Ex Parte McMullin

Board of Patent Appeals and Interferences

Apr 22, 2010

10607127 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANGELINA MCMULLIN
____________________

Appeal 2009-004090
Application 10/607,127
Technology Center 2100
____________________

Decided: April 23, 2010
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004090
Application 10/607,127

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1-14, 19-
27, and 29-37 under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
According to Appellant, the invention relates to a program interface
that “encapsulates an existing spreadsheet, such that the spreadsheet itself is
the calculation engine of the program” (Spec. 26).

B. ILLUSTRATIVE CLAIMS
Claim 1 is exemplary and reproduced below:

1. A method of facilitating development of programs,
said method comprising:

providing an interface of a program;

including in the program a spreadsheet that is to execute
logic of the spreadsheet in response to data of the interface to
produce output, wherein the spreadsheet of the program is
unchangeable by a user; and

displaying the output.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Devine US 2002/0095399 A1 Jul. 18, 2002
Mujica US 2003/0117447 A1 Jun. 26, 2003
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Becerra US 2003/0169295 A1 Sep. 11, 2003

Claims 1-14, 19-27, and 29-37 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combined teachings of Becerra,
Devine, and Mujica.

II. ISSUES
Has the Examiner erred in concluding that the combined teachings of
Becerra, Devine, and Mujica would have suggested “providing an interface
of a program; [and] including in the program a spreadsheet that is to execute
logic of the spreadsheet in response to data of the interface to produce
output” (claim 1), as Appellant contends?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Becerra
1. Becerra discloses a system that creates interactive graphics for
variable input and output data, whereby the graphics behave in
accordance with algorithms relating the input data to the output data
(¶ [0008-0009]).
2. The system creates an interactive “control panel” by associating
graphic components, such as “user interface elements” (e.g., sliders,
buttons, and checkboxes) and charts, with input and output data of
spreadsheets (¶ [0010-0011]).
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3. “When cells are selected, any underlying algorithms or mathematical
formulas associating input data values with output data values are
automatically imported into the control panel file,” and, “[t]hus, the
algorithms and mathematical relationships originally created using the
spreadsheet program are automatically replicated in the control panel
file as a mathematical model of the relationship between selected
input and output cells” (¶ [0011]).
4. The graphic components can be associated with the spreadsheet cells
by an application program interface (API), which is provided by most
spreadsheet programs “for interacting with the [spreadsheet]
application and allowing other applications to communicate with it” (¶
[0037]).
5. A user can associate a graphic component with a spreadsheet cell by
either identifying the cell’s sheet number, row, and column in a
“Sheet Cell(s)” field of a “component properties dialog box” (¶ [0038]
and Fig. 3) or by using a graphic pointer, e.g., a mouse, to point-and-
click on a sheet number tab and then a cell (¶ [0039-0040] and Fig. 4).
Devine
6. Devine discloses a statistical process control (SPC) service that
evaluates the condition of a workpiece and alerts a worker to
production discrepancies (¶ [0007]).
7. “The SPC service has three parts: [a] machine operator is prompted to
enter the values of certain measured parameters into certain cells in a
spreadsheet (Retrieval)[; t]hese values then serve as inputs to certain
statistical calculations within the spreadsheet, and a message is
provided within another cell within the spreadsheet indicative of the
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outcome of a statistical test (Analysis)[; and t]he contents of this cell
are then published to any subscribers whenever a data value is entered
in the spreadsheet by the operator (Report)” (¶ [0449]).
Mujica
8. Mujica discloses a spreadsheet application that allows the user to lock
and unlock spreadsheet cells (Abstract; ¶ [0004]).

IV. PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). “[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)).
35 U.S.C. § 103(a)
“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
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be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). 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 is thus “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 417.
Analogous Art
“Under the correct analysis, any need or problem known in the field
of endeavor at the time of the invention and addressed by the patent [or
application at issue] can provide a reason for combining the elements in the
manner claimed.” KSR, 550 U.S. at 420. “Two criteria are relevant in
determining whether prior art is analogous: ‘(1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.’” Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59
(Fed.Cir.1992)).

