Sunday, August 16, 2009

PC inherently capable of concurrent windows display (Ex parte Eino)

Ex parte Eino
Decided March 10, 2009

(Appeal 2008-3046, Appl. No. 10/283,281, Tech. Center 3700)

In Ex parte Eino, the Board of Patent Appeals and Interferences made the following finding of inherency: “We agree with the Examiner…that personal computers are inherently capable of opening a second window concurrently with the first window showing the same endoscopic image and control panel image as those displayed on said first display unit (FF12).” (Decision, p. 10.)

I think the Board really got this one wrong. In the broadest sense, a computer is capable of doing anything it’s programmed to do. But in my view, that computer is only inherently capable of doing a thing once it’s programmed to do that thing. (To hold otherwise – to hold that a computer is inherently capable of performing all functions – would lead to the conclusion that all computer-implemented features can be rejected with any prior art teaching a programmable computer.)

The best response to an inherency finding is a counterexample. Thus, using my interpretation of “inherently capable of,” a computer is not inherently capable of opening two windows concurrently because a computer with a text-based command line interface (rather than a graphical user interface) does not even use windows, much less open two windows concurrently.

In this case, I think the Board’s inherency finding went farther than the Examiner’s. The Examiner’s allegation used the words “inherently” and “conventionally”:
The second personal computer . . . having a second display . . . disclosed by Wang is inherently capable of displaying a second window. The computer is inherently capable of displaying said second window on said second display unit simultaneously with the endoscopic image and control panel image displayed in the first display unit. Computers are conventionally ascribed the capability of running multiple applications in separate windows.
(Ans. 6.)
The way I read it, the Examiner made two separate allegations, one about inherency and one about conventional computers. The Examiner’s inherency allegation was silent about a second program in the second window, which the appealed claim required. The Examiner handled this by making an allegation about the capabilities of a conventional computer. Thus, the Examiner didn't rely solely on inherency, but also relied on something akin to saying the "simultaneous display of windows" feature is well known, or to taking Official Notice of this feature.

In this case – as in many – I suspect that winning the battle on inherency doesn’t lead to winning the war on obviousness. Suppose you fight and force the Examiner to find a reference which teaches concurrent display of windows running different applications. Once this is added to the mix, the Board's obviousness finding in this case doesn’t seem unreasonable. Though the Board didn’t couch it in these terms, it seems like the Board used a substitution rationale. Something like this:
  • The primary reference, Wang, taught all limitations but two.
  • One of the missing limitations -- displaying a specific type of program (a repair manual) in second window -- is disclosed by the secondary reference, Corby.
  • The other missing limitation -- running a second app in a second window -- is inherent in Wang.
  • Plugging Corby’s repair manual application into the second window of Wang is obvious.
Thus, I'm not saying that it makes sense to fight this sort of inherency allegation. But I do think the Board's reasoning is way off base.

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