Ex Parte Kalman et al

Patent Trial and Appeal Board

Feb 28, 2017

12873219 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/873,219 08/31/2010 Daniel Kalman IL920100048US1 4872
63675 7590 03/02/2017
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PAIR_eofficeaction@pattersonsheridan.com
PS Docketing @ pattersonsheridan .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL KALMAN, MARCO PISTOIA, GUY PODJARNY,
OMER TRIPP, and OMRI WEISMAN
Appeal 2014-0038061
Application 12/873,2192
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed Oct. 14,
2013), the Examiner’s Answer (“Ans.,” mailed Dec. 6, 2013), and Final
Office Action (“Final Act.,” mailed May 14, 2013).
2 Appellants identify “International Business Machines Corporation” as the
real party in interest. Br. 3.
Appeal 2014-003806
Application 12/873,219
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to incremental static analysis. Spec.,
Title. Claim 1, reproduced below, with added bracketed matter, is
illustrative of the subject matter on appeal.
1. A system, comprising:
[(a)] one or more computer processors;
[(b)] a change impact analyzer configured to identity
one or more portions of computer software, including at least a
changed portion that was changed subsequent to static analysis
having been performed on the computer software;
[(c)] a static analysis result invalidator configured to
invalidate an assertion, resulting from the static analysis, that at
least one of the identified portions, which is dependent on the
changed portion, contains a vulnerability; and
[(d)] an incremental static analyzer configured to
perform a first incremental static analysis by operation of the
one or more computer processors and on at least the changed
portion.
REJECTIONS3
Claims 1, 9, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kloppenburg (Incrementation of Analyses for Next
Generation IDEs, 1—182, doctoral desertation (2009), hereinafter
“Kloppenburg”) and Alpem et al. (US 2005/0015752 Al, pub. Jan. 20, 2005,
hereinafter “Alpem”).
Claims 2-4, 10-12, and 18—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kloppenburg, Alpem, and Tripp et al. (TA.J: Effective
3 According to the Examiner, “[t]he amendments of 7/19/13 overcome the
112, 1st and 112, 2nd rejections.” Advisory Act. 2 (mailed Aug. 6, 2013).
As such, the rejections under 35 U.S.C. § 112 have been withdrawn. See
Ans. 3.
2
Appeal 2014-003806
Application 12/873,219
Taint Analysis of Web Applications, IBM T.J. Watson Research Center, IBM
Software Group (2009) hereinafter “Tripp”).
Claims 5—8, 13—16, and 21—24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kloppenburg, Alpem, Tripp, and Sikoro, JAVA,
Practical Guide for Programmers, 125—126, Elsevier Science (USA) 2003.
DISCUSSION
We are not persuaded that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because Appellants’ arguments against the
proposed combination fail to address the Examiner’s actual findings in the
rejection of record by distinctly pointing out the Examiner’s supposed errors.
At the outset, we note that in reviewing the Examiner’s Answer and
Appellants’ Appeal Brief it is apparent that the Examiner and the Appellants
are in dispute as to the meaning of the claim term “assertion” recited in
limitation (c) of claim 1. See Br. 15—16; see also Ans. 29-31. According to
the Examiner, the Specification lacks a definition of the term “assertion,”
and, therefore, the Examiner provides a dictionary definition of the term.
See Ans. 29. Furthermore, the Examiner explains why the proffered
definition is consistent with Appellants’ Specification and how the
Examiner’s findings read on the claimed subject matter. See id. 29—31
(citing Spec. 120). We find the Examiner’s use of a dictionary here is
appropriate to determine the ordinary and customary meaning of the claim
term as viewed by a person of ordinary skill in the art.
In contesting the Examiner’s findings as to limitation (c) of claim 1,
Appellants contend that “Kloppenburg is silent on any assertion, resulting
from static analysis, that a dependent portion of the changed portion contains
3
Appeal 2014-003806
Application 12/873,219
a vulnerability — let alone any such assertion being invalidated in the
manner claimed.” Br. 16 (citing Kloppenburg, p. 40). Appellants argue
even assuming, arguendo, that the coding errors in Alpern
correspond to the recited vulnerability, the proposed
modification of Kloppenburg with Alpern still does not teach or
suggest any portion dependent on the changed portion, being
identified. Respectfully, persons having ordinary skill in the art,
even having modified Kloppenburg with Alpern, would still
have no guidance on any changed portion specified by a path
expression in ASL also having a dependent portion that is
identified - or, for that matter, any assertion that the dependent
portion contains a vulnerability being invalidated.
Id. at 17.
We agree with the Examiner that “Appellants make many conclusory
arguments throughout the Appeal Brief of how limitations of the claims are
not found in the prior art, but then Appellants fail to address the analysis and
citations provided by the Examiner.” Ans. 29. As the Examiner observes,
Appellants have once again not addressed pages 62 or 31 of
Kloppenburg. Page 62 discloses reevaluating constraints to
determine if any information it depends on (i.e. an assertion as
to which information it depends from) has been invalidated.
This alone reads on the claim limitation. Page 31, 1st paragraph
states that in non-incremental analyses, which according to
page 30 can operate with incremental analysis, facts are created.
These “facts” can also read on the “assertion.” Page 31 then
calculates the changes and removes the invalidated parts of the
result (i.e. the facts/assertions). This also reads on the
limitation and has not been addressed by the Appellants.
Ans. 30—31.
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
4
Appeal 2014-003806
Application 12/873,219
identify the alleged error in the [Ejxaminer’s rejections,” (citing Ex Parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“The panel then
reviews the obviousness rejection for error based upon the issues identified
by appellant, and in light of the arguments and evidence produced
thereon.”))). Besides disagreeing with the Examiner, Appellants do not offer
persuasive reasoning, an alternate dictionary definition and interpretation of
the term “assertion,” or provide evidence to dispute the Examiner’s findings.
Appellants offer no substantive arguments to rebut the specific underlying
factual findings made by the Examiner. And we decline to examine the
claims sua sponte, looking for distinctions over the prior art. Cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1, and independent claims 9 and 17, which are argued as
a group. See Br. 17. We have considered Appellants’ separate arguments
against several of the dependent claims in the Appeal Brief, but we are
unpersuaded of error on the part of the Examiner. We adopt the Examiner’s
findings and responses to Appellants’ arguments in the Answer as our own,
and, we sustain the rejection of dependent claims 2—8, 10-16, and 18—24.
DECISION
The Examiner’s rejections of claims 1—24 under 35 U.S.C. § 103(a)
are 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
5