Ex Parte Ellison

Patent Trial and Appeal Board

Sep 24, 2013

11242672 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY P. ELLISON
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Appeal 2011-004747
Application 11/242,672
Technology Center 2100
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Before GLENN J. PERRY, JENNIFER L. McKEOWN, and
STACEY G. WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19 and 21. Claims 20 and 22 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF CASE
Appellant’s claims are directed to methods and apparatuses for
executing native software routines in a virtual machine without changing
execution context. Spec. 1:6-8. Claims 1 and 2 are illustrative and are
reproduced below (disputed limitations are indicated in italics):
1. A method of executing a software routine in a virtual machine
executing on a computer system, wherein the computer system
can operate in one of a virtual machine execution context or a
native execution context, the method comprising the steps of:
identifying a declaration of the software routine, the declaration
including an indication that the software routine is to be
executed in a native binary form;
responsive to a determination that the declaration of the
software routine includes an indication that the software
routine should be called directly by the virtual machine, the
computer system operating in a virtual machine execution
context and the virtual machine calling the software routine
directly;
executing the software routine in a native binary form without
invoking said native execution context or switching from the
virtual machine execution context to a native context.

2. The method of claim 1 further comprising:
responsive to a determination that the declaration of the
software routine does not include an indication that the software
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routine should be called directly by the virtual machine, the
computer system operating in a native execution context,
executing a proxy routine in a native binary form, wherein the
proxy routine calls the software routine.

