Ex Parte Adler

Patent Trial and Appeal Board

Sep 30, 2016

13419267 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/419,267 03/13/2012
23308 7590 10/04/2016
Royse Law Firm, PC
149 Commonwealth Dr., Suite 1001
Menlo Park, CA 94025
FIRST NAMED INVENTOR
Dustin Kurt Adler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5472.0lCl (SMC) 2815
EXAMINER
WONG, LESLIE
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
RLPatentDoc@rroyselaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUSTIN KURT ADLER
Appeal2015-002868
Application 13/419,267
Technology Center 2100
Before JOHNNY A. KUMAR, JOHNF. HORVATH, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-27. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm in part and enter new grounds of rejection in accordance
with 37 C.F.R. § 41.50(b). 2
1 The Appeal Brief identifies Group-A Autosports, Inc. as the real party in
interest. App. Br. 2.
2 Our Decision refers to Appellant's Appeal Brief filed June 2, 2014 ("App.
Br."); Appellant's Reply Brief filed December 23, 2014 ("Reply Br."); Final
Office Action mailed January 6, 2014 ("Final Act."); Examiner's Answer
Appeal2015-002868
Application 13/419,267
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 20, 26, and 27 are independent claims. Claims 1, 26, and 27
are reproduced below:
1. A system comprising:
a computing device;
operating system logic configured to run on the computing
device and stored on a computer readable media of the
computing device;
a database stored on a computer readable media and
including compiled code of computer programs, the compiled
code of one of the computer programs being divided into several
data records;
database management logic configured for accessing the
database; and
code execution logic configured to retrieve the compiled
code from the data records by executing one or more queries on
the database management logic, and to execute the retrieved code
on the operating system logic.
26. A system comprising:
a computing device;
operating system logic configured to run on the computing
device and stored on a computer readable media of the
computing device;
a database stored on a computer readable media and
including source code of at least one computer program, the
source code of one of the at least one computer program being
divided into several data records;
mailed October 23, 2014 ("Ans."); and Appellant's Specification filed
March 13, 2012 ("Spec.").
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database management logic configured for accessing the
database; and
code compilation logic configured to retrieve the source
code from the data records by executing one or more queries on
the database management logic, and to compile the retrieved
source code on the operating system logic.
27. A system comprising:
a computing device;
operating system logic configured to run on the computing
device and stored on a computer readable media of the
computing device;
a database stored on a computer readable media and
including data records configured to store compiled code of a
computer program;
code management logic configured to provision an
application to the computing device by sending the database to
the computing device via a network;
database management logic configured for accessing the
database; and
code execution logic configured to retrieve the compiled
code from the data records by executing one or more queries on
the database management logic, and to execute the retrieved code
on the operating system logic.
Krishnaswamy et al.
Zee
Castro et al.
Pfleiger et al.
Gilboa
Piehler et al.
References
US 2004/0225459 Al
US 7,174,544 B2
US 2008/0065590 Al
US 7,472,112 B2
US 7,971,194 Bl
US 8,032,860 B2
3
Nov. 11, 2004
Feb. 6,2007
Mar. 13, 2008
Dec. 30, 2008
June 28, 2011
Oct. 4, 2011
Appeal2015-002868
Application 13/419,267
Examiner's Rejections
Claims 1-6, 10, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zee and Gilboa. Final Act. 8-11.
Claims 7, 11-14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zee, Gilboa, and Piehler. Final Act. 11-14.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zee, Gilboa, and Pfleiger. Final Act. 14--16.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zee, Gilboa, and Krishnaswamy. Final Act. 16-17.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zee, Gilboa, and Castro. Final Act. 17-18.
Claim 26 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Zee. Final Act. 6-7.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zee and Krishnaswamy. Final Act. 19-22.
Claims 20-22 and 25 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Pfleiger. Final Act. 3-5.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pfleiger and Zee. Final Act. 18-19.