V. ANALYSIS
In this Decision, we have considered only those arguments actually
made by Appellant. Arguments which Appellant could have made but did
not make in the Appeal Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Claims 1, 4, 9-13, 19, 21, 24-26, 29, 31, and 34-37
As to independent claim 1, Appellant argues that the combined
teachings of Becerra, Devine, and Mujica do not suggest “including in the
program a spreadsheet that is to execute logic of the spreadsheet in response
to data of the interface to produce output” because “there is no teaching,
suggestion or motivation to put a spreadsheet into the Becerra animation, if
it could even be done” (App. Br. 12-13).
The Examiner finds that Becerra teaches an interface program
“associated with spreadsheet execution,” but acknowledges that “Becerra
does not specifically teach that the spreadsheet itself is to execute its logic”
(Ans. 4). The Examiner finds that Devine cures this deficiency by teaching
“a spreadsheet statistical reporting method whereby a spreadsheet executes
internal statistical calculations on inputs” (id.).
Thus, an issue we address on appeal is whether the Examiner erred in
concluding that the combined teachings of Becerra, Devine, and Mujica
would have suggested “providing an interface of a program; [and] including
in the program a spreadsheet that is to execute logic of the spreadsheet in
response to data of the interface to produce output” (claim 1).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the Specification. See In re
Van Geuns, 988 F.2d at 1184.
Appellant appears to argue that the teachings of Becerra, Devine, and
Mujica do not suggest “put[ting] a spreadsheet into” an interface or its
program code. Such argument is not commensurate in scope with the
language of claim 1. That is, claim 1 does not recite the spreadsheet as
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being included within an interface or its program code. Nor does claim 1
recite the spreadsheet and interface as being part of the same program.
Rather, claim 1 merely recites “providing an interface of a program,” e.g.,
associated with a program, and “including in the program a spreadsheet.”
Thus, we broadly but reasonably construe the “interface” of claim 1 as being
associated with a program “including” a spreadsheet.
Claim 1 does not recite any limitation on what a program “including”
a spreadsheet means or represents. Thus, we broadly but reasonably
construe the program of claim 1 as merely having a spreadsheet capability,
e.g., encoding and/or operating the spreadsheet.
Claim 1 also does not recite any limitation on the spreadsheet itself,
other than reciting that it “is to execute logic of the spreadsheet in response
to data of the interface to produce output. The “is to” claim language
represents a mere intended use of the spreadsheet. That is, since the “is to
execute logic” feature is not positively recited as being performed, the
spreadsheet of claim 1 is not required to actually “execute logic.” Thus, we
broadly but reasonably construe the spreadsheet as being capable of
executing logic and producing an output in response to data of the interface.
Given the above claim constructions, we interpret “providing an
interface of a program; [and] including in the program a spreadsheet that is
to execute logic of the spreadsheet in response to data of the interface to
produce output” (claim 1) as reading on, but not limited to, the providing of
any interface that is associated with a spreadsheet application, where an
included spreadsheet of the spreadsheet application (e.g., encoded and/or
operated by the spreadsheet application) is capable of executing logic and
producing an output in response to data of the interface.
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Becerra discloses a system for creating graphic representations of
input and output data (FF 1). The system creates a control panel of
interactive graphic components, e.g., sliders and charts, by associating those
components with spreadsheet cells (FF 2). Any relationships between the
input and output values of the spreadsheet cells are replicated as mathematic
models of the control panel (FF 3). Because Becerra’s system accesses the
spreadsheet via the spreadsheet application (FF 4), an artisan would have
understood Becerra’s control panel as being an interface associated with a
spreadsheet application. Further, because input values, output values, and
mathematical models are imported from the spreadsheet to the control panel
(FF 4), an artisan would have understood the spreadsheet as being capable of
executing logic and producing an output in response to data of the control
panel. Thus, Becerra discloses an interface that is associated with a
spreadsheet application, where an included spreadsheet (e.g., encoded and/or
operated by the spreadsheet application) is capable of executing logic and
producing an output in response to data of the interface.
Devine discloses a statistical process control (SPC) service that
evaluates production quality (FF 6). The SPC service has three parts: a
measured value is entered into a spreadsheet cell; the measured value is
