Ex Parte Whitmyer

Board of Patent Appeals and Interferences

Sep 7, 2010

11566043 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/566,043 12/01/2006 Wesley W. Whitmyer JR. 03000-P0050A 5229
24126 7590 09/07/2010
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
CHEN, TE Y
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
09/07/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WESLEY W. WHITMYER JR.
____________

Appeal 2010-007670
Application 11/566,043
Technology Center 2100
____________

Before JOHN A. JEFFERY, JAMES D. THOMAS, and
CAROLYN D. THOMAS, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13, 15-19, and 21-27. Claims 14 and 20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b), and we heard the
appeal on September 1, 2010. We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant’s system sequentially opens and displays electronic files in
directories responsive to “next” and “previous” file requests. See generally
Spec. ¶¶ 0007-12. Claim 1 is illustrative:
1. A system for sequentially opening and displaying files
in a directory, comprising:

a processor;

at least one directory comprising a plurality of electronic
files arranged in an order;

software executing on said processor for receiving a
request to open and display a first one of the plurality of
electronic files;

software executing on said processor for receiving a next
file request; and

software executing on said processor for opening and
displaying a next file in the order from said at least one
directory upon receiving the next file request.

The Examiner relies on the following as evidence of unpatentability:
Buswell US 5,918,039 June 29, 1999

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THE REJECTION
The Examiner rejected claims 1-13, 15-19, and 21-27 under 35 U.S.C.
§ 102(b) as anticipated by Buswell. Ans. 3-7.2

CONTENTIONS
Regarding independent claim 1, the Examiner finds that Buswell
discloses a system for sequentially opening and displaying files with every
recited feature. Ans. 3-4. The Examiner relies extensively on Buswell’s
Graphical User Interface (GUI) engine, associated setup code, and
configuration data structure pointers which are said to open and display a
next “window setup file” in an order as the user cycles through configuration
menus. Ans. 3-4, 10-12.
Appellant argues that Buswell does not disclose software to receive
requests to open and display both “first” and “next” electronic files in order
from a directory as claimed. App. Br. 5-10; Reply Br. 2-4. Although
Appellant acknowledges that Buswell references a pointer to a next “area,”
these areas are said to be windows on a screen—not “next files in a
directory.” App. Br. 9-10; Reply Br. 3-4. According to Appellant, these
pointers merely point to an area structure or data, and do not open or display
a next file in the order from a directory as claimed. Id.
The issue before us, then, is as follows.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed October 16,
2009; (2) the Examiner’s Answer mailed January 20, 2010; and (3) the
Reply Brief filed March 19, 2010.
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Buswell discloses (1) a directory with electronic files arranged in an
order; (2) software for receiving requests to open and display both “first”
and “next” electronic files in the order from the directory; and (3) software
for opening and displaying a “next” file in the order from the directory upon
receiving the next file request?

