Ex parte WEN

Board of Patent Appeals and Interferences

Aug 11, 1998

07690176 (B.P.A.I. Aug. 11, 1998)

Application for patent filed April 12, 1991.1
1
Paper No. 28
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILSON K. WEN
and JOHN D. DI CAMILLO
______________
Appeal No. 96-1119
Application 07/690,1761
_______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and CARMICHAEL, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 2, 4, 6, 8, 10,
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Application 07/690,176
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12, 14 and 16. Claims 1, 3, 5, 7, 9, 11, 13 and 15 had been
previously cancelled. A first amendment after final rejection
was filed on October 11, 1994 but was denied entry by the
examiner [Paper No. 15]. A second amendment after final
rejection was filed on August 21, 1995 and was entered by the
examiner. This amendment cancelled claims 10, 12, 14 and 16.
A third amendment after final rejection was filed concurrently
with the reply brief on October 6, 1995. This amendment
amended claims 2, 4, 6 and 8 and was marked “Enter this
amendment” by the examiner, and the amendment has been
entered. As a result of the above amendments, this appeal is
directed to the rejections of claims 2, 4, 6 and 8, which
constitute all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for developing application software which is to be
operated on multiple processors.
Representative claim 2 is reproduced as follows:
2. A method for multiple software development,
comprising:
(a) a host computer directly monitoring at least one
master processor;
(b) the host computer indirectly monitoring a slave
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Application 07/690,176
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processor, for each master processor, through a slave
transmit/receive buffer in a memory shared by the master
processor and the slave processor; and
(c) using a tangible memory medium embodying the
computer program shown in FIGS. 5 through 182.
The examiner relies on the following references:
Fowler et al. (Fowler) 4,502,116 Feb. 26, 1985
Kneib 4,641,238 Feb. 3, 1987
Claims 2, 4, 6 and 8 stand rejected under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point
out and distinctly claim the invention. Claims 2, 4, 6 and 8
also stand rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter. Finally, claims 2, 4, 6 and 8
stand rejected under 35 U.S.C. § 102(b). As evidence of
anticipation the examiner offers Kneib with respect to claims
2, 4 and 6 and Fowler with respect to claim 8.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
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Application 07/690,176
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in support of the rejections and the evidence of anticipation
relied upon by the examiner as support for the prior art
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the
briefs along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that claims 2, 4, 6 and 8 particularly point out
the invention in a manner which complies with 35 U.S.C. § 112.
We are also of the view that claims 2, 4, 6 and 8 are directed
to appropriate subject matter under 35 U.S.C. § 101. Finally,
it is our view that the invention as set forth in claims 2, 4,
6 and 8 is not fully met by the disclosures of Kneib or
Fowler. Accordingly, we reverse.
We consider first the rejection of claims 2, 4, 6 and
8 under the second paragraph of 35 U.S.C. § 112. The
examiner’s final rejection made only a single objection to the
claims as follows:
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Application 07/690,176
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The claims are clearly not distinctly
claimed because the claim language
references “using (a) computer
program” located in the Figures [final
rejection, page 2].
This rejection appears to be based on a general proposition
that a claim which incorporates material from the drawings
cannot be in compliance with 35 U.S.C. § 112. This general
proposition is incorrect.
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
We fail to see how the computer program of Figures 5
through 182 could be more specifically recited than the
current incorporation of these figures into the claims. The
claims would not become clearer simply by writing the computer
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Application 07/690,176
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program as part of the claims as the examiner apparently
proposes. The artisan having considered the specification of
this application would have no difficulty ascertaining the
scope of the invention included within the phrase “the
computer program shown in FIGS. 5 through 182.” Therefore,
the rejection of claims 2, 4, 6 and 8 under the second
paragraph of 35 U.S.C. § 112 as set forth in the final
rejection is not sustained.
The examiner made several additional objections to the
claims under 35 U.S.C. § 112 in the examiner’s answer. These
objections were made for the first time in the examiner’s
answer, but the examiner never identified these objections as
constituting a new ground of rejection which they were. As a
result of these new objections under 35 U.S.C. § 112,
appellants filed an amendment concurrently with a reply brief
to specifically address these new objections to the claims.
As noted above, this amendment was entered by the examiner.
For reasons which remain a mystery at this point, the examiner
