Ex Parte Fulton

Patent Trial and Appeal Board

Feb 22, 2016

11465399 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111465,399 08/17/2006 Mike Stephen Fulton
52023 7590 02/24/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CA920060064US 1
8152-0072
CONFIRMATION NO.
1194
EXAMINER
LOUIE, JUE WANG
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE STEPHEN FULTON
Appeal2014-004521
Application 11/465,399
Technology Center 2100
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies IBM Corporation as the real party in interest. App.
Br. 1.
Appeal2014-004521
Application 11/465,399
THE INVENTION
The claimed invention is directed to a data processing system for
executing an application written in a dynamic language. A list of classes
associated with an execution point is generated. New execution points and
classes are recursively determined and the list is modified to include the new
execution points and new classes. The modified list is then saved. Abstract;
Spec. i-f 57.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer implemented method for executing an
application written in a dynamic language, the computer
implemented method comprising:
loading an execution point of the application;
generating a list of classes associated with the execution
point;
identifying new execution points and new classes
accessible from each execution point within each class in the list
of classes by recursively parsing instrttctions associated \~1ith
each execution point;
modifying the list to include the identified new execution
points and new classes;
responsive to a determination that new execution points
and new classes have been identified, repeating the steps of
identifying new execution points and new classes and modifying
the list to include the identified new execution points and new
classes, until no new execution points and new classes are
identified; and
saving the list.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 11/465,399
Venkatraman
Moore
Go ire
Glass
Seth
US 6,571,388 Bl May 27, 2003
US 2005/0257007 Al Nov. 17, 2005
US 6,983,460 Bl Jan.3,2006
US 6,993,774 Bl Jan. 31, 2006
US 7,243,346 Bl July 10, 2007
Paul J. Perrone, J2EE Session EJB Development, 1---6 (2001)
(http://www.informit.com/articles/printerfriendly.aspx?p=2 l 630) (last
visited Mar. 16, 2012) (hereinafter "Perrone").
JUnitX· Class TestProxy (2002), retrieved from:
http://web.archive.org/web/200206 l 9123 8 l 4/http://www.extremejava.
de/junitx/api/junitx/framework/TestProxy.html (last visited Mar. 15,
2012) (hereinafter "TestProxyAPI").
XPTools, Step 8g: Implement JUnitX enhancements, 1-3 (2002),
retrieved from http://web.archive.org/web/200207012327
51/http://www.extremejava.
de/xptools/tutorial2/step8g.html (last visited Mar. 15, 2012) (hereinafter
"JUnitX").
Derek Rayside & Kostas Kontogiannis, Extracting Java Library Subsets
for Deployment on Embedded Systems, 45 Science of Computer
Programming, 245-70 (2002) (hereinafter "Rayside").
REJECTIONS
Claims 8-14 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 2.
Claims 1, 2, 8, 9, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Venkatraman in view of Seth. Final Act. 3-5.
Claims 3, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venkatraman in view of Seth and Goire. Final Act. 6.
Claims 4, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venkatraman in view of Seth and Goire, and JUnitX.
Final Act. 6-7.
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Application 11/465,399
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venkatraman in view of Seth, Goire, JUnitX, Glass, and
TestProxyAPI. Final Act. 7-9.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venkatraman in view of Seth and Rayside. Final Act. 9-
10.
Claims 7, 14, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moore in view of Glass and Perrone. Final Act. 10-12.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
contentions that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant. We disagree
with Appellant's arguments, and we incorporate herein and adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2-12), and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellant's
arguments (Ans. 12-28). We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claims 1, 7, and 8 for
emphasis as follows.
Claims 8-14 (Section 101 Re} ection)
Appellant argues that the phrase "computer usable storage medium"
as recited in claim 8 does not encompass a transitory, propagating signal, per
se and only covers patentable subject matter. App. Br. 7-20; Reply Br. 2-5.
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Application 11/465,399
According to Appellant, the Examiner misapplied In re Nuijten and the
holding in Ex parte Mewherter on the meaning of computer readable storage
material is not consistent with the art-recognized meaning of the term. Id.
The Examiner concludes that claim 8 is broad enough to encompass
non-statutory subject matter. Final Act. 2. We agree with and adopt the
Examiner's conclusions.
