Ex Parte Domer

Patent Trial and Appeal Board

Feb 6, 2013

10427186 (P.T.A.B. Feb. 6, 2013)

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.
10/427,186 04/30/2003 Jason A. Domer P16365-110466-132377 6274
31817 7590 02/07/2013
SCHWABE, WILLIAMSON & WYATT, P.C.
PACWEST CENTER, SUITE 1900
1211 S.W. FIFTH AVE.
PORTLAND, OR 97204
EXAMINER
HIGA, BRENDAN Y
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
02/07/2013 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 PATENT TRIAL AND APPEAL
BOARD
____________________

Ex parte JASON A. DOMER
____________________

Appeal 2010-003278
Application 10/427,186
Technology Center 2400
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM,
and ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003278
Application 10/427,186

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STATEMENT OF CASE1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-5, 7, 9-11, 17-19, 21-25, and 27. Claims 2, 6, 8, 12-16, 20, 26,
and 28-30 have been canceled.2 Claims 3, 10, 11, 15, and 18 have been
objected to as being dependent upon a rejected base claim, but allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims (Ans. 6). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphases and
bracketed numbering and lettering added, reads as follows:
1. A method comprising:

receiving, by a server, a request from a client device for a descriptor
of an application, wherein the request includes information indicative of the
client device's native execution environment;

[1] determining, by the server, [a] the client device's native execution
environment, and [b] whether a compiled version of the application pre-

1 We refer throughout this opinion to the Final Rejection mailed March 17,
2009 (“Final Rej.”); the Appeal Brief filed by Appellant on August 17, 2009
(“App. Br.”); the Examiner’s Answer mailed on October 14, 2009 (“Ans.”);
and the Reply Brief filed by Appellant on December 14, 2009 (“Reply Br.”).
2 Although both the Examiner (Ans. 2) and Appellant (App. Br. 2) correctly
state that the status of the claims is that claims 2, 6, 12-16, 20, 26, and 28-30
are canceled, both parties have not indicated claim 8 as being canceled.
Claim 8 is canceled, and is not subject to rejection and is not before us on
appeal. We consider this to be harmless error.
Appeal 2010-003278
Application 10/427,186

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compiled for a target native execution environment is compatible with the
client device's native execution environment, said determining based at least
in part on examining said indicative information of said request; and

providing, by the server, the client device with the requested
descriptor of the application;

[2] conditionally including with the provided descriptor of the
application a first locator to a first location from where the compiled version
of the application pre-compiled for the target native execution environment
can be obtained, the first location being remotely disposed from the client
device, the conditional inclusion being performed based at least in part on
the result of said determining; and

including with the provided descriptor of the application a second
locator to a second location from where a portable version of the application
to be locally just-in-time compiled on the client device can be obtained, the
second location being remotely disposed from the client device.

Rejections
(1) The Examiner rejected claims 1, 3-5, 7, 9-11, 17-19, 21-25, and 27
as being unpatentable under 35 U.S.C. § 103(a) over Brown (US 6,295,638
B1), Pickett (US 6, 374, 400 B1), and Shaw (US 6,341,373 B1). Ans. 3-8.
(2) The Examiner rejected claims 1, 3-5, 7, 9-11, 17-19, 21-25, and 27
under 35 U.S.C. § 103(a) Brown, Gautier (US 7,127,493), and Shaw (see
Final Rej. 7-13), however this rejection has been withdrawn in the Answer
(see Ans. 14). Accordingly, we do not consider the merits of this rejection
on appeal, or otherwise treat Appellant’s arguments (see App. Br. 11-12) in
this regard.
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Application 10/427,186