never addressed what effect the entered amendment had on the
rejection under 35 U.S.C. § 112.
The examiner objected to the terms “directly,”
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Application 07/690,176
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“indirectly” and “using” in claim 2, but never indicated why
these terms were considered to be imprecise [answer, page 3].
Since these terms would appear to be definite in view of the
specification, and since the examiner has not provided any
explanation in support of his objection, we do not sustain
this basis for objecting to the claims. The examiner also
noted several “antecedent basis problems” in the claims which
no longer exist in the amended claims now before us.
The examiner has also objected to the claims as being
incomplete and for being unclear as to how and where the
computer program is implemented or run [answer, pages 4-5].
The examiner provides no cogent explanation for these
objections and we are unable to come up with any on our own.
We see no reason why the artisan would not understand what is
within the scope of the claimed invention.
In summary, we do not sustain any of the examiner’s
objections to the claims under the second paragraph of 35
U.S.C.
§ 112.
We now consider the rejection of claims 2, 4, 6 and 8
under 35 U.S.C. § 101. The basis for this rejection is that
Appeal No. 96-1119
Application 07/690,176
8
the monitoring steps of claim 2 could be performed mentally by
a human and the invention of these claims is directed to a
computer program [answer, pages 5-9]. The amendment filed
with the reply brief amended claim 2 to recite that the
monitoring steps were performed by a host computer. Thus, to
the extent that the mental step rejection was appropriate, a
doubtful proposition at best, the examiner’s rejection does
not apply to the claims as amended. The amendment also
amended claim 2 to reflect that the computer program shown in
Figures 5 through 182 was embodied in a tangible memory
medium.
The examiner’s rejection of the claims, which was
based on the belief that the claims were directed to a
computer program, was not appropriate even without the
amendment. Claim 2 was clearly directed to the operations
performed by a computer and not to the computer program per
se. It is not clear to us why the method recited in claim 2
was indicated by the examiner as not belonging to any of the
four statutory classes of
35 U.S.C. § 101. A method is one of those statutory classes.
Additionally, a claim directed to a method performed on a
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Application 07/690,176
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computer is not the same as a claim directed to a computer
program per se. Thus, we do not sustain the rejection of the
claims under 35 U.S.C. § 101.
We now consider the rejection of claims 2, 4, 6 and 8
under 35 U.S.C. § 102(b) as anticipated by the disclosures of
Kneib or Fowler. Anticipation is established only when a
single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to the rejection of claims 2, 4 and 6,
the examiner states that “Kneib does not explicitly disclose
the computer program shown in Figs. 5 through 182, but this
feature is inherent in Kneib because both the Application and
the Kneib reference perform the same function. Therefore, the
equivalent of the program listed in Figs. 5 through 182 must
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Application 07/690,176
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be in Kneib” [answer, pages 9-10]. The examiner makes the
exact same statements with regard to the rejection of claim 8
as anticipated by Fowler [answer, page 11]. Thus, the
examiner’s position is that the claimed step of using the
computer program shown in Figures 5 through 182 is inherently
part of the operation of Kneib or Fowler.
Appellants argue that the software implementation of
the claims is not equivalent to the hardware implementation of
Kneib and Fowler. We agree. The fact that software can be
designed which is logically equivalent to hardware fails to
properly address the requirements of making a prior art
rejection. Independent claim 2 recites that a specific
program shown in Figures 5 through 182 must be used in
carrying out the method of the invention. There is no
evidence that the hardware of Kneib and Fowler uses this
specific program. There can be no anticipation of the using
step of claim 2 in the absence of a disclosure that the
incorporated computer program exists. The examiner has also
provided no evidence to support a position that the specific
computer program recited in claim 2 would have been obvious
over the hardware disclosed by Kneib and Fowler. Thus, there
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Application 07/690,176
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is no basis on this record to support a rejection of claims 2,
4, 6 and 8 under either 35 U.S.C. §§ 102 or 103.
In conclusion, we have not sustained any of the
examiner’s rejections of claims 2, 4, 6 and 8. Therefore, the
decision of the examiner rejecting claims 2, 4, 6 and 8 is
reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
James T. Carmichael )
Administrative Patent Judge )

Appeal No. 96-1119
Application 07/690,176
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Patent Department
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Appeal No. 96-1119
Application 07/690,176
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