Ex Parte Houston et al

Board of Patent Appeals and Interferences

Sep 25, 2009

10279531 (B.P.A.I. Sep. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDWARD DONALD HOUSTON and PAULENE M. PURDY,
____________________

Appeal 2008-004333
Application 10/279,531
Technology Center 2400
____________________

Decided: September 28, 2009
____________________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 10/279,531

Introduction
According to Appellants, the invention is a method for operating a
computer with an operating system platform, a virtual machine, and a client
program (Abstract). The client program determines the operating system
platform and modifying its operation based on that determination (id.).

STATEMENT OF THE CASE

Exemplary Claim(s)
Claims 9 and 23 are exemplary claims and are reproduced below:
9. A management system comprising:

a management server computer having a management
server program with instructions configured to instruct the
management server computer to communicate with devices in a
storage area network;

a plurality of client computers, each having an operating
system platform but not all having the same operating system
platform,

wherein each client computer also has a virtual machine
configured to interpret the same language code as each other
said client computer, and a client program written in the virtual
machine language and including instructions configured to
instruct the client computer to communicate with said
management server computer;

wherein said client program includes instructions to
determine the operating system platform of its client computer
and to modify the operation of the client program in accordance
with said determination.

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23. A machine-readable medium or media having
recorded thereon instructions interpretable by a virtual machine,
said instructions configured to instruct a computer having an
operating system platform to:

determine the operating system platform of the computer,
and

determine a menu of items to display on a display of the
computer in response to a user input, wherein said
determination of menu items is dependent upon said operating
system platform determination.

Prior Art
Leverenz US 6,754,889 B1 Jun. 22, 2004
Crowley US 6,915,524 B2 Jul. 05, 2005

Rejections
Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Leverenz and Crowley.

GROUPING OF CLAIMS

Appellants argue claims 1-25 as a group based on claim 9 (App. Br.
6. §VII). However, we group claims 1-22 and separately group claims 23-25
based on the issues.
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“Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 103(a): claims 1-25
APPELLANTS’ CONTENTIONS
Appellants assert Leverenz does not teach a client program that
includes instructions to modify the operation of the client program in
accordance with the determination of the operating system (App. Br. 8, §
VII.A.3.) Specifically, Appellants contend that, even if the calling program
of Leverenz corresponds to the client program of their invention, the
modification is to the JAVA application program (App. Br. 9, § VII.A.3.).
This modification does not change the operation of the calling program (id.).

EXAMINER’S RESPONSE
The Examiner finds Leverenz teaches that the calling program
modifies the default environment to allow access to the JAVA virtual
machine (Ans. 8, § (10)(B)). The Examiner further finds the JAVA
application program is part of the JAVA virtual machine and thus, the JAVA
application is modified (id.). The Examiner continues that once the
interpreter is loaded, the default environment is changed; thus, since the
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interpreter must accept the modified environments, its operation is modified
(id.).

Issue 1 – claims 1-22: Have Appellants met the burden of showing
the Examiner erred in concluding Leverenz teaches the client program has
instructions to modify the operation of the client program in accordance with
determination of the operating system?
Issue 2 – claims 23-25: Have Appellants met the burden of showing
the Examiner erred in concluding Leverenz and Crowley, taken alone or in
combination, teach or suggest the recited limitations of claims instructions of
claims 23-25?

FINDINGS OF FACT (FF)
Leverenz Reference
(1) Leverenz teaches a method and system for enabling injection of
non-native code into a JAVA environment (Abstract). The method provides
a software hook for detecting the loading of a JAVA interpreter and then
creates a connection that communicates with an executing JAVA application
(id.). A method is also provided that loads in a customized
CLASSLOADER module that identifies a location of non-native code, and
then loads in the non-native code identified by the customized
CLASSLOADER module (id.).

(2) When a calling program needs to load a JAVA application to
perform some functionality, the calling program first loads an interpreter (a
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dynamic link library) (col. 4, ll. 17-19). After the interpreter has
successfully loaded into memory, the calling program then calls
JNI_GetDefaultJAVAVMInitArgs to obtain the default environment from
the interpreter (col. 4, ll. 20-23).

(3) The JAVA virtual machine uses the default environment to
configure itself on startup (col. 4, ll. 23-24). The calling program then
modifies the default environment to allow access to the JAVA virtual
machine (col. 4, ll. 24-26). After the calling program has set the
environment, the calling program passes the environment to a command
string that causes the JAVA interpreter to accept the modified environment,
load the JAVA application into memory, and wait for further instructions
(col. 4, ll. 30-33). The calling program must then tell the interpreter to start
the JAVA virtual machine (col. 4, ll. 36-38).

PRINCIPLES OF LAW
Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18
(1966), stated that three factual inquiries underpin any determination of
obviousness:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined.

ANALYSIS
Issue 1
According to the Examiner, the calling program of Levenez
corresponds to the client program of Appellants’ invention (Ans. 8,
§(10)(B)). Although we agree with the Examiner that the calling program of
Levenez performs several of the recited functions, we find the Examiner has
not shown where Levenez teaches or suggests that the calling program
modifies the operation of itself in accordance with determination of the
operating system platform. The Examiner indicates where Levenez teaches
that several other programs are modified; however, the Examiner does not
show where the calling program is modified.
In another basis for rejection, the Examiner also seems to find the
interpreter of Levenez corresponds to the client program (Ans. 9, §(10)(C)).
However, under this correspondence, the Examiner has not shown Levenez
teaches or suggests the interpreter determines the operating system platform
or that it modifies its operation based on that determination. Levenez
instead teaches that the calling program loads a dynamic link library (or
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interpreter), and the calling program determines the default environment (FF
2).
Accordingly, we find Levenez does not teach or suggest the client
program modifying its operation in accordance with the client program.

Issue 2
The Examiner has presented mappings for claims 9-15 and rejected
claims 23-25 for similar reasons (Ans. 6). Appellants have not presented
any arguments for overcoming the Examiner’s rejections for claims 23-25.
The arguments presented by Appellants are that Levenez does not teach or
suggest a client program that includes instructions to determine the operating
system platform of its client computer; a client program that communicates
with a server computer; or the client program modifying its operation.
Claims 23-25 do not recite any of these limitations.
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Since
Appellants did not particularly point out errors in the Examiner’s reasoning
to persuasively rebut the Examiner's prima facie case of obviousness, we
will sustain the rejection for the same reasons indicated previously.

CONCLUSION
Based on the findings of facts and analysis above, we conclude
Appellants have met the burden of showing the Examiner erred in finding
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Levenez teaches or suggests the client program modifying its operation in
accordance with the client program. Accordingly, we conclude Appellants
have met the burden of showing the Examiner erred in rejecting claims 1-22
under 35 U.S.C. § 103(a) for obviousness over Leverenz and Crowley.
Additionally, we conclude Appellants have not met the burden of
showing the Examiner erred in concluding Leverenz and Crowley, taken
alone or in combination, teach or suggest the recited limitations of claims
23-25. Accordingly, we conclude Appellants have not met the burden of
showing the Examiner erred in rejecting claims 23-25 under 35 U.S.C. §
103(a) for obviousness over Leverenz and Crowley.

DECISION
The Examiner’s rejection of claims 1-22 under 35 U.S.C. § 103(a) as
being obvious over Leverenz and Crowley is reversed.
The Examiner’s rejection of claims 23-25 under 35 U.S.C. § 103(a) as
being obvious over Leverenz and Crowley 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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peb

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