thereby input to “statistical calculations within the spreadsheet;” and an
outcome is provided to another spreadsheet cell (FF 7). Thus, like Becerra,
Devine discloses a spreadsheet that is capable of executing logic and
producing an output.
The creation of an interface by importing input data and logic of a
spreadsheet (as in the creation of Becerra’s control panel), where the
spreadsheet is capable of executing logic and producing an output in
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response to such input data (as in Becerra’s or Devine’s spreadsheet), is no
more than a simple arrangement of old elements with each performing the
same function it had been known to perform. See KSR, 550 U.S. at 417. We
therefore conclude that the combined teachings of Becerra, Devine, and
Mujica would have suggested “providing an interface of a program; [and]
including in the program a spreadsheet that is to execute logic of the
spreadsheet in response to data of the interface to produce output” (claim 1).
Appellant also argues that the combined teachings of Becerra, Devine,
and Mujica would not have suggested “wherein the spreadsheet of the
program is unchangeable by a user” (claim 1) because “importing the
concept of locking data cells from Mujica into Becerra would result in the
Becerra input data controls not being able to change the input within the
predetermined range, which goes against the teaching of Becerra” (App. Br.
13). Contrary to Appellant’s argument, only some of Becerra’s graphic
components allow the user to vary an input within a predetermined range
(e.g., sliders), while others merely turn an input on or off (e.g., buttons and
checkboxes) (FF 2). An artisan would have understood that such other
on/off components can be associated with the fixed values of locked
spreadsheet cells.
Appellant further argues that Becerra, Devine, and Mujica are not
analogous art. Becerra’s importing of spreadsheet data and replicating of
spreadsheet logic (FF 2) are both applicable to the claimed invention’s field
of computer programming (App. Br. 10). Devine and Mujica address
spreadsheet functionalities, i.e., calculations and cell locking, respectively
(FF 7-8), that are pertinent to the spreadsheet functions recited by claim 1.
We therefore conclude that Becerra’s teachings are within the claimed
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invention’s field of endeavor; and Devine’s and Mujica’s teachings are
reasonably pertinent to a problem with which the claimed invention is
involved. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir.
2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed.Cir.1992)).
Accordingly, for the above reasons, we affirm the rejection of claim 1
and dependent claims 4 and 9-13 under 35 U.S.C. § 103(a) as being
unpatentable over Becerra, Devine, and Mujica. As Appellant presents
similar arguments for independent claims 19 and 29, we also affirm the
rejection of those claims, and dependent claims 21, 24-26, 31, and 34-37
falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over
Becerra, Devine, and Mujica.
Claims 2, 20, and 30
Appellant contends that the applied art does not suggest “wherein the
spreadsheet of the program is hidden from the user” (claim 2) because “even
if for the sake of argument we assume that Devine teaches hiding the
spreadsheet, it makes no sense to do so in Becerra, since Becerra codes the
spreadsheet logic into the control panel” (App. Br. 14). We agree with
Appellant that Becerra codes the spreadsheet into the control panel (FF 2-3),
but find that the spreadsheet is thereby hidden from the user.
Accordingly, we affirm the rejection of claim 2 under 35 U.S.C. §
103(a) as being unpatentable over Becerra, Devine, and Mujica. As
Appellant presents similar arguments for claims 20 and 30 (App. Br. 14), we
also affirm the rejection of those claims under 35 U.S.C. § 103(a) as being
unpatentable over Becerra, Devine, and Mujica.
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Claim 3
Appellant contends that the applied art would not have suggested
“wherein having the spreadsheet execute logic of the spreadsheet avoids re-
coding of logic of the spreadsheet” (claim 3) because Becerra teaches
recoding the spreadsheet logic into the control panel (App. Br. 15). As
Becerra teaches that the spreadsheet logic is “automatically replicated in the
control panel file” (FF 3), we agree with Appellant’s argument.
Accordingly, we reverse the rejection of claim 3 under 35 U.S.C. §
103(a) as being unpatentable over Becerra, Devine, and Mujica.
Claim 5
Appellant contends that the applied art would not have suggested
“creating an input section of the interface based on an input tab of the
spreadsheet; and creating an output section of the interface based on a results
tab of the spreadsheet” (claim 5) because the cited tabs of Becerra’s Fig. 4
“are part of the spreadsheet itself from which data cells are taken” and not
part of the interface (App. Br. 16). Appellant further contends that “the tabs
in the spreadsheet from which Becerra imports data, formulas and
algorithms are simply worksheet tabs (i.e., sheet 1, sheet 2, etc.), and not
