and

the requirements associated with the user interface
components, wherein review of the computer viewable
document, including displayed simulated pages and displayed
requirements associated with the simulated pages, and
including displayed user interface components and displayed
requirements associated with the user interface components,
enables a user to validate the requirements for the proposed
computer application.

PATENT PRIOR ART
Bernardo US 6,247,032 B1 Jun. 12, 2001
Ceri

US 6,591,271 B1 Jul. 8, 2003

NON-PATENT PRIOR ART
Ed Bott et al, Special Edition Using Windows 95 with Internet Explorer 4.0,
Chapter 22, Que, February 17, 1998.

Danny Goodman, Dynamic HTML: The Definitive Reference, Chapter 8,
O'Reilly, July 1998.

W3C, Tables, August 25, 2000, W3C, Chapter 11 - Section 11: pages 1-3,
http:l/web.archive.orblweb/20000815093932/http://www.w3.org/TRlhtml4/s
tructItables.html

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THE REJECTIONS 1

1. The Examiner rejected claims 1, 3, 4, 8, 9, 10, 12, 13, 17, 18, 19, 25,
27, 30, 31, 43, 44, 50, 52, 55, 56, 68, 69, 77, 80, 81, 93, 94, 96, and 97
under 35 U.S.C. 102(e) as anticipated by Bernardo.

2. The Examiner rejected claims 5, 6, 7, 14, 15, 16, 36, 37, 61, 62, 86,
and 87 under 35 U.S.C. 103(a) as unpatentable over the combination
of Bernardo and Ceri.

3. The Examiner rejected claims 2, 11, 20- 24, 38, 39, 40, 41, 42, 45 -
49, 63 - 67, 70 - 75, 88 - 92, 95, and 98 under 35 U.S.C. 103(a) as
unpatentable over the combination of Bernardo and Oyagi.

4. The Examiner rejected claims 32, 35, 57, 59, 60, 82, 84, and 85 under
35 U.S.C. 103(a) as unpatentable over Bernardo.

1 The Notice of Appeal specifically states that claims 1-98 are appealed.
However, Appellants indicate in their principal Brief that they are only
appealing the Examiner’s final § 102 rejection of independent claims 1, 10,
19, 43, 68, 93, and 96. (App. Br. 7). Consistent with the holding of BPAI
precedential opinion Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI
2008), Appellants may not reserve arguments for some later time. This
decision considers only those arguments actually made. Arguments that
Appellants could have made but chose not to make in the Briefs are waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Under § 102, have Appellants shown the Examiner erred in
rejecting each independent claim on appeal by finding that
Bernardo discloses or describes displaying requirements for a
proposed (to be developed) computer application in association
with simulated pages and user interface components appearing
on the simulated pages (or displayed in a simulation area)?

PRINCIPLES OF LAW
“Whether an invention is anticipated is a question of fact.” Elan
Pharmaceuticals, Inc. v. Mayo Foundation for Medical Educ. and
Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003) (citing Hoover Group, Inc.
v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed. Cir. 1995)). 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,
1375-76 (Fed. Cir. 2005) (citation omitted).

FINDINGS OF FACTS
1. Appellants’ Specification discloses:
As used herein the term requirement(s) refers to a
statement or portion of a statement regarding the desired
or necessary behavior of a prospective or subject
computer implemented software application or a set of
proposed applications. A collection of one or more

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requirements is a subset of the information that is
typically provided to computer programmers and
typically enables them to develop a computer application.

(Spec. 9, ll. 15-20).

2. Bernardo discloses:

For example, options may include choices regarding
editing of text, colors, graphics or other objects, as well
as, choices regarding positioning of objects, creation of
new objects, deleting objects, adding links to other sites,
security provisions, and other choices. For example, FIG.
10 depicts a view that enables a content composer to add
site images or to view/update site images. As illustrated
the content composer selected the "add site images."
FIG. 11 shows selection of a source document
from which object images may be added to a Web site.
The content creator may be presented this type of view
when adding images stored elsewhere on a network. FIG.
11 depicts various selections/inputs to be made. Based on
a template for adding an image and the users input,
images may be added without writing or editing code.

(Col. 9, ll. 26-40).

3. Bernardo discloses:

Some embodiments of the invention may include a
preview function. A preview function may enable the
user to view the Web page as it is created. For example
as various options are selected, a preview of the option(s)
selected may be displayed for a user to observe. This
ability is provided by the tool based on the templates
without requiring the user to close the file and reopen it

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with a browser as would be the case if the user were
writing HTML code. Thus, the tool enables pages/objects
to be rendered on-the-fly.

(Col. 9, ll. 41-50).

The Examiner’s Findings

4. The Examiner finds that "Bernardo's requirements are received for the
proposed computer application by receiving the requirements through
selected options" ([Bernardo] column 9, lines 41-50: whereas the
options selected are required for display in at least the preview area,
and thus, options are requirements that are displayed in a
requirements/preview area). (Ans. 36).

5. The Examiner finds that “[a]dditionally, as explained in [Bernardo]
column 9, lines 26-50: the plurality of requirements/options, show an
intended behavior for the proposed computer application by
displaying selected/enabled requirements/options through a preview
(when the user selects an option/requirement, a preview can be
generated to visually show the result/intent of placing/enabling a
requirement on a simulated computer-application/page).” (Ans. 36-
37).

