Ex Parte Droshev et al

Patent Trial and Appeal Board

Apr 26, 2016

11193167 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111193, 167 0712912005
50400 7590 04/28/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Mladen I. Droshev
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.
2058.408US 1 8849
EXAMINER
LOUIE, JUE WANG
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MLADEN I. DROSHEV, IVAN T. ATANASSOV,
NIKOLAI W. NEICHEV, GEORGI N. STANEV
Appeal 2014-004576
Application 11/193,167
Technology Center 2100
Before DEBRA K. STEPHENS, KARA L. SZPONDOWSKI, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 41, 43--45, 48, 50-52, 55, 57-59, and 61---68, which constitute all
claims pending in the application. (App. Br. 13-18.) We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants' disclosed invention relates to a system and method for
improving the efficiency of remote method invocations ("RMI") within a
Appeal2014-004576
Application 11/193,167
multi-tiered enterprise network and for generating and configuring dynamic
proxies. (Spec. i-f 1.) Claims 41 and 61, which are representative, reads as
follows with bracketed annotations:
41. A method comprising:
identifying whether a method call made by a first object and
directed to a second object is a local method call or a remote
method call;
detecting whether a stub capable of handling the method call
exists; and
[i] responsive to an identification that the method call is the
local method call and further responsive to a detection that the
stub does not exist:
binding the first object directly to the second object; and
making the method call directly to the second object.
61. The method of claim 41, further comprising:
[ii] responsive to a determination that the method call is the
local method call and further responsive to a detection that the
stub exists, using a local invocation handler of the stub to
manage the local method call.
REJECTION
Claims 41, 43--45, 48, 50-52, 55, 57-59, and 61-68 stand rejected
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. 1 (Ans. 2.)
1 In the Answer, the Examiner withdrew the rejections made under 35
U.S.C. § 103(a). (Ans. 4--5.)
2
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ISSUES
( 1) Did the Examiner err in finding that imitation [ i] in claim 41
lacks written description support?
(2) Did the Examiner err in finding that limitation [ii] in claim 61
lacks written description support?
ANALYSIS
Limitation [i] in Claim 41
Appellants argue that the Examiner erred in finding that the
Specification-as-filed does not describe limitation [i] of claim 41. (App. Br.
13.) Limitation [i] recites a binding action (i.e., binding the first object
directly to the second object) and a method-call action (i.e., making the
method call directly to the second object). (See claim 41.) The limitation
further recites that the binding and method-call actions are responsive to
identifying a local method call (an identification that the method call is the
local method call) and detecting that the recited stub does not exist. (Id.)
Appellants added limitation [i] to their claims during prosecution. (Final
Act. 2; Ans. 2; see also original claims.)
Central to the issue of written description support for limitation [i] is
Figure 8 in the Specification, reproduced below:
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Application 11/193,167
~
0€tec! Method Call ,1
801
Fig. B
-----------.
Skip Sutl-.<;/Slrnletol'\5 &
Dir.ictly Invoke Local MG!hod
8-03
Figure 8 illustrates a method for generating dynamic proxies and/or
skeletons. (Spec. i123.)
Appellants argue that the method of Figure 8 provides some of the
written description support for limitation [i]. (App. Br. 13-14; Reply Br. 5.)
Specifically, Appellants argue the path from steps 801 to 803 is "responsive
to a determination that the method call is the local method call," as recited in
claim 41. (App. Br. 13-14; Reply Br. 5.) Appellants further argue that step
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Application 11/193,167
803 performs the recited binding and making-the-call actions. (App. Br. 13-
14; Reply Br. 5.) Appellants, however, do not argue that steps 801 through
803 by themselves disclose performing the actions of step 803 responsive to
a detection that a stub does not exist.
As the Examiner notes, steps 804 and 805 of Figure 8, respectively,
disclose detecting whether a stub exists and acting if it does not. (Ans. 6.)
