Ex Parte Koizumi et al

Board of Patent Appeals and Interferences

Nov 24, 2003

09080241 (B.P.A.I. Nov. 24, 2003)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHINOBU KOIZUMI, ICHIRO KYUSHIMA,
TAN WATANABE,
TOSHIAKI KOHNO and SINGI DOMEN
_____________
Appeal No. 2003-1145
Application No. 09/080,241
______________
HEARD: November 5, 2003
_______________
Before THOMAS, RUGGIERO, and LEVY, Administrative Patent Judges
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claim 30, which is the only claim remaining in the present
application. Claims 1-29 have been canceled.
The disclosed invention relates to a translator for
translating source programs into machine language programs in an
electronic computer system. A compiler translates a source
program into an abstract object program which is common to a
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plurality of different types of computers. An installer converts
the abstract object program into a machine language program at
the target computer based on machine language instruction rules
of the target computer.
Claim 30, the sole claim on appeal, is illustrative of the
invention and reads as follows:
30. A method for succeeding a program prepared in
a first computer by a second computer, said first
computer having a first instruction set which is
different from a second instruction set of said second
computer, said method comprising the steps of:
installing in said second computer an abstract
object program compiled from a source program which is
installed in said first computer;
generating a machine language program of said
second instruction set from said abstract object
program to load on a memory of said second computer
based on machine instruction generation rules, said
machine language program when generated being directly
executable in said second computer and having a binary
format; and
executing said machine language program by said
second computer upon loading said machine language
program to said memory of said second computer.
The Examiner’s Answer cites the following prior art
references:
Chan et al. (Chan) 5,280,613 Jan. 18, 1994
(filed Jun. 25, 1990)
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Application No. 09/080,241
1 The Aho reference is mentioned in the Answer as a supporting document
for the Examiner’s position but is not part of the stated ground of rejection.
2 The Appeal Brief was filed August 28, 2002 (Paper No. 26). In
response to the Examiner’s Answer dated November 5, 2002 (Paper No. 27), a
Reply Brief was filed January 6, 2003 (Paper No. 28), which was acknowledged
and entered by the Examiner as indicated in the communication dated March 21,
2003 (Paper No. 30).
3
Alfred V. Aho et al. (Aho), Compilers: Principles, Techniques and
Tools, Chapter 1, pages 1-24, Addison-Wesley Publishing Company
(March 1988).1
Claim 30 stands finally rejected under 35 U.S.C. § 102(e) as
being anticipated by Chan.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs2 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
anticipation relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
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that the Chan reference fully meets the invention as set forth in
claim 30. Accordingly, we affirm.
We note that anticipation is established only when a single
prior art reference discloses, expressly or under the principles
of inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
At pages 3 and 4 of the Answer, the Examiner indicates how
the various limitations in appealed claim 30 are read on the
disclosure of Chan. In particular, the Examiner points to Chan’s
illustrations in Figures 2 and 13 along with the respective
accompanying descriptions beginning at column 2, line 33 and
column 56, line 42 of Chan.
In our view, the Examiner’s analysis is sufficiently
reasonable that we find that the Examiner has as least satisfied
the burden of presenting a prima facie case of anticipation. The
burden is, therefore, upon Appellants to come forward with
evidence and/or arguments which persuasively rebut the Examiner’s
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prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments
which Appellants could have made but chose not to make in the
Brief have not been considered [see 37 CFR § 1.192(a)].
In response to the Examiner’s anticipation rejection,
Appellants have offered several arguments in support of their
contention that Chan fails to teach or suggest numerous features
of appealed claim 30. Initially, Appellants contend (Brief, page
6) that Chan’s HPcode-Plus object file, which the Examiner has
asserted corresponds to the claimed “abstract object program,” is
never executed by an actual physical machine nor translated into
a machine program in binary format for execution by a second
computer.
After careful review of the Chan reference in light of the
arguments of record, however, we are in agreement with the
Examiner’s position as stated in the Answer. In our view,
regardless of the correctness of Appellants’ assertion that
Chan’s HPcode-Plus program is executed only by a virtual machine,
there is no requirement in claim 30 that the abstract object
program is executed by a physical machine. Further, as pointed
out by the Examiner (Answer, page 5), there is a clear disclosure
