Ex Parte Howell et alDownload PDFPatent Trial and Appeal BoardDec 22, 201512463892 (P.T.A.B. Dec. 22, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/463,892 05/11/2009 22801 7590 12/24/2015 LEE & HA YES, PLLC 601 W. RIVERSIDE A VENUE SUITE 1400 SPOKANE, WA 99201 FIRST NAMED INVENTOR Jonathan R. Howell 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. MS1-3879US 1494 EXAMINER NIGH, JAMES D ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 12/24/2015 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): lhptoms@leehayes.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN R. HOWELL, JACOB R. LORCH, JEREMY E. ELSON, and JOHN R. DOUCEUR Appeal2013-006751 Application 12/463,892 1 Technology Center 3600 Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON A.PPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 17-36. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify Microsoft Corporation as the real party in interest. Br. 3. Appeal2013-006751 Application 12/463,892 THE INVENTION Appellants claim "[t]echniques for leveraging legacy code to deploy native-code desktop applications over a network." Spec. i-f 4. Claim 17, reproduced below, is representative of the subject matter on appeal. 17. A method comprising: sending a request to execute an application comprising native code from a browser of a computing device; responsive at least in part to the sending of the request, receiving the native code of the application at the computing device; assigning a portion of memory of the computing device to the application comprising the native code, the portion of the memory being enforced by hardware of the computing device; executing the native code of the application within the portion of the memory being enforced by the hardware regardless of whether the native code is unsafe or un-trusted; monitoring each interface call made by the application for system services outside of the portion of the memory to determine whether the respective interface call is permissible; responsive at least in part to the monitoring, routing the permissible interface calls to the browser; and enabling the browser of the computing device to provide the system services outside of the portion of memory. Appeal Br. 18 (Claims App.). THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Miner Traversat us 4,874,164 US 2004/0168030 Al 2 Oct. 17, 1989 Aug.26,2004 Appeal2013-006751 Application 12/463,892 Traversat US 6,874,066 B2 Mar. 29, 2005 Chen US 2009/0282474 Al Nov. 12, 2009 The following rejections are before us for review. Claims 17-23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 17, 19, 20, 22, 24, 26-28, and 30-36 are rejected under 35 U.S.C. § 102(e) as being anticipated by Chen. Claim 18, 21, 25, and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of both Traversat references. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen. FINDINGS OF FACT 1. We adopt the Examiner's findings as set forth on pages 4 to 8 of the Examiner's Answer. 2. The Specification describes the process by which the computing device loads the native code stating: Spec. ,-r 32. At an operation 204, the content provider 160(1) sends native code of the application 112(1) to the computing device 104 in response to receiving the request. Next, at an operation 206, the computing device 104 assigns a portion of memory 126 that is enforced by hardware 114 to the native-code application 112(1 ). The computing device 104 then loads and executes the native-code application 112(1) in the assigned portion of memory 126 at an operation 208. 3 Appeal2013-006751 Application 12/463,892 35 US.C. § 102(e) Rejection ANALYSIS The Appellants argued claims 17, 24, and 28 as a group (Appeal Br. 11 ). We select claim 17 as representative for this group, and the remaining independent claims standing or falling with claim 17. 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue that, "Chen is dedicated entirely to 'the process of validating an untrusted native code module to be executed on a computing device."' (Appeal Br. 13 (citing Chen, i-f 780)). We begin by construing the scope of the claim and to establish the weight of the claim limitation regardless of whether the native code is unsafe or un-trusted. Claim 17 recites, in pertinent part, the steps of: assigning a portion of memory of the computing device to the application comprising the native code, the portion of the memory being enforced by hardware of the computing device; executing the native code of the application within the portion of the memory being enforced by the hardware regardless of whether the native code is unsafe or un-trusted; ... (Emphasis added). Thus, in claim 17, there is no step of uploading the native code application to the device. The claim starts in effect with the executing step of the native code within the portion of the memory being enforced by the hardware. The claim is thus blind as to how the native code application becomes within the portion of the memory. Based on this claim construction, we find that Chen meets the claim requirement of "executing the native code of the application within the portion of the memory being enforced by the hardware regardless of whether 4 Appeal2013-006751 Application 12/463,892 the native code is unsafe or un-trusted" because the native code module is executed as a matter of course once the code is filtered by the validator and loaded into memory. i-fi-f 5 8, 60 and 61. In other words, as the system in Chen sees it, a code that is forwarded to the memory gets executed as a matter of course regardless of whether the native code is unsafe or un- trusted because the native code has already been filtered beforehand by the validator. Nowhere in the claim is there any requirement for determining when a safe or unsafe condition of the native application code exits. Thus, because in Chen, the execution step acts on all applications placed in the memory, the claim requirement of "regardless of whether the native code is unsafe or un-trusted" is met. Accordingly, we affirm the anticipation rejection of independent claims 17, 24, and 28. We also affirm the anticipation rejection of dependent claims 19, 20, 22, 26, 27, and 30-36 because Appellants do not challenge such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). 35 US.C. § 103(a) Rejection Appellants' arguments to the obvious rejection of dependent claims 18, 21, 23, 25, and 29 are likewise not persuasive because these arguments do not specify why one having ordinary skill in the art would not find the proposed combination Chen in view of Traversat obvious. "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." 3 7 C.F .R. § 41.37(c)(l)(iv). 5 Appeal2013-006751 Application 12/463,892 35 USC§ 101 Rejection Because we affirm the rejections of the claims as anticipated by, or obvious over, the prior art, we decline to reach a decision on the rejection of claims 17-23 under 35 U.S.C. § 101. CONCLUSIONS OF LAW We conclude the Examiner does not err in rejecting claims 17, 19, 20, 22, 24, 26-28, and 30-36 under 35 U.S.C. § 102(e) as being anticipated by Chen. We conclude the Examiner does not err in rejecting claims 18, 21, 25, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of Traversat. We conclude the Examiner does not err in rejecting claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Chen. DECISION The decision of the Examiner to reject claims 17-36 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)(l )(iv). AFFIRMED llw 6 Copy with citationCopy as parenthetical citation