ANALYSIS
Rejections of Claims 20-25
The Examiner has maintained the rejections of claims 20-25 (see Ans.
3-5, 18-19), and Appellant does not address these rejections. As such, we
summarily sustain the rejections of claims 20-25. See MPEP 1205.02 ("If a
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Application 13/419,267
ground of rejection stated by the examiner is not addressed in the appellant's
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner's answer.").
Rejections of Claims 1-19
Appellant contends Gilboa does not teach or suggest "compiled code
of one of the computer programs being divided into several data records," as
recited in claim 1. App. Br. 23-24; Reply Br. 9-11. We are not persuaded.
As the Examiner correctly found, Gilboa teaches, upon receiving an
application request, searching for source code corresponding to the
application requested, compiling it, and returning it to the requesting client.
See Final Act. 9 (citing Gilboa, col. 7, 11. 25-29, 58-61; col. 8, 11. 62-64; col.
9, 11. 10-15, 40-44); Ans. 26; see Gilboa, col. 7, 11. 25-29 ("GmlScript
server engine 210 is configured to search database 208 for GmlScript source
code corresponding to an application request received from a GmlScript
client, compile the source code, and communicate the results of the
compilation to the requesting GmlScript client.").
In describing the application fetching process, Gilboa discloses that
"[t]he request for an application may be a request for source code or portion
thereof for an application, a request for one or more source files related to
the application, or a request for a portion of an application or the entire
application." Gilboa, col. 8, 11. 32-35. Furthermore, "[t]he fetched source
code may [be] contained in one or more source files." Gilboa, col. 8, 11. 52-
54. Thus, Gilboa teaches that the source code for one application may be
stored in multiple files (records).
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Gilboa further teaches storing compiled files corresponding to source
files. For example, Gilboa discloses: "GmlScript application repository 212
(from FIG. 2) comprises two storage areas: a storage area 508 for storing
GmlScript source files (*.gs files), and a cache or storage area 510 for
storing compiled files (e.g., JavaScript *.js files) corresponding to the
GmlScript source files." Gilboa, col. 9, 11. 38--44. Gilboa further discloses:
"Fetcher 502 is also configured to check cache 510 for the existence of a
compiled file (a 'program.js' file) corresponding to source code file
program.gs (indicated by the arrow from fetcher 502 to storage 51 O)."
Gilboa, col. 9, 11. 60-63.
Therefore, Gilboa discloses that an application (program) may have
multiple associated source files, and it discloses a storage area for storing
compiled files corresponding to the source files. As such, Gilboa teaches, or
at least suggests, that, for an application having multiple separate source
files, there will be separate compiled files corresponding to the multiple
source files. Thus, we agree with the Examiner's finding that Gilboa teaches
or suggests "compiled code of one of the computer programs being divided
into several data records."
Appellant further contends the Examiner has not provided an adequate
rationale to combine Zee and Gilboa. App. Br. 24--25; Reply Br. 11-15.
We disagree. In rejecting claim 1, the Examiner explained that it would
have been obvious to combine Zee and Gilboa "to facilitate development of
applications by allowing reusing of already existing applications, process
request for a compiled source file and as such reduce[] costs for
maintenance." Final Act. 9. As explained above, Gilboa teaches storing
compiled code corresponding to source code files and further discloses
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checking for the existence of a compiled file corresponding to a requested
source code file. Gilboa, col. 9, 11. 38--44, 11. 60-63. Thus, Gilboa teaches
reusing code that is already compiled, rather than compiling requested
source code each time it is requested, supporting the Examiner's rationale.
Appellant argues:
Notwithstanding that Gilboa seemingly does not offer any
relevant teaching, it is not difficult to imagine that Zee could be
changed such that when a JAVA class file is requested and
compiled, the resulting compilation is divided into several pieces
with each being stored in a separate data record in the database,
as taught by the Appellant's specification, rather than stored as a
single record in the database, as taught by Zee. However, the
Examiner's justifications to modify Zee do not support such a
change.
