Apple Inc.

Patent Trials and Appeals Board

Aug 6, 2020

2019002353 (P.T.A.B. Aug. 6, 2020)

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.
14/807,609 07/23/2015 Gregory D. Hughes 8888-57000 9599
81310 7590 08/06/2020
Kowert Hood Munyon Rankin & Goetzel (Apple)
1120 S. Capital of Texas Hwy
Building 2, Suite 300
Austin, TX 78746
EXAMINER
WYSZYNSKI, AUBREY H
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
08/06/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY D. HUGHES, CONRADO BLASCO,
GERARD R. WILLIAMS III, JACQUES ANTHONY
VIDRINE, JEFFRY E. GONION, TIMOTHY R. PAASKE,
and TRISTAN F. SCHAAP
Appeal 2019-002353
Application 14/807,609
Technology Center 2400

Before ALLEN R. MacDONALD, MELISSA A. HAAPALA, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Apple Inc. as the real party in interest.
Appeal Br. 2.
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Application 14/807,609

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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to marking valid return
targets to thwart “unauthorized access to data” such as an “attempt to gain
access to a computing device by employing a return oriented programming
(ROP) exploit.” Spec. ¶ 2.2 According to Appellant, “to ensur[e] programs
only return to instructions that are valid return targets . . . “landing pads are
inserted as markers in an instruction stream. The presence of a landing pad
corresponding to an address indicates that it is legal to return to that address.
All other returns are considered suspicious.” Spec. ¶ 5.
Claims 1, 8, and 15 are independent. Independent claim 1 is
reproduced below, with limitations at issue emphasized, and is illustrative of
the claimed subject matter:

1. A method comprising:
analyzing instructions of an instruction stream;
identifying a first instruction of said instructions as a
valid return target, wherein identifying said first instruction as a
valid return target comprises:
detecting a return instruction; and
determining the first instruction is a target of the
return instruction; and
inserting a landing pad corresponding to the first
instruction in the instruction stream, wherein the landing

2 Throughout this Decision we refer to: (1) Appellant’s Specification filed
July 23, 2015 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed
January 26, 2018; (3) the Appeal Brief filed July 26, 2018 (“Appeal Br.”);
and (4) the Examiner’s Answer (“Ans.”) mailed November 29, 2018; and (5)
the Reply Brief filed January 29, 2018 (“Reply Br.”).
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Application 14/807,609

3
pad indicates that the first instruction is a valid return
target.
Appeal Br. 18 (Claims Appendix).
REFERENCES
The references3 relied upon by the Examiner are:
Name Reference Date
Gutti et al. US 2008/0022065 A1 Jan. 24, 2008
Bhansali et al. US 8,910,124 B1 Dec. 9, 2014
Yamada et al. US 2016/0179546 A1 June 23, 2016
Momot US 2016/0328560 A1 Nov. 10, 2016

REJECTIONS
The Examiner rejects claims 1–6, 8–13,4 and 15–19 under 35 U.S.C.
§ 103 as unpatentable over Momot, Yamada, and Bhansali. Final Act. 3–6.
The Examiner rejects claims 7, 14, and 20 under 35 U.S.C. § 103 as
unpatentable over Momot, Yamada, Bhansali, and Gutti. Id. at 6–7.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2017).

3 All citations to the references use the first-named inventor or author only.
4 The Examiner does not include claim 13 in the rejection summary but does
reject claim 13 later in the Action. Final Act. 3, 5. Accordingly, we treat the
omission of claim 13 in the rejection summary as a clerical error.
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Independent claim 1 recites, in part, “inserting a landing pad
corresponding to the first instruction in the instruction stream, wherein the
landing pad indicates that the first instruction is a valid return target.” The
Examiner relies on Bhansali to teach the limitation at issue. Final Act. 4
(citing Bhansali 3:65–4:10). The portion of Bhansali cited by the Examiner
describes inserting a one-cycle NOP instruction “at the beginning of every
function of a function call.” Bhansali 4:3–4:7. The Examiner finds Bhansali
teaches the disputed limitation because Bhansali describes,
inserting “no operation” (NOP) instructions into desired
locations of a function call source code during compilation.
Bhansali also teaches a NOP instruction is inserted at the
beginning of every function of a function call. The specification
of the present invention, see paragraph 0006, recites “For each
valid return target found by the complier [sic], the complier [sic]
may insert a landing pad that corresponds to the valid return
target. In one embodiment, the landing pad may be a nop
instruction.”
Ans. 6.
Appellant acknowledges that Bhansali discloses the insertion of NOP
instructions. Reply Br. 2. Appellant, however, argues that “these inserted
NOP instructions do not indicate ‘that the first instruction is a valid return
target’ as recited [in claim 1]. On the contrary, the inserted NOP
instructions of Bhansali indicate locations where profiling instructions are to
be inserted.” Reply Br. 2 (emphasis omitted).
Appellant’s arguments are persuasive. Claim 1 requires that the
inserted “landing pad indicates that the first instruction is a valid return
target.” Even assuming that Bhansali’s inserted NOP instructions teach the
claimed inserting of a landing pad, the Examiner does not sufficiently show
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Application 14/807,609

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where Bhansali, or any of the other cited references, teaches that the inserted
NOP instructions indicate that the first instruction is a valid return target.
For example, in the Answer, the Examiner appears to revise the rejection,
stating the “examiner relies on the Momot references to teach ‘identifying a
first instruction of said instructions as a valid return target.’” Ans. 6 (citing
Momot ¶ 27). The Examiner, however, does not sufficiently show how
Momot’s discussion of “setting a value in a register,” alone, or in
combination with Bhansali’s discussion of inserting NOP instructions,
teaches that the landing pad indicates that the first instruction is a valid
return target. See Momot ¶ 27. Accordingly, we find persuasive
Appellant’s argument that the Examiner has not shown the cited
combination teaches “inserting a landing pad corresponding to the first
instruction in the instruction stream, wherein the landing pad indicates that
the first instruction is a valid return target,” as recited in claim 1.
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant’s other arguments. Accordingly, based on the record before us,
we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of independent
claim 1. We also reverse the rejection of independent claims 8 and 15,
which recite commensurate limitations, and of dependent claims 2–6, 9–13,
and 16–19, for similar reasons.
With respect to the remaining obviousness rejection of claim 7, 14,
and 20, the Examiner does not rely on the additionally cited reference, Gutti,
to cure the deficiency noted for claim 1. Final Act. 6. Accordingly, we do
not sustain this obviousness rejection for the reasons set forth above for
claim 1.
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CONCLUSION
We reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C.
§ 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–6,
8–13,
15–19
103 Momot, Yamada,
Bhansali
1–6,
8–13,
15–19
7, 14, 20 103 Momot, Yamada,
Bhansali, Gutti
7, 14, 20
Overall
Outcome
1–20

REVERSED