Ex Parte Bonilla

Board of Patent Appeals and Interferences

Feb 23, 2010

10628960 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARLOS BONILLA
___________

Appeal 2009-003588
Application 10/628,960
Technology Center 2100
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Decided: February 24, 2010
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Before JEAN R. HOMERE, ST. JOHN COURTENAY III,
and STEPHEN C. SIU Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm in part.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal relates generally to emulation processing
applications. More particularly, Appellant’s invention is directed to
emulation and native language interface testing. (Spec. 1).

ILLUSTRATIVE CLAIM
1. An emulation and native language interface test method comprising:
initializing an emulation language virtual machine;
wrapping native language code in a simulation test macro which
creates simulated interfacing problems; and
examining reaction to said simulated interfacing problems when an
emulation language application is run.

PRIOR ART
The Examiner relies upon the following reference as evidence:
Evans US 6,826,746 B2 Nov. 30, 2004

THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as
anticipated by Evans.

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GROUPING OF CLAIMS
Based on Appellant’s arguments in the Briefs, we will decide the
appeal on the basis of representative claims 1, 5, and 9.1 See 37 C.F.R. §
41.37(c)(1)(vii).

ISSUES
Appellant argues specific limitations (App. Br. 18-24) that we address
infra. The Examiner principally contends, inter alia, that Appellant is
arguing limitations that are not claimed. (Ans. 8). The Examiner maintains
that each claimed limitation is disclosed by Evans. (Ans. 8-16). Based upon
our review of the administrative record, we have determined that the
following issues are dispositive in this appeal:

Issue 1: Under § 102, has Appellant shown the Examiner erred by
determining that the relied upon elements of Evans are arranged as claimed
in independent claims 5 and 9?

Issue 2: Under § 102, has Appellant shown the Examiner erred in
rejecting representative claim 1 by finding that Evans discloses or describes
“wrapping native language code in a simulation test macro which creates
simulated interfacing problems?”

1 This Opinion considers only those arguments actually made. Arguments
that Appellants could have made but chose not to make in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Issue 3: Under § 102, has Appellant shown the Examiner erred in
rejecting representative claim 5 by finding that Evans discloses or describes
“means for storing said information, including said instructions for testing
said Java Native Language Interface, said means for storing said information
coupled to said means for communicating information?”(underline in
original) (See App. Br. 14-15).

Issue 4: Under § 102, has Appellant shown the Examiner erred in
rejecting representative claim 9 by finding that Evans discloses or describes
“running a Java application with simulated Java Native Language Interface
problems if said Java Native Language Interface test mode is enabled?”

PRINCIPLES OF LAW
Anticipation under § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).
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After the Examiner has presented evidence supporting a proffered
prima facie case, Appellant has the burden of going forward to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellant’s Briefs to show error in
the Examiner’s proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:

The Evans Reference
1. Evans discloses debugging a Java application that includes native
method dynamic load libraries. (Col. 1, ll. 7-11).
2. Evans discloses an ICAT2 debugger probe run by the Java Virtual
Machine which communicates to the separate instantiation of the JVM
running the target application. Communications to the JVM are
preferably TCP/IP messages. (Col. 5, ll. 7-12 and see col. 5, ll. 4-7).
3. Evans discloses that both the target application and the ICAT2
debugger are running on the same computer platform, so the
communications between the various components of the system are
usually internal to the computer itself. (Col. 5, ll. 13-17).
4. Evans discloses a Java Platform Debugger Architecture (JPDA)
provides a Bootstrap object that allows access to the Java Debug
Interface (JDI) interface. (Col. 5, ll. 53-55). Using the ICTA2
debugger probe (and JPDA) the application is launched when the
probe function “launch_then_attach” is called. (Col. 5, ll. 64-66).
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ANALYSIS
ISSUE 1
We decide the question of whether Appellant has shown the Examiner
erred by determining that the relied upon elements of Evans are arranged as
claimed in independent claims 5 and 9.
Regarding independent claim 5, we do not find persuasive Appellant’s
contention that the cited art is not arranged as claimed. (App. Br. 13-14).
Appellant asserts that the portions of Evans relied on by the Examiner are
“not part of a single system embodiment” and “do not appear in Evans as
arranged in Claim 5 (e.g., coupled together to form a single system.)” (Id.).
Regarding the claimed “means for communicating information,” as recited
in claim 5, we find Appellant points to four separate components (407, 453,
455, and/or 459) for support. (App. Br. 5, ¶3). It appears that “[i]nput
component 453 [that] facilitates communication of information to computer
system 450” (Spec. 16, 12-13) could be software, as contrasted with a
defined structural component configured in a particular structural
arrangement with other structural components. Evans discloses a CPU 151
(Fig. 15, col. 4, ll. 46-48) in a software development workstation 150 (Fig.
15) that we find inherently has storage means (i.e., a memory coupled to the
CPU). Evans further discloses communication means (FF 2). Given the
breadth of the claim term “coupled to” (i.e., any direct or indirect
connection), we find Appellant’s argument unavailing regarding the
arrangement of claim 5.
Regarding independent claim 9, we also do not find Appellant’s
contention that the cited art is not arranged as claimed to be persuasive.
(App. Br. 17-18). Appellant asserts that the parsed teachings of Evans relied
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on by the Examiner are “not part of a single method embodiment” and “do
not appear in Evans as arranged in Claim 9. (App. Br. 17). We find
Appellant has not argued what the particular “arrangement” is regarding the
software components of method claim 9, and how such purported
“arrangement” differs from the relied upon portions of Evans, particularly
given that there are no expressly claimed structural components in method
claim 9.