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3 See the definitions of “machine code,” “machine instruction,” and
“machine language” at page 247 of Microsoft Press® Computer Dictionary (Second
Edition), a copy of which is attached to this decision.
6
in Chan (e.g., Figures 2 and 13) of the conversion of the HPcode-
Plus object files 1150 and 1160 into executable code in the form
of binary format machine language instructions 1356 at the
installer site.3
We also find to be unpersuasive Appellants’ related argument
(Brief, page 7; Reply Brief, pages 2 and 3) that the object code
representations 222, 232 in the second computer of Chan are not
directly executable, but rather require further processing to
generate a machine language program in binary format. In support
of this contention, Appellants point to a passage at column 61,
lines 9-13 of Chan which discusses the use of a native linker for
producing an executable program.
We find ourselves, however, in agreement with the Examiner’s
assertion (Answer, page 8) that, contrary to Appellants’
contention that the use of a native linker means that Chan’s
machine instructions are not directly executable, the passage at
column 61, lines 9-13 of Chan can reasonably be interpreted as
stating only that the executable machine instructions 222 and 232
in Chan are directly linked by the linker for execution. We
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would further point out that this interpretation of the
disclosure of Chan in relation to the language “machine language
program . . . being directly executable” in appealed claim 30 is
buttressed by our review of Appellants’ disclosure in the
specification. We note that it is a basic tenet of patent law
that claims are to be given their broadest reasonable
interpretation consistent with the description in the
specification.
With the above discussion in mind, we have reviewed
Appellants’ specification for guidance as to the proper
interpretation of the claim language and we find little
enlightenment as to how to properly interpret the “directly
executable” language of appealed claim 30. Further adding to
this difficulty is the fact that Appellants’ arguments in the
Briefs do not refer to any specific portion of their
specification or drawing figures in support of their arguments
which attempt to distinguish the claim language from the applied
prior art. Given the paucity of description in Appellants’
specification as to the nature of the machine instructions
generated at the installer location, we can only reach the
conclusion that the “directly executable” language of appealed
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claim 30 simply does not require the interpretation asserted by
Appellants in the Briefs.
We also agree with the Examiner (Answer, page 4) that the
alternative “interpreter” embodiment discussed at column 10,
lines 37-43 of Chan provides additional support for the position
that Chan’s disclosure anticipates the features set forth in
claim 30. In this alternative embodiment, Chan discloses that
the compiler intermediate representation 212 is directly executed
without first translating the intermediate representation into
object code.
We have considered Appellants’ arguments (Brief, page 8)
directed to Chan’s “interpreter” embodiment and find these
arguments to be without merit. While we agree with Appellants’
characterization of the operation of an interpreter as one that
sequentially translates and executes source program statements
one-by-one, it is equally true that this sequential statement by
statement translation must involve a conversion into machine
language code which enables execution by a computer. Since this
machine code execution would indisputably include computer
register involvement, we find that Chan’s interpreter embodiment
also provides for the generation of a directly executable machine
language program loaded on the memory of a second computer as set
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forth in appealed claim 30.
Lastly, we find to be unpersuasive Appellants’ contention
(Brief, page 6) that, since Chan’s source program 202 is a
machine independent program, there is no disclosure that the
computer program 202 in Chan is a source program of a first
instruction set installed in a first computer, the first
instruction set being different from a second instruction set in
a second computer. While Appellants are correct that Chan’s
program 202 is a machine independent program, it is also clear
from the disclosure of Chan (column 9, lines 54) that this
machine independent program is generated from a producer site 206
having a native computer platform, i.e., a first instruction set.
Chan goes on to indicate that the target or second computers 216
and 226 have target computer platforms, i.e., second instruction
sets, which may not be the same as platform (first instruction
set) 206.
In view of the above discussion, since the Examiner’s prima
facie case of anticipation has not been overcome by any
convincing arguments from Appellants, the Examiner’s 35 U.S.C.
§ 102(e) rejection of the sole appealed claim 30, is sustained.
Therefore, the decision of the Examiner rejecting claim 30 is
affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JFR/vsh
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