Ex Parte Magid

Board of Patent Appeals and Interferences

Feb 18, 2009

10629431 (B.P.A.I. Feb. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT MARK MAGID
____________

Appeal 2008-3824
Application 10/629,431
Technology Center 2100
____________

Decided:1 February 19, 2009
____________

Before JOHN C. MARTIN, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge COURTENAY.

Opinion Concurring-in-part and Dissenting-in-part filed by Administrative
Patent Judge MARTIN.

COURTENAY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

Appeal 2008-3824
Application 10/629,431

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1 and 5-30. Claims 2-4 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

INVENTION
The invention on appeal is directed generally to computer software.
More particularly, Appellant’s invention is directed to Information
Management System (ISM) software that is used to manage information
stored on mainframe computers, such as the S/390 mainframes
manufactured by International Business Machines, Inc. (Spec. 1).
ILLUSTRATIVE CLAIMS
Claims 1 and 8, which further illustrate the invention, follow:
1. A method for intercepting user exit interfaces in
IMS programs, comprising:

installing a program library at an Information
Management System (IMS) system server as the first
library in an IMS program library concatenation, the
program library including an interception routine;

dynamically loading an interface routine at the
IMS system server;

wherein the interception routine communicates
with the interface routine to resolve name ambiguity and
enable simultaneous use of a single exit by plural users,
and the method further comprises:

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passing control from an IMS program at the IMS
system server to the interface routine;

receiving control at the interception routine from
the IMS program; and

establishing the interception routine as a user exit
routine.

8. The method of Claim 7, further comprising:

comparing a “candidate user-exit” load module to
a predetermined interception routine “eye-catcher”; and

treating a non-matching “candidate user-exit” load
module as a user exit routine.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejections:
Fortin US 5,528,753 Jun. 18, 1996
Baer US 6,035,303 Mar. 7, 2000
Chan US 6,460,178 B1 Oct. 1, 2002

THE REJECTIONS
Claims 21-30 stand rejected under 35 U.S.C. § 101 as being directed
to non statutory subject matter.
Claims 1, 11-14, and 21-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Fortin and Baer.
Claims 5-10, 15-20, and 25-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Fortin, Baer, and
Chan.
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GROUPING OF CLAIMS
Appellant argues independent claim 1 separately, and contends that
“[t]he arguments above [directed to claim 1] apply mutatis mutandis to
independent claims 11 and 21.” (App. Br. 7). Appellants do not present
separate arguments for dependent claims 12-14 and 22-24 that also stand
rejected as being obvious over the combination of Fortin and Baer. We will,
therefore, treat claims 1, 11-14, and 21-24 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues claim 8 separately (App. Br. 7-8). Appellants do not
present separate arguments for claims 9 and 10 that depend upon claim 8.
We will, therefore, treat claims 8-10 as standing or falling with
representative claim 8.
Appellant presents no arguments directed to the separate patentability
of claims 5-7, 15-20, and 25-30 that stand rejected as being unpatentable
over the combination of Fortin, Baer, and Chan.

APPELLANT’S CONTENTIONS
Regarding the Examiner’s rejection of claims 21-30 under 35 U.S.C.
§ 101, Appellant affirmatively states that “[c]laim 21 must be interpreted in
accordance with the principles of 35 U.S.C. §112, sixth paragraph, invoking
means-plus-function language, MPEP § 2181 to limit the claim to what is
shown and described in the specification and structural equivalents thereto.”

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(App. Br. 8). Based on the support found in the Specification, Appellant
contends that claims 21-30 are directed statutory subject matter (App. Br.
8-9).
Regarding the Examiner’s rejection of representative claim 1 that
stands rejected as being unpatentable over the combination of Fortin and
Baer, Appellant contends that “[n]owhere does Fortin address the topic of
enabling a single exit (appearing in all independent claims) to be used by
multiple users.” (App. Br. 5).2 Appellant also contends that the portions of
Fortin relied on by the Examiner do not even hint at anything resembling
resolution of name ambiguity, as claimed in each independent claim (App.
Br. 5-6).
Regarding the Examiner’s rejection of representative claim 8 that
stands rejected as being unpatentable over the combination of Fortin, Baer,
and Chan, Appellant contends that “[t]here is simply no comparison of
anything at all in the relied-upon portions of Fortin, much less the
particularly recited comparison of, e.g., claim 8.” (App. Br. 8).
Regarding the obviousness rejections of both claims 1 and 8,
Appellant contends that the Examiner has improperly relied upon hindsight
reconstruction (App. Br 7-8). Appellant also presents a “teaching away”
argument regarding the Fortin teaching of single entry and single exit
routines that are selected from plural routines (App. Br. 6).