6. The Examiner finds that “[f]urthermore, as quoted from [Bernardo]
Column 9, lines 24-30, ‘the options present a user with various
choices . . . .’ and thus further supports options are presented/shown to
a user, such that the options/requirements can be shown in a preview
to visually show a simulated page with the selected
option(s)/requirement(s). Thus, the user is free to select any desired
option, whereas each selected option represents the intent to visually
display in a preview each selected option/requirement . . . .” (Ans. 37).

ANALYSIS
Independent claims 1, 10, 19, 43, 68, 93, and 96
We decide the question of whether Appellants have shown the
Examiner erred in finding under § 102 that Bernardo discloses or describes
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displaying requirements for a proposed (to be developed) computer
application in association with simulated pages and user interface
components appearing on the simulated pages (or displayed in a simulation
area). We note that each independent claim before us on appeal requires these
argued limitations (recited in commensurate language).
The Examiner reads Appellants’ requirements for a proposed (to be
developed) computer application on Bernardo’s “options.” (FF 4-6).
Appellants contend, inter alia, that (1) “receiving user selected
options is not the same as ‘receiving a plurality of requirements for the
proposed computer application wherein the plurality of requirements are
configured to communicate to a designer or developer an intended behavior
of the proposed computer application . . . .’” and, (2) “one viewing the
resulting Web page of Bernardo would not discern an association between a
displayed requirement and a simulated web page or user interface
component. Indeed, the preview of Bernardo would not display a simulated
page and display requirements associated with the simulated pages, and
would not display user interface components and display requirements
associated with the user interface components, as claimed.” (See App. Br. 12
regarding claim 1; see also similar arguments regarding independent claims
10, 19, 43, 68, 93, and 96 as set forth in the Briefs).
After considering the evidence before us, and the respective
arguments on both sides, we agree with Appellants that Bernardo is not an
anticipatory reference for essentially the same reasons argued in the Briefs.
At the outset, we observe that the Examiner has substantially mapped each
limitation of each independent claim on appeal to a portion of a single
column of Bernardo (column 9, lines 26-40 and particularly lines 41-50, and
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Fig. 8). Because the Examiner paints with a broad brush in making the
anticipation rejection, we are left to speculate as to the precise details of how
each argued claim limitation is expressly or inherently described by the
portion of column 9 relied on by the Examiner. We note that the Board is a
reviewing body and not a place of initial examination.2 Moreover, it is our
view that the more rigorous requirements of § 102 essentially require a one-
for-one mapping of each argued limitation to the corresponding portion of
the reference, which the Examiner must identify with particularity.
On this record, we also agree with Appellants’ contention that the
displayed requirements for a proposed (to be developed) computer
application in association with simulated pages and user interface
components appearing on the simulated pages (or displayed in a simulation
area) are not fairly met by Bernardo’s disclosure of options and a preview
function for viewing a web page as it is created. (See FF 2-3). Consistent
with Appellants’ Specification (FF 1), we broadly but reasonably construe
the claimed “requirements” to be a set or collection of information
statements describing the desired or necessary behavior of a computer
program to be developed, where such “requirements” are typically initially
provided to computer programmers for the purpose of developing a
computer program or application that meets the defined information
statements.

2 See 35 U.S.C. §6(b) (“The Board of Patent Appeals and Interferences shall,
on written appeal of an applicant, review adverse decisions of examiners
upon applications for patents . . . .”).
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Given our construction, we disagree with the Examiner’s finding that
Bernardo’s process of a user selecting various displayed choices (e.g.,
options such as color, graphics, objects, links, security provisions, etc.) to
create a web site from stored templates (FF 2) which may be previewed (FF
3) describes the claimed “requirements” that are displayed in association
with simulated pages and user interface components. Thus, based upon our
review of the cited portions of Bernardo (FF 2-3), we agree with Appellants
that the preview of Bernardo would not display a simulated (preview) page
and display requirements associated with the simulated pages and user
interface components within the meaning of Appellants’ independent claims.
(See App. Br. 12 regarding claim 1; see also similar arguments regarding
independent claims 10, 19, 43, 68, 93, and 96 as set forth in the Briefs).
We note that each of independent claims 1, 10, 19, 43, 68, 93, and 96
requires (in commensurate language) displaying requirements for a proposed
(to be developed) computer application in association with simulated pages
and user interface components appearing on the simulated pages (or displayed
in a simulation area). “[A]bsence from the reference of any claimed element
negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986).
Accordingly, we reverse the Examiner’s anticipation rejection of each
independent claim as being anticipated by Bernardo. Because we have
reversed the Examiner’s anticipation rejection of each independent claim on
appeal, we also reverse the Examiner’s rejections of each dependent on
appeal.

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CONCLUSION
The Examiner erred in finding under § 102 that Bernardo discloses or
describes displaying requirements for a proposed (to be developed)
computer application in association with simulated pages and user interface
components appearing on the simulated pages (or displayed in a simulation
area).

ORDER
We reverse the Examiner’s decision rejecting claims 1-98.

REVERSED

pgc

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