ISSUE 2
We next decide the question as to whether Appellant has shown the
Examiner erred by finding that Evans discloses or describes “wrapping
native language code in a simulation test macro which creates simulated
interfacing problems,” as recited in claim 1.
The Examiner contends that Evans recites a “simulation test macro”
as a probe/launch method that creates simulated interfacing problems (Ans.
13). The Examiner further contends that Evans discloses the application
under test includes both emulation language code (e.g., Java) and native
language code (e.g., C/C++). (Ans. 12-13, i.e., wrapping native language
code in a simulation test macro). The Examiner also determined that Evans
teaches that the probe function/launch method creates simulated interfacing
problems. (Id.).
We find that Evans discusses debugging a Java application that
includes native method dynamic load libraries. (FF 1). While it is
reasonable to infer from Evans’ disclosure that the Java application contains
or “wraps” the native language code, we nevertheless find the weight of the
evidence supports Appellant’s arguments regarding the portions of Evans
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relied upon by the Examiner as purportedly disclosing a “simulation test
macro” that wraps the native language code. (See Reply Br. 3-4).
We find the Examiner has not sufficiently developed the record to
clearly establish how either of Evans’ probe 41 or Evans’ launch method
(col. 6, l. 4) fairly discloses the claimed “simulation test macro” that wraps
the native language code. We agree with Appellant that probe 41 is shown as
separate from the application in Figure 2 of Evans and also that Figure 6 of
Evans shows various handlers of probe 41 that do not appear to contain or be
wrapped around native language code. (App. Br. 4-5). We find that to
sustain the Examiner based upon the cited portions of Evans would require
speculation on our part. We decline to engage in speculation. Accordingly,
we reverse the Examiner’s anticipation rejection of claim 1 and associated
dependent claims 2-4.

ISSUE 3
We decide the question of whether under § 102, Appellant has
shown the Examiner erred in rejecting representative claim 5 by finding that
Evans discloses or describes “means for storing said information, including
said instructions for testing said Java Native Language Interface, said means
for storing said information coupled to said means for communicating
information.” (underline in original).2
Appellant contends that no explanation was provided to highlight
what is thought was relevant to the additionally cited section of Evans,

2 We will direct our discussion only to the underlined portion of claim 5 as
emphasized by Appellant. (See App. Br. 14-15).
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namely col. 4, l. 65 – col. 5, l. 17 and col. 5 ll. 18-46. (Reply Br. 5). We
disagree for the reasons discussed infra.
We find that Evans discloses that a communication means (TCP/IP
connection) (FF 2), is coupled to (i.e., communicates with via direct or
indirect connection) storage means (i.e., a computer inherently containing
memory) which stores the target application. (FF 3). Thus, we find that
Evans either expressly or inherently discloses corresponding structures that
are capable of performing the claimed functions.
Therefore, we find Appellant has not sustained the requisite burden on
appeal in providing arguments or evidence persuasive of error in the
Examiner’s anticipation rejection of representative claim 5, and claims 6-8
that fall therewith.
ISSUE 4
We decide the question of whether Appellant has shown under § 102,
the Examiner erred in finding that Evans discloses or describes “running a
Java application with simulated Java Native Language Interface problems if
said Java Native Language Interface test mode is enabled.” (Representative
claim 9).
Appellant contends that simultaneous debugging of Java code and
C/C++ code is not the same as and does not teach, “‘running a Java
application with simulated Java Native Language Interface problems if said
Java Native Language Interface test mode is enabled’, as recited in claim 9.”
(App. Br. 19)(quote in original).
We disagree. In particular, we find Appellant has not argued a
particular meaning or definition that defines the metes and bounds of the
claimed “simulated Java Native Language Interface problems.” (Claim 9).
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Given this lack of definition, we find the weight of the evidence supports the
Examiner’s findings with respect to the argued limitation of claim 9. (Ans.
20). More particularly, we find that the application is launched when the
probe function “‘launch_then_attach’ is called” (enabled), passing
arguments to each connector. (Col. 5, ll. 64-66; see also FF 4). We further
note that Appellant had an opportunity to dispute the Examiner’s findings
with respect to the aforementioned limitation, and did not do so in the Reply
Brief (aside from restating the arrangement argument) (See Reply Br. 7, last
paragraph).
Therefore, we find Appellant has not sustained the requisite burden on
appeal in providing arguments or evidence persuasive of error in the
Examiner’s anticipation rejection of representative claim 9 and claims 10-20
that fall therewith.

CONCLUSIONS
Based on the findings of facts and analysis above:
Under § 102, Appellant has not shown the Examiner erred by
determining that the relied upon elements of Evans are arranged as claimed
in independent claims 5 and 9.
Under § 102, Appellant has shown the Examiner erred in finding that
Evans discloses or describes “wrapping native language code in a simulation
test macro which creates simulated interfacing problems.” (Claim 1). Thus,
Appellant has also shown that the relied upon elements of Evans are not
arranged as claimed in independent claim 1.

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Under § 102, Appellant has not shown the Examiner erred in finding
that Evans discloses or describes “means for storing said information,
including said instructions for testing said Java Native Language Interface,
said means for storing said information coupled to said means for
communicating information.” (Claim 5).

Under § 102, Appellant has not shown the Examiner erred in rejecting
representative claim 9 by finding that Evans discloses or describes “running
a Java application with simulated Java Native Language Interface problems
if said Java Native Language Interface test mode is enabled.” (Claim 9).

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ORDER
We reverse the Examiner’s rejection of claims 1-4 under
35 U.S.C. § 102(e).
We affirm the Examiner’s rejection of claims 5-20 under 35 U.S.C.
§ 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

pgc

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