Steps 804 and 805, however, are not performed for local calls and, thus, the
action in step 805 is not "responsive to a determination that the method call
is the local method call." (Id.)
Appellants argue another portion of the Specification in combination
with steps 801 to 803 teaches limitation [i] as a whole. (App. Br. 4, 13;
Reply Br. 5.) Specifically, Appellants contend that paragraph 39 describes a
situation where no stub is generated. (App. Br. 13; Reply Br. 5.) Appellants
further contend that paragraph 39 is in the same section of the Specification
as the paragraph describing steps 801 through 803. (App. Br. 13; Reply Br.
5.) Appellants additionally argue, combined, paragraph 39 and steps 801
through 803 describe limitation [i]. (App. Br. 4, 13-14; Reply Br. 5.)
We are not persuaded. Even if we accept Appellants' combination of
the pertinent disclosures, the fact that the actions in step 803 would occur
when a stub does not exist does not make the actions in step 803 responsive
to a detection that the stub does not exist. (Ans. 6.) As the Examiner finds,
for a local call, step 803 will occur regardless of whether a stub exists. (Ans.
6.)
In the Reply, Appellants argue paragraph 41 demonstrates the
existence of a stub can matter even for local method calls. (Reply Br. 4.)
The issue here, however, is not whether the existence of a stub ever matters
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Application 11/193,167
for a local method call, but rather whether the existence of a stub is
considered in step 803 or some other step that performs the binding and
making-the-call actions recited in limitation [i].
Accordingly, we sustain the Examiner's rejection of claim 41 and
adopt the Examiner's findings in the Final Action and the Answer on the
issue of written description for limitation [i].
Claims 48 and 55 each recite limitation [i] and are not separately
argued from claim 41. (App. Br. 13-18.) Accordingly, we sustain the
rejection of claims 48 and 55 for the reasons set forth above.
Claims 43--45, 50-52, 57-59, and 61---68 each incorporate through
dependency the limitations of one of claims 41, 48, and 55 and, with respect
to limitation [i], are not argued separately from claim 41. (App. Br. 13-18.)
Therefore, we sustain the rejection of claims 43--45, 50-52, 57-59, and 61-
68 for the reasons set forth above.
Limitation [ii] in Claim 61
Appellants argue the Examiner erred in finding the as-filed
Specification does not support limitation [ii] in claim 61.
Appellants argue that paragraph 41 of the Specification discloses
"using a local invocation handler of the stub to manage the local method
call" "responsive to a determination that the method call is the local method
call," as recited in claim 61. (App. Br. 16; Reply Br. 9-10.) For limitation
[ii], what is missing from paragraph 41, as interpreted by Appellants, is for
the local invocation handler to be "responsive to a detection that the stub
exists." (See claim 61.)
Appellants argue paragraph 39 of the Specification discloses
generating a dynamic proxy to handle remote method invocations upon
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Application 11/193,167
detecting that no stub exists. (App. Br. 16; Reply Br. 9.) Appellants further
argue that because the dynamic proxy, which, in one embodiment, includes a
local invocation handler, is generated based on a detection that no stub
exists, one skilled in the art would have understood the use of the stub to
manage the local method call must also be based on detecting that the stub
exists. (App. Br. 16-17; Reply Br. 9.) We are not persuaded one skilled in
the art would have understood the use of the stub to manage the local
method call must be based on a detecting that the stub exists because
Appellants do not present any persuasive evidence or arguments supporting
that proposition. (App. Br. 16-17; Reply Br. 9.) Therefore, we are not
persuaded the Examiner erred in finding limitation [ii] lacks written
description support. Accordingly, we also sustain the Examiner's rejection
of claim 61 for a lack of written description support for limitation [ii] and of
claims 64 and 67, which recite the same limitation and are not separately
argued. (App. Br. 16-18.)
DECISION
The decision of the Examiner to reject claims 41, 43--45, 48, 50-52,
55, 57-59, and 61--68 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)(l)(iv).
AFFIRMED
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