When the broadest reasonable interpretation of a claim covers non-
patentable subject matter such as a transitory signal, the claim is
unpatentable under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter). Unless limited to non-transitory embodiments, the
broadest reasonable interpretation of the phrase "computer readable storage
medium" includes both transitory and non-transitory embodiments and
would be unpatentable under section 101. Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) (precedential).
When determining whether a "computer readable storage medium"
limitation covers non-patentable subject matter, the following factors must
be considered:
( 1) Extrinsic evidence relevant to the meaning as would be
understood by one skilled in the art at the time of the effective
filing date of the patent application ....
(2) Whether there is express intent in applicant's specification to
limit the term, i.e., applicant's specification is not silent as to the
meaning of such terms.
(3) Whether the claim expressly limits the medium to "non-
transitory" embodiments.
( 4) Whether the claim implicitly limits the medium to "non-
transitory" embodiments. The most common form of this is the
use of "means plus function" elements in the claim (i.e., a true
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Appeal2014-004521
Application 11/465,399
Beauregard type claim). Such means plus function elements are
limited by statute to the corresponding structure in the
specification and equivalents thereof. Such a structure
requirement limits the claim to non-transitory embodiments.
Mewherter, 107 USPQ2d at 1860 n.5. To the extent cited in Appellant's
Appeal Brief or Reply Brief, we have considered the various Mewherter
factors and do not find the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claims 8-14
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 1-6, 8-13, and 15-20 (Prior Art)
Generating Step
Appellant argues Venkatraman does not teach or suggest "generating
a list of classes associated with the execution point" as recited in claim 1.
App. Br. 25-29; Reply Br. 5-7. According to Appellant, Venkatraman
"only teaches determining a single class." App. Br. 25. Appellant also
argues while pre-loaded class list 26 "may include a list of classes, this list
26 is for the application and not for an execution point within the
application" as recited in claim 1. App. Br. 26.
We are not persuaded by Appellant's argument that the Examiner
erred. The Examiner finds, and we agree, V enkatraman teaches generating a
list of classes associated with an execution point:
V enkatraman teaches that classes are added to the preload class
list when the classes are associated with an execution point (i.e.,
method of the application) or when the classes are dependent
classes to the classes associated with the execution point (see Fig.
3, column 4, lines 32-57). As such, the classes of the pre-load
class list are associated with the execution point.
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Application 11/465,399
Ans. 18. Specifically, Figure 2 shows that there are a plurality of classes-
not the single class argued by Appellant-that is generated. V enkatraman
Fig. 2.
The Examiner finds the list of classes may include classes associated
both with the single execution point of the generating limitation as well as
classes associated with additional execution points. Ans. 18-19. We agree
with the Examiner that it is irrelevant that the list of classes associated with
an execution point of an application may also include additional classes that
are associated with different execution points. Id. Claim 1 uses the open-
ended "comprising" transitional phrase that allows the inclusion of
additional items. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
Cir. 1997) ("Comprising" is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim.).
Accordingly, we agree with the Examiner's conclusion that the claim "does
not require the list of classes to include only classes that are associated with
a single execution point and does not prohibit additional classes associated
with other execution points to be included in that list." Ans. 19.
Identifying Step
In the Appeal Brief, Appellant argues V enkatraman does not teach or
suggest the identifying step recited in claim 1. App. Br. 29-31. Appellant
does not present any arguments addressing the Examiner's findings
regarding Seth. Id. In the Reply Brief, Appellant argues that Examiner "did
not rely upon Seth to teach the claimed identifying is 'recursively parsing
instructions associated with each execution point"' in the Final Office
Action. Reply Br. 10-11.
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Application 11/465,399
In the Final Office Action, the Examiner relied on a combination of
the teachings of Venkatraman and Seth to find the prior art teaches the
identifying limitation. Final Act. 4--5. Specifically, the Examiner finds and
concludes:
Seth teaches a method of generating a customized library
needed for execution of an application, including recursively
identifying execution points and maintaining a dependency list
that includes the recursively identified execution points (i.e.,
type dependencies originating from the application-referenced
types are recursively added as application-referenced types to
assure that all directly or indirectly referenced types are
resolvable, where types are classes, methods, data fields, and
resources ....