2 Appellant presents a new argument in the Reply Brief that Fortin does not
teach plural calls directed simultaneously to a single exit (Reply Br. 2-3).
We consider this new argument to be untimely. See Optivus Tech., Inc. v.
Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue not
raised in an opening Brief is waived).
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EXAMINER’S RESPONSE
Regarding Appellant’s arguments directed to the 101 rejection of
claims 21-30, the Examiner concludes that the claimed “logic means” (claim
21) are limited to logic, i.e., program code or software per se, which is not
the same as physical means, such as hardware (Ans. 13-14).
Regarding Appellant’s arguments directed to the obviousness
rejection of representative claim 1, the Examiner finds that Fortin’s common
exit code (718, Fig. 7, col. 6, l. 62) teaches a single exit that is used by plural
target routines (Ans. 10).
Regarding the Appellant’s arguments directed to the obviousness
rejection of representative claim 8, the Examiner responds as follows:
However, FIG. 6A of Fortin discloses computing and retrieving
the Address for [User Supplied] Exit Instrumentation Routine.
Furthermore, FIG.7 of Fortin discloses the Instrumentation
Library storing the Common Exit Code, User Supplied Entry
Instrumentation Routines, and User Supplied Exit
Instrumentation Routines. It is respectfully submitted that
without comparing the User Supplied Instrumentation Routine
(i.e., "candidate user-exit") to a predetermined interception
routine 'eye catcher' (e.g., either Common Exit Code or the User
Supplied Entry Instrumentation Routines in the Instrumentation
Library of FIG.7), it would be impossible for the demux-entry
of FIG.6A to select (i.e., treating the "candidate user-exit" as a
user exit routine) and compute the right address for the Exit
Instrumentation Routine.
(Ans. 13).

ISSUES
Based upon our review of the administrative record, we have determined
that the following issues are dispositive in this appeal:
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1. Has Appellant shown error in the Examiner's legal conclusion
that claims 21-30 are directed to non statutory subject matter
under 35 U.S.C. § 101?
2. Has Appellant shown that the primary Fortin reference teaches
away from Appellant’s claimed invention?
3. Has Appellant shown that the Examiner has erred by relying
upon impermissible hindsight?
4. Has Appellant shown error in the Examiner's finding that the
combination of Fortin and Baer teaches and/or suggests the use
of a single exit by plural users? (See independent claims 1, 11,
and 21).
5. Has Appellant shown error in the Examiner's finding that the
combination of Fortin and Baer teaches and/or suggests
resolving name ambiguity? (See independent claims 1, 11, and
21)
6. Has Appellant shown error in the Examiner's finding that the
combination of Fortin and Baer teaches and/or suggests a
comparison, as recited in claim 8?

PRINCIPLES OF LAW
“If a claim covers material not found in any of the four statutory
categories, that claim falls outside the plainly expressed scope of § 101 even
if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d
1346, 1354 (Fed. Cir. 2007).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
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127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

THE FORTIN REFERENCE
1. Fortin teaches that an instrumentation call is directed to the
appropriate common and user specific exit routines (col. 5, ll.
50-51; see also Fig. 7, common exit code 718).
2. Fortin teaches that the “demux-entry code saves the registers
and calls 718 the common Exit code and calls 720 the user
supplied Exit instrumentation routine with the return value from
the target routine as a parameter.” (Col. 6, ll. 61-64).
3. Fortin teaches that target routines are selected by the user (col.
5, ll. 11-12).

THE BAER REFERENCE
4. Baer teaches that advanced information management system
structures are required to store and manage digitized data (col.
1, ll. 17-19).
5. Baer teaches an ordered collection of elements, each identified
by a key (col. 2, ll. 34-35).
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6. Baer teaches a distributed object system including