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Appellant’s Contentions3
Appellant contends (App. Br. 7-10; Reply Br. 1-2) that the Examiner
erred in rejecting claims 1, 3-5, 7, 9-11, 17-19, 21-25, and 27 under
35 U.S.C. § 103(a) over Brown, Pickett, and Shaw for numerous reasons
including:
(1) Brown fails to teach the “conditionally including …” paragraph of
claim 1 (App. Br. 7-9);
(2) Brown combined with Pickett fails to meet the “conditionally
including …” language of claim 1 because Brown would generate the
classes of native code before the server does a check, and the check
wouldn’t affect whether the class contained native code (App. Br. 9-10); and
(3) Brown and Pickett combined fail to conditionally include the
native code based on the determination (App. Br. 9-10; Reply Br. 1-2);
Issue on Appeal
Based on Appellant’s arguments in the briefs, the following principal
issue is presented on appeal:
Has Appellant shown that the Examiner erred in rejecting claims 1,
3-5, 7, 9-11, 17-19, 21-25, and 27 as being obvious because the combination
of Brown, Pickett, and Shaw fails to teach or suggest the “conditionally
including …” limitation (see claim 1, limitation [2]) as defined by the
“determining …” limitation (see claim 1, limitation [1]) at issue in
representative claim 1?

3 Separate patentability is not argued for dependent claims 3-5, 7, 9-11,
17-19, 21-25, and 27 (see App. Br. 10).
Appeal 2010-003278
Application 10/427,186

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 7-10) and Reply Brief (Reply Br.
1-2) that the Examiner has erred. We disagree with Appellant’s conclusions.
With regard to the rejection of claims 1, 3-5, 7, 9-11, 17-19, 21-25, and 27
over Brown, Pickett, and Shaw, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 3-14) in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner (Ans. 5-6 and 9-13). We
highlight and address specific findings and arguments regarding claim
limitations [1] and [2] relating to the “conditionally including …” language
of representative claim 1.
Appellant’s arguments (App. Br. 7-9) that Brown fails to teach the
“conditionally including …” paragraph of claim 1 are not persuasive since
the combination of Brown, Pickett, and Shaw is relied upon by the Examiner
as teaching or suggesting this feature.
While the Specification can be examined for proper context of a claim
term, limitations from the Specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005)
(citations omitted). Although Appellant asserts that Brown would generate
the classes with native code before the server does a check, and the check
would not affect whether the class contained the native code (App. Br. 9-10),
Appellant has provided no evidence on this record to support this assertion
apart from mere conclusory statements. It is well settled that mere lawyer’s
arguments and conclusory statements, which are unsupported by factual
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Application 10/427,186

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evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
In addition, the terminology and features of checking whether classes
contain “native code,” the generation of “classes,” and the server performing
a “check” are not set forth in representative independent claim 1. See
CollegeNet, 418 F.3d at 1231.
In other words, Appellant’s argument (App. Br. 9-10) that Brown
would generate the classes with native code before the server does a check is
not persuasive because the terminology “native code” does not appear in the
claims, and thus Appellant’s argument is not commensurate in scope with
the language of the claims. Appellant’s arguments (App. Br. 9-10; Reply
Br. 1-2) are not commensurate in scope with claim language, since claim 1
conditionally includes “a first locator to a first location” based partially on
the result of determining (a) “the client’s device’s native execution
environment,” and (b) compatibility of a compiled version with the client
device’s native execution environment. This is not the same as conditionally
including native code as argued by Appellant (see App. Br. 8-10; Reply 2).
Lastly, we agree with the Examiner (Ans. 13) that it would have been
obvious that if a compatibility check is performed as in Pickett, that it would
be best to do so before the determining step in Brown. Appellant has not
persuasively shown otherwise.
In view of the foregoing, Appellant has not sufficiently shown that the
Examiner erred in rejecting independent claims 1, 7, 17, and 22, or their
respective dependent claims 3-5, 9-11, 18, 19, 21, 23-25, and 27, under
35 U.S.C. § 103(a) and therefore we will sustain the rejection before us.

Appeal 2010-003278
Application 10/427,186

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CONCLUSION
The Examiner has not erred in rejecting claims 1, 3-5, 7, 9-11, 17-19,
21-25, and 27 as being unpatentable under 35 U.S.C. § 103(a) over Brown,
Pickett, and Shaw.

DECISION
The Examiner’s rejection of claims 1, 3-5, 7, 9-11, 17-19, 21-25, and
27 as being unpatentable under 35 U.S.C. § 103(a) over Brown, Pickett, and
Shaw is affirmed.
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

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