It would have been obvious to one of ordinary skill in the
art at the time of the invention to have modified Venkatraman to
also identify new execution points recursively and save the new
execution points to the list as similarly taught by Seth because
modifying the dependency information to include needed
methods and/or data fields allows granularity to be focused on
method-level and/or data field-level, thereby further reducing the
use of resources to methods and/ or data fields actually referenced
by the requested application ....
Final Act. 4--5 (citations omitted) (emphasis added).
As the cited sections of the Final Office Action---especially the
highlighted text-make clear, the Examiner relies on a combination of Seth
and V enkatraman in finding the prior art taught the identifying step of claim
1. Because Appellant did not challenge the Examiner's findings on Seth in
the Appeal Brief, those arguments are waived and will not be considered. 37
C.F.R. § 41.41(b)(2) (2014); Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (Informative) ("[T]he reply brief [is not] an opportunity to
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Application 11/465,399
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not.").
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). Accordingly, we are not persuaded by Appellant's
arguments regarding Venkatraman in the Appeal Brief that the Examiner
erred.
Modifying Step
Similar to the argument regarding the generating step, Appellant
argues V enkatraman does not teach or suggest a list that is associated with a
particular execution point. App. Br. 31-35; Reply Br. 11-12. According to
Appellant, "[b ]eing associated with execution point§. (i.e., a plurality of
execution points) is not the same as being associated with 'the execution
point' (i.e., a single execution point), as claimed." App. Br. 35. Appellant
also argues the Examiner is improperly relying on inherency to show that the
list 26 of Venkatraman is associated with an execution point. App. Br. 34.
We are not persuaded by Appellant's argument that the Examiner
erred. As we discussed above, we agree with the Examiner that
V enkatraman teaches the disclosed list as recited in claim 1. As for
Appellant's inherency argument, we agree with the Examiner that the
Examiner's findings did not rely on inherency. Ans. 24. Instead, we agree
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Application 11/465,399
with the Examiner's conclusion regarding the interpretation of the claim
limitation:
Id.
Rather, Examiner stated that Appellant's interpretation of the
limitation appears to be that a particular list can only contain the
classes associated with a single execution point, and no other
execution points. Examiner again submits that such an
interpretation is not required based on the claim language and
would be inconsistent with the specification.
Accordingly, we sustain the Examiner's prior art rejection of claim 1,
along with the rejections of claims 2---6, 8-13, and 15-20, which Appellant
agrees stand or fall with claim 1. App. Br. 25, 35-38.
Claims 7, 14, and 21
Appellant argues Glass does not teach or suggest using a "name to
reflect the relationship between the public class and the private class" as
recited in claim 1. App. Br. 38--42. Instead, Appellant argues the
Examiner's findings are based on speculation and circular reasoning where
the "modification and motivation are essentially one and the same." App.
Br. 41.
The Examiner finds Moore teaches extending a private class to create
a new public class. Final Act. 10-11. The Examiner further finds Glass
teaches a naming convention in which a new class is given a name derived
from the subject class. Final Act. 11. For example, Glass indicates that if a
subject class was named Foo.class then the related proxy class would be
named Foo_Proxy.class. Glass 9:64--67. Based on the combination, the
Examiner finds that a person of skill in the art would "have modified Moore
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Application 11/465,399
such that the new public class has a unique name referring to the package
private class as similarly taught by Glass to allow the name to reflect the
relationship between the public class and the private class." Final Act. 11.
As a motivation, the Examiner finds "such that naming scheme would reflect
the relationship between the public class and private class." Final Act. 20;
Ans. 27. The Examiner further finds "[t]he motivation would be similar to
the motivation of choosing such a naming scheme for a subject class and
proxy class in Glass, the motivation would be to reflect the relationship
between the public class and the private class." Ans. 28.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). We agree with adopt the findings of fact and conclusions of law
made by the Examiner. We find the Examiner provided sufficient reasoning
with rational underpinnings to support the rejection and that the Examiner
did not employ circular reasoning in finding a motivation.
Accordingly, we sustain the Examiner's prior art rejection of claim 7,
along with the rejection of claims 14 and 21, which are argued on the same
grounds.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
8-14 under 35 U.S.C. § 101.
For the above reasons, we affirm the Examiner's rejections of claims
1-21under35 U.S.C. § 103(a).
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Application 11/465,399
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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