input-output tabs” (Reply Br. 7).
Claim 5 does not recite any limitation on what “input tab” and “output
tab” mean, include, or represent, other than that they are tabs of the
spreadsheet and that the “input section” and “output section” of the interface
are respectively “based on” those tabs. We therefore interpret claim 5 as
reading on, but not limited to, creating input and output components of the
interface based on tabs of the spreadsheet. An artisan would have
understood Becerra’s system as creating the graphic components of the
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control panel, for both input and output data, by pointing-and-clicking
(“based on”) on respective sheet tabs and cells of the spreadsheet (FF 2 and
5).
Accordingly, we affirm the rejection of claim 5 under 35 U.S.C. §
103(a) as being unpatentable over Becerra, Devine, and Mujica.
Claims 6, 22, and 32
Appellant contends that the applied art would not have suggested
“wherein the including comprises enabling interaction between the interface
and the spreadsheet” (claim 6) because “associating a component of the
control panel with a cell of the spreadsheet is simple [sic] not the same as
interaction between a spreadsheet and the interface” (App. Br. 16).
Claim 6 simply does not recite any limitation on what “enabling
interaction” means, includes, or represents, other than that “interaction”
would occur “between the interface and the spreadsheet.” An artisan would
have understood association of Becerra’s control panel components with
spreadsheet cells to be an “interaction between the interface and the
spreadsheet” (claim 6), especially in view of Becerra’s statement that the
graphic components are associated with spreadsheet cells by way of “an
application program interface (API) for interacting with the [spreadsheet]
application” (FF 4; emphasis added).
Accordingly, we affirm the rejection of claim 6 under 35 U.S.C. §
103(a) as being unpatentable over Becerra, Devine, and Mujica. As
Appellant presents similar arguments for claims 22 and 32 (App. Br. 16), we
also affirm the rejection of those claims under 35 U.S.C. § 103(a) as being
unpatentable over Becerra, Devine, and Mujica.
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Claims 7, 8, 23, and 33
Appellant contends that the applied art would not have suggested
“wherein the enabling interaction [of claim 6] comprises providing to the
spreadsheet one or more inputs from the interface” (claim 7) because
“Becerra … indicates that no inputs from the interface (i.e., the control
panel) are provided to the spreadsheet,” but rather “input data and other
information in spreadsheet cells are provided to the control panel originating
from the spreadsheet” (App. Br. 17). The Examiner responds that Becerra’s
input components provide association data to the spreadsheet (Ans. 18).
However, the Examiner does not cite any teaching of Becerra in support of
that contention.
Accordingly, we reverse the rejection of claim 7 and its dependent
claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Becerra,
Devine, and Mujica. As the Examiner rejects claims 7, 23, and 33 under the
same rationale, we also reverse the rejection of claims under 23 and 33
under 35 U.S.C. § 103(a) as being unpatentable over Becerra, Devine, and
Mujica.
Claims 14 and 27
Appellant contends that the applied art would not have suggested
“replacing by other than the user one or more calculations of the spreadsheet
and avoiding re-coding of the interface” (claim 14) because, though Becerra
changes input values of the control panel (e.g., provides a slider to change
input values), “[c]hanging the input data … does not replace any
calculations acting on the input data” (App. Br. 18). The Examiner finds
that changing input values of a spreadsheet calculation suggests changing
the spreadsheet calculation itself (Ans. 18). We agree with Appellant that
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changing an input value of a calculation is different than replacing that
calculation.
Accordingly, we reverse the rejection of claim 14 under 35 U.S.C. §
103(a) as being unpatentable over Becerra, Devine, and Mujica. As the
Examiner rejects claim 27 under the same rationale (Ans. 10), we also
reverse the rejection of claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over Becerra, Devine, and Mujica.

VI. CONCLUSIONS
(1) The Examiner did not err in concluding that claims 1, 2, 4-6, 9-
13, 19-22, 24-26, 29-32, and 34-37 are unpatentable under 35 U.S.C.
§ 103(a) over the teachings of Becerra, Devine, and Mujica.
(2) The Examiner erred in concluding that claims 3, 7, 8, 14, 23,
27, and 33 are unpatentable under 35 U.S.C. § 103(a) over the teachings of
Becerra, Devine, and Mujica.
(3) Claims 1, 2, 4-6, 9-13, 19-22, 24-26, 29-32, and 34-37 are not
patentable.

VII. DECISION
We affirm the Examiner’s rejection of claims 1, 2, 4-6, 9-13, 19-22,
24-26, 29-32, and 34-37 but reverse the Examiner’s rejection of claims 3, 7,
8, 14, 23, 27, and 33 under 35 U.S.C. § 103(a).
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-IN-PART

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