App. Br. 25.
Contrary to Appellant's argument, we agree with the Examiner's
finding that Gilboa teaches or suggests "compiled code of one of the
computer programs being divided into several data records;" and; thus;
Gilboa offers a relevant teaching. The combination presented by the
Examiner is no more than a combination of familiar elements that yields
predictable results, providing a further rational underpinning for the
Examiner's conclusion of obviousness. See KSR Int 'l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007).
Because we are not persuaded of error in the Examiner's conclusion
of obviousness, we sustain the rejection of claim 1, as well as the rejections
of claims 2-19, for which Appellant does not offer additional persuasive
arguments for patentability.
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Rejection of Claim 27
With respect to the rejection of claim 27, Appellant contends that the
combination of Zee and Krishnaswamy is improper because Krishnaswamy
is not analogous art. App. Br. 26-32; Reply Br. 15-17. A prior art
reference is analogous to an application (1) if it is from the same field of
endeavor as the application, regardless of the problem addressed, or (2) if
the reference is not within the field of the inventor's endeavor, it is
nonetheless reasonably pertinent to the particular problem with which the
inventor is involved. In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
The Examiner determined that Krishnaswamy is analogous art
because it is within the same field of endeavor. Final Act. 21; Ans. 31-32.
Appellant contends the field of endeavor is "computer programming and
provisioning." App. Br. 28. Appellant contends Krishnaswamy "is directed
to 'the testing of integrated circuits (I Cs), and more particularly to
developing a test program for automated semiconductor test equipment
(ATE)"' and, therefore, is not in the same field of endeavor. App. Br. 29
(quoting Krishnaswamy i-f 3).
Although Krishnaswamy is indeed directed to the testing of integrated
circuits, Krishnaswamy more particularly discloses developing test programs
to be executed by a computer for such testing, as the Examiner correctly
found. See Ans. 31 (citing Krishnaswamyi-fi-f 53, 57, Fig. 4). Krishnaswamy
discloses:
Referring to FIG. 4, the test program compiler 400 acts in part as
a code generator including a translator section 402 to translate a
test program developer's source files 404 describing tests and
associated parameters into object-oriented constructs, such as
C++ code. A compiler section 406, in tum, compiles and links
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the code into executables, e.g., DLLs, to create the test program
that may be executed by the tester system.
Krishnaswamy i-f 51.
Krishnaswamy's disclosure of developing and provisioning programs
for integrated circuit testing is within the field of endeavor of "computer
programming and provisioning," as characterized by Appellant. As such, we
are not persuaded the Examiner erred in relying on the teachings of
Krishnaswamy in combination with those of Zee.
Appellant also contends
the Examiner has never explained the proposed modification to
the primary reference with sufficient definiteness that the
Appellant can assess whether there is a reasonable expectation of
success, whether the combination would work for its intended
purpose, or whether the combination would change the principle
of operation of the primary reference.
App. Br. 32. In particular, Appellant argues that, in light of the Examiner's
mapping Zee's JAVA providing servers 10 and 12 to the claimed
"computing device," it is unclear why a DLL (mapped to the claimed
"database") would be sent to the JAVA providing servers according to the
limitation of claim 27 reciting "provision[ing] an application to the
computing device by sending the database to the computing device via a
network." App. Br. 34--35.
We have reviewed the Examiner's rejection of claim 27, and we
affirm the rejection, provide the following clarification, and designate our
affirmance a new ground of rejection. Although it is true that the Examiner
mapped JAVA providing servers 10 and 12 to the first instance of "a
computing device" in claim 27 (see Final Act. 19), in subsequent limitations,
the Examiner additionally mapped data processing systems 30 and 32 to the
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computing device. Final Act. 19-20. For example, the Examiner found
Zee' s disclosure of transmitting a native component to data processing
system 30 or 32 teaches the claimed "code execution logic," which is
configured to "execute the retrieved code on the operating system logic."