FINDINGS OF FACT (FF)
1. Buswell’s system formats and displays GUI interfaces (e.g.,
Microsoft Windows and associated applications) on terminals 12 associated
with application server 10. Buswell, col. 1, ll. 6-11; col. 4, ll. 26-49; Fig. 1.
2. After the terminal’s operating system begins execution and various
drivers loaded at startup, the EXEC.COM code 325 is loaded which enables
the system to run the Setup User Interface Module 330 (“Setup Module”).
The Setup Module receives information from setup data files 418 and starts
the GUI engine 420 which, in turn, communicates with keyboard and mouse
drivers 422, 424, video input/output system 428, and video controller 430.
Buswell, col. 8, l. 21 – col. 9, l. 45; Figs. 4-5.
3. The setup process permits the user to specify the configuration
information of the terminal, including parameters such as network interface
and related configuration details, language, colors, and other parameters.
Once these parameters are specified, the data is stored in the connection data
files 440. Buswell, col. 9, ll. 57-64; Figs. 5-6.
4. During setup, the GUI engine provides a rudimentary GUI for
configuration. Setup begins by calling setup code 502 which, in turn, pulls
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information from setup data files 418 that identify the options available for
terminal configuration. The setup code also communicates bidirectionally
with RAM structure 504, and causes existing connection information from
the connection data files 440 to be written into the RAM structure. The GUI
engine also communicates bidirectionally with the RAM structure to set up
and display current information as “areas,” “groups,” and “selects.”
Buswell, col. 10, ll. 18-37; Fig. 6.
5. The setup code permits the user to cycle through plural
configuration menus for the terminal’s operating characteristics (e.g., the
language displayed on the terminal, the network connection method, etc.).
As the user cycles through configuration screens, the user can selectively
update the configuration data via the keyboard and mouse. The updated data
is maintained in the RAM structure before writing to the connection data
files. Buswell, col. 10, ll. 41-52.
6. Figure 7A shows a setup screen used to configure a terminal. The
screen is entitled “Connection Properties” and includes (1) an “area” 600
(i.e., the overall window in which the data appears); (2) “groups” 610 within
the area; and (3) “selects” 620 within the groups. The area includes a label
“Working Directory” with a text box located adjacent to this label. Buswell,
col. 10, ll. 45-47, 60-67; Fig. 7A.
7. Figures 7B1-7B3 show data structures associated with the
configuration software. A list of area pointers is found in AREA_LIST 700,
and the structures pointed to by the area list include boundaries, size, title,
and groups attached for all areas as defined by the SETUP process. All
areas currently being displayed are listed in DISP_AREA_LIST 702.
Buswell, col. 11, ll. 1-13; Figs. 7B1-7B3.
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8. The AREA_LIST 700 structure includes (1) a block for an area ID
712; (2) a pointer to the next area 714; (3) a pointer to the previous area 716;
and (4) a structure pointer 718. The structure pointer associated with each
area ID points to an area structure 715 that specifies various attributes of the
area (e.g., the area’s relative location on the display, size, title text, number
of groups, etc.). Buswell, col. 11, ll. 22-51; Fig. 7B1.
9. The FILE_LIST structure 708 is provided as a directory to bitmap
images used in multiple instances within the various areas, groups, and
selects. Buswell, col. 11, ll. 19-21; Fig. 7B1.
10. Buswell’s flash file system is partitioned into multiple single-
directory drives. Files are stored contiguously without fragmenting.
Buswell, col. 14, ll. 34-42.
11. Table 3A lists supported DOS functions in the IO.SYS module
which include (1) “Display Output” (Function 2); (2) “Open a File”
(Function 3Dh); and (3) “Get Current Directory” (Function 47h). Buswell,
col. 14, ll. 17-21; col. 17, l. 60 – col. 18, l. 65 (Table 3A).

PRINCIPLES OF LAW
To anticipate under § 102, the prior art reference “must not only
disclose all elements within the four corners of the document, but must also
disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v.
Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal
quotation marks omitted).
“Thus, it is not enough that the prior art reference discloses part of the
claimed invention, which an ordinary artisan might supplement to make the
whole, or that it includes multiple, distinct teachings that the artisan might
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somehow combine to achieve the claimed invention.” Id. at 1371. See also
In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference
must clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.”).

ANALYSIS
We are constrained by the record before us to find error in the
Examiner’s anticipation rejection of independent claim 1. On this record,
we find unavailing the Examiner’s reliance on Buswell’s GUI engine,
associated setup code, and configuration data structure pointers which are
said to open and display a next “window setup file” in an order from the
identified directory as the user cycles through configuration menus. Ans. 3-
4, 10-12.
We acknowledge that this cycling through configuration menus during
setup via different setup screens (i.e., “areas” in Buswell’s parlance) enables
the user to selectively update configuration data (FF 3-5) and, in doing so,
Buswell’s system would successively display different configuration
windows or “areas.” Although only one such “area” is shown in Figure 7A
enabling the user to select various connection properties (FF 6), the clear
import of Buswell’s discussion is that other “areas” would likewise be
displayed in succession to enable similar user selections pertaining to other
parameters such as displayed language, colors, etc. See FF 3-5. That
Buswell uses the term “cycling through” in connection with the
configuration screens (FF 5) only bolsters this conclusion.
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These setup screens are generated by a GUI engine which
communicates with a RAM structure to set up and display current
information as “areas,” “groups,” and “selects.” FF 4. Specifically, setup
code (1) pulls information from setup data files that identify the options
available for terminal configuration; (2) communicates bidirectionally with a
RAM structure; and (3) causes existing connection information from the
connection data files 440 to be written into the RAM structure. Id.
Based on this functionality, Buswell’s system therefore uses information
from the setup data files and connection data files to display the setup
screens. Id. Moreover, these screens are generated using data structures
specifying various attributes of the displayed area (e.g., the area’s relative
location on the display, size, title text, number of groups, etc.). FF 7-8.
But we fail to see how these screens are generated by receiving
successive requests to open and display “first” and “next” files arranged in
an order in the directory identified by the Examiner, and opening and
displaying a “next” file in that order from that directory as claimed.
Although the Examiner’s Answer is not a model of clarity on this point, the
Examiner apparently relies on Buswell’s setup data files 418 as
corresponding to the recited “first” and “next” files.3 The Examiner,
however, also cites (1) the working directory field of Figure 7A, or,