REJECTIONS
(1) Claims 1, 3-7, 11, 13-17 and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Long (U.S. 6,886,157 B2, Apr. 26, 2005) and
Hatcher (U.S. 7,360,206 B1, Apr. 15, 2008).
(2) Claims 2, 8-10, 12 and 18-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Long, Hatcher, and Krapf (U.S. 2005/0149914
A1, Jul. 7, 2005).
ISSUES
Appellant’s arguments in response to the Examiner’s rejections
present us with the following issues:
(1) Did the Examiner err in finding that the cited art teaches or suggests “the
declaration including an indication that the software routine is to be
executed in a native binary form” as recited by claim 1?
(2) Did the Examiner err in finding that the cited art teaches or suggests “the
declaration of the software routine includes an indication that the
software routine should be called directly by the virtual machine” as
recited by claim 1?
(3) Did the Examiner err in finding that the cited art teaches or suggests
“executing a proxy routine” as recited by claim 2?
ANALYSIS
Independent claims 1 and 11 each recite “the declaration including an
indication that the software routine is to be executed in a native binary form”
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and “an indication that the software routine should be called directly by the
virtual machine.” Appellant asserts the Examiner erred in finding that the
cited references disclose these indications. App. Br. 9-12. The Examiner
finds that the broadest reasonable interpretation of the claimed indications
would include the signature of the software routine as described in the cited
art. Ans. 12-14
Long describes a method of executing native functions in a Java
virtual machine. Long 2:32-38. Long’s “special native interfaces” invoke
the native functions. Id. Long’s system requires the native function’s name
and signature to match those required by the special native interface. Id.
2:41-43.
Hatcher describes a method of comparing signatures for native
functions declared in code and functions signatures stored in a linking
mechanism and invoking the native code only if the signatures match.
Hatcher Abstract. Hatcher “assum[es] that the Java source code 400
includes a native function declaration 400A, parameters 400B to be passed
to the native function when it is called and a native function call instruction
400C.” Id. 4:11-15.
The Examiner reasons that while Long does not explicitly identify a
“declaration” one of ordinary skill in the art at the time the application was
filed would have to declare information in order to craft the APIs necessary
to define the routines being invoked by Long. Ans. 11-12. We note, as a
cumulative finding, that Hatcher assumes the existence of declarations for
each function. Hatcher 4:11-15. The Examiner explains that the very
purpose of function signatures in object oriented languages is to declare the
program/class constructs as suggested in Long. Ans. 12. Thus, the
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Examiner finds that Long’s disclosure of using the signature of a method to
indicate that the method is to be executed via Long’s “special native
interface” would teach or suggest the claimed declaration that includes an
indication that the software routine is to be executed in native binary format.
Id.
Appellant argues that Long requires the virtual machine to evaluate
multiple native interfaces and that the claimed invention avoids this step by
using an explicit indicator instead of a signature. App. Br. 10. The claims,
however, do not reflect this limitation. Appellant fails to provide any
persuasive argument or evidence that warrants excluding Long’s usage of
signatures and multiple interfaces to execute native functions. The
Examiner finds and we agree that the broadest reasonable interpretation of
the disputed language encompasses a signature used to indicate that a
method is executable in native format. Ans. 13.
Similarly, the Examiner finds that Long in conjunction with Hatcher’s
disclosure of comparing function signatures from code and function
signatures from a linking mechanism to determine how a function should be
executed teaches or suggests the claimed “indication that the software
routine should be called directly by the virtual machine.” Ans. 5 (citing
Hatcher Fig. 2-4, 3:63-4:26, 5:14-24). Appellant argues that Hatcher
requires a two-fold examination of the function’s arguments and return
values and that this is contrary to the claimed indication, which does not
require a two-fold procedure. App. Br. 12. This limitation is not found in
the claims, which only require “an indication that the software routine
should be called directly by the virtual machine.”
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The Specification describes an embodiment where this indication is
defined using metadata. Spec. 5:38. This, however, is not a definition that
would limit the scope of the claim language. See Thorner v. Sony Computer
Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for
a patentee to simply disclose a single embodiment or use a word in the same
manner in all embodiments, the patentee must clearly express an intent to
redefine the term.”) The Appellant has not provided sufficient argument or
evidence to persuade us of error in the Examiner’s reasonable interpretation
that the claimed indication includes the usage of function signatures to
indicate that a function is to be called directly by the virtual machine. See
Ans. 14. For the foregoing reasons we are, therefore, not persuaded that the
Examiner erred in rejecting independent claims 1 and 11 under 35 U.S.C.
§ 103(a) and for similar reasons we sustain the Examiner’s rejection of
dependent claims 3-7, 13-17, and 21 under 35 U.S.C. § 103(a).
Finally, Appellant argues as to claim 2, 8-10, 12, and 18-19 that the
cited references do not teach or suggest the claimed proxy routine.
App. Br. 12-13. In particular, Appellant avers that the claimed proxy (1) is
only utilized if there is no indication that the routine should be called
directly by the virtual machine and (2) is capable of receiving arguments, but
that these arguments are not propagated to the native code. Id. at 13.
The Examiner relies on Krapf’s discussion of a proxy to complement
Long’s disclosure of a lack of an indication that a routine is to be handled by
a special native interface. Ans. 17. Here again, Appellant relies on the
previous argument against Long’s disclosure of the claimed indication.
App. Br. 13. For the reasons described above we agree with the Examiner’s
finding that the cited art discloses the claimed indication and by that same
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reasoning the cited art also discloses the lack of an indication. As such, we
are not persuaded of error.
As to the second ground, we note that the claims are silent as to
whether arguments are propagated to the native code. The Specification
describes an embodiment where arguments are not propagated to the native
code; however, this is not sufficient to limit the scope of the disputed term.
See Spec. 7:4-6. In addition, the Examiner finds that Krapf uses a system of
callback functions instead of directly passing parameters to the software
routine. Ans. 17. Thus, we find no error in the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 2, 8-10, 12 and 18-19.
DECISION
To summarize, our decision is as follows.
 The Examiner’s rejection of claims 1, 3-7, 11, 13-17 and 21 under 35
U.S.C. § 103(a) as being unpatentable over Long and Hatcher is
affirmed.
 The Examiner’s rejection of claims 2, 8-10, 12 and 18-19 under 35
U.S.C. § 103(a) as being unpatentable over Long, Hatcher, and Krapf
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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