Final Act. 20 (citing, inter alia, Zee, col. 7, 11. 62---66, Fig. 3 ). Zee discloses
that "a corresponding native component is read out from the database 20b or
22b, to then be transmitted to the data processing system 30 or 32 and
executed therein." Zee, col. 7, 11. 63---66 (emphasis added). Thus, Zee
discloses that the execution of the program occurs at data processing system
30 or 32.
Appellant argues that "[ t ]he most concrete statement concerning how
Zee would be modified, in the Examiner's response, is that the DLL [of
Krishnaswamy] would be 'loaded on Zee's invention' which is as lacking in
specificity as the original rejection." App. Br. 34. Based on the Examiner's
findings that Zee teaches the retrieved code is executed on data processing
system 30, 32, the Examiner's proposed modification of Zee is providing a
DLL (dynamic link library), as taught in Krishnaswamy, to the data
processing system (mapped to the claimed "computing device") of Zee.
We find the evidence supports the Examiner's conclusion of
obviousness as to claim 27, but because our decision, in addressing
Appellant's arguments, provides additional explanation that clarifies the
Examiner's rejection, we designate our affirmance of the rejection under
35 U.S.C. § 103(a) as a new ground of rejection.
Rejection of Claim 26
Appellant contends the Examiner erred in finding Zee discloses
"source code of one of the at least one computer program being divided into
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several data records," as recited in claim 26. App. Br. 15-16. Appellant
does not dispute the Examiner's finding that Zee's JAVA class files disclose
"source code." See Reply Br. 2 ("Appellant agrees that the JAVA class files
constitute source code."). Rather, Appellant argues the Examiner has not
shown Zee discloses dividing source code of one computer program into
several data records. App. Br. 16-18; Reply Br. 2-3. According to
Appellant, "[ n ]owhere does Zee map more than one JAVA class file to a
single native component, though the reference does several times map a
single JAVA class file to a single native component." App. Br. 17.
We have reviewed the Examiner's findings with respect to Zee, and
we are persuaded that the Examiner has not shown Zee expressly discloses
dividing source code of one program into several data records. See Final
Act. 6; Ans. 23-25. For example, the Examiner found Zee discloses:
a compile-on-demand service network provides various JAVA
programs (e.g., source codes) via the Internet. In the case that
there is no compiled native component \~1hich matches the kind
of the data processing system having requested a service, the data
processing system accesses the JAVA program providing server
10 or 12 ... and downloads the designated JAVA class file (e.g.,
source code) (col. 7, lines 25-27, lines 2-5; col. 8, lines 2-5).
Ans. 25 (emphases removed). This finding, however, does not explain how
Zee expressly discloses source code for a single program divided into
several records. Rather, it discloses downloading "the designated JAVA
class file," not multiple class files pertaining to a single program.
As such, we do not sustain the Examiner's rejection of claim 26 as
anticipated by Zee under 35 U.S.C. § 102(b ).
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New Grounds of Rejection under 35 US.C. § 103
Claim 26
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). Claim 26 is rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zee in view of the knowledge of a
person of ordinary skill in the art, as evidenced by Gilboa.
As discussed above, we are persuaded that the Examiner has not
shown Zee expressly discloses dividing source code of one program into
several data records. However, we find that having source code of a single
program divided into several data records was well known in the prior art, as
evidenced by the teachings of Gilboa. For example, Gilboa discloses:
The request for an application may be a request for source code
or portion thereof for an application, a request for one or more
source files related to the application, or a request for a portion
of an application or the entire application. In one embodiment,
the request for an application may identify one or more source
files requested for the application.
Gilboa, col. 8, 11. 32-37. Gilboa further teaches: "GmlScript server engine
210 is configured to search GmlScript application repository 212 and fetch
GmlScript source code corresponding to the application request (step 408).
The fetched source code may [be] contained in one or more source files."