3 See Ans. 10 (referring to “window setup files” 418 in Fig. 6); see also Ans.
11 (alleging that Buswell displays a “next window setup file in an order as
the user cycles through a plurality of configuration menus”) (emphasis
added). Accord Ans. 12 (noting that Buswell’s system receives user requests
to “open and display a plurality of set-up electronic files of a directory
according to a ‘previous’ or ‘next’ area structure pointer sequence order
. . . .”) (emphasis added).
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alternatively, the (2) FILE_LIST structure 708 in Figure 7B1 as
corresponding to the recited directory. Ans. 4, 11.4
This position is problematic. First, the “working directory” is simply
a data entry field in the “Connection Properties” setup screen. FF 6. While
this field does indicate that there is a “working directory” associated with
this screen, the Examiner has not shown—nor can we find—anything in
Buswell associating this directory with electronic files that are successively
opened and displayed as claimed, let alone the multiple setup data files
which the Examiner apparently equates to the “first” and “next” files as
noted above.
The Examiner’s alternative reliance on Buswell’s FILE_LIST
structure 708 as corresponding to the recited directory (Ans. 4, 11) is a
closer question, however. Buswell unambiguously indicates that this data
structure is a directory to bitmap images used in multiple instances within
various areas, groups, and selects. FF 9. Since each setup screen is
displayed successively as noted previously, this functionality at least
suggests that some sort of request to “use” these bitmap images occurs in
succession when generating the setup screens. But we cannot say that this is
necessarily the case—a crucial requirement for inherent anticipation. See In
re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). In any
event, apart from merely referring to this directory, the Examiner does not
explain how or why this functionality would meet the disputed claim
limitations. Nor will we engage in such an inquiry here in the first instance
on appeal.

4 But see Ans. 4 (noting that the configuration software in Figures 7B1-7B3
provides “directory structures” such as the unit 700 in Figure 7B1).
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We therefore find the Examiner’s position dubious at best,
notwithstanding Buswell’s references to directories. But as noted above, the
Examiner does not explain how these directories contain the files that are
successively opened and displayed, let alone contain these files arranged in
an order as claimed.
And to the extent that the Examiner relies on some other data structure
in Buswell as corresponding to the recited directory (e.g., the AREA_LIST
700 data structure) (see Ans. 4), we also find such a position problematic.
Even assuming that this data structure can be considered a “directory” under
its broadest reasonable interpretation,5 it merely contains pointers to the next
and previous areas with respect to a particular area, and a structure pointer.
FF 8. As Appellant indicates (App. Br. 9; Reply Br. 4), these pointers
merely point to an area data structure, but the pointers themselves do not
open and display a “next” file in order from that directory. And even
assuming that these pointers can somehow be considered “files” within the
AREA_LIST 700 data structure “directory,” the Examiner has not explained
how these pointers open and display a next file in that directory.
Lastly, the Examiner’s reliance on Buswell’s partitioning the flash file
system into multiple single-directory drives (Ans. 11; FF 10) is unavailing.
The Examiner has not shown that the particular files used in Buswell’s setup
process (which are said to correspond to the “first” and “next” opened and
displayed files) would necessarily be contained in such a directory. Nor will
we engage in such an inquiry here in the first instance on appeal.

5 A “directory” is “[a] special kind of file which is used for indexing and
organizing other files. It provides information such as the name, type, and
size for each listed file. . . .” Steven M. Kaplan, Wiley Electrical and
Electronics Engineering Dictionary 199, IEEE Press (2004).
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We reach a similar conclusion regarding the Examiner’s reference to
various supported DOS functions in Buswell’s Table 3A. Ans. 11-12.
Although Buswell generally indicates that the (1) “Display Output”; (2)
“Open a File”; and (3) “Get Current Directory” functions are supported (FF
11), the Examiner does not explain how or why these functions are
necessarily used in connection with the particular files used in the setup
process that are said to correspond to the “first” and “next” opened and
displayed files.
Simply put, the Examiner’s mere reference to disparate features from
Buswell (Ans. 9-12) falls short of proving that these features are necessarily
used together, let alone that they collectively meet the claimed invention.
For anticipation, Buswell “must not only disclose all elements within the
four corners of the document, but must also disclose those elements arranged
as in the claim”—which it does not. See Net MoneyIN, 545 F.3d at 1369
(citation and internal quotation marks omitted).
We therefore are constrained by the record before us to find that the
Examiner erred in rejecting (1) claim 1; (2) independent claims 15 and 23
which recite commensurate limitations; and (3) claims dependent thereon for
similar reasons. Since this issue is dispositive of our reversal of these
claims, we need not address Appellant’s other arguments pertaining to claim
23 (App. Br. 13).

CONCLUSION
The Examiner erred in rejecting claims 1-13, 15-19, and 21-27 under
§ 102.

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ORDER
The Examiner’s decision rejecting claims 1-13, 15-19, and 21-27 is
reversed.

REVERSED

llw

ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619