Gilboa, col. 8, 11. 50-54. These passages of Gilboa make clear that dividing
source code of one program into several records or files was well known and
within the technical grasp of a person of ordinary skill in the art as of the
relevant time.
In addition, we agree with the Examiner's findings that Zee discloses
the remaining limitations of claim 26. See Final Act. 6-7. Appellant notes,
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but does not argue, an additional alleged distinction of claim 26 over Zee.
See App. Br. 10. In particular, Appellant states, "although it is agreed that
the JAVA program providing servers 10, 12 of Zee store JAVA class files,
Zee never indicates that the JAVA class files are stored in a database. To
the extent that Zee mentions databases, they are always for storing compiled
code." App. Br. 10. Although Zee does not use the term "database" to
describe the operation of servers 10 and 12 storing code, Zee discloses "the
data processing system accesses the JAVA program providing server 10 or
12 designated by the received service request message, and downloads the
designated JAVA class file." Zee, col. 8, 11. 4--8. Therefore, Zee describes
servers 10 and 12 as providing functionality of storing data and providing
access to it, consistent with the broad description of "database" in the
"Background" section of Appellant's Specification, which states that
"[ d]atabases and database programs configured to manage the databases are
commonly used to store and access data." Spec. i-f 8. Furthermore, as the
Examiner correctly notes, claim 26 does not specify any particular type of
database. Ans. 25. We agree with the Examiner that servers 10 and 12
disclose a database, as broadly claimed. See id. Still further, as Appellant
acknowledges, Zee discloses using databases to store compiled code. See
App. Br. 10. We find, consistent with the evidence of record, that using a
database to store source code was within the technical grasp of a person of
ordinary skill in the art at the relevant time.
Based on the foregoing discussion, although we do not sustain the
Examiner's rejection of claim 26 as anticipated by Zee, we conclude that the
subject matter of claim 26 would have been obvious to a person of ordinary
skill in the art based on the teachings of Zee in view of the knowledge of a
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person of ordinary skill in the art, as evidenced by Gilboa, as discussed
above. In particular, claim 26 is directed to a combination of familiar
elements yielding predictable results-Zee' s express disclosure of the
limitations of claim 26, except for the division of source code of one
program into multiple records, in combination with the knowledge of one of
skill in the art that it was known to divide source code of one program into
several records or files, as evidenced by Gilboa. See KSR, 550 U.S. at 416
("The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.").
As such, pursuant to our authority under 37 C.F.R. § 41.50(b ), we
enter a new ground of rejection that claim 26 is unpatentable as obvious
under 35 U.S.C. § 103(a) over Zee in view of the knowledge of a person of
ordinary skill in the art, as evidenced by Gilboa.
Claim 27
As discussed above, we find the evidence supports the Examiner's
conclusion of obviousness as to claim 27, but because our decision, in
addressing Appellant's arguments, provides additional explanation that
clarifies the Examiner's rejection, we designate our affirmance of the
rejection under 35 U.S.C. § 103(a) as a new ground of rejection.
Alleged New Grounds
In its Reply, Appellant contends the Examiner's Answer "relied upon
several instances of new evidence but improperly did not recognize any as
new grounds of rejection." Reply Br. 17. Allegations that an Examiner's
answer contains undesignated new grounds of rejection are resolved by
petition, the absence of which served as a waiver. MPEP § 1207.03.
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DECISION
We affirm the Examiner's rejections of claims 1-25 under 35 U.S.C.
§ 103(a).
We reverse the Examiner's rejection of claim 26 under 35 U.S.C.
§ 102(b); pursuant to 37 C.F.R. § 41.50(b), claim 26 is rejected under 35
U.S.C. § 103(a).
We affirm the Examiner's rejection of claim 27 under 35 U.S.C.
§ 103(a), and designate our affirmance a new ground of rejection.
Rule 37 C.F.R. § 41.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Further,§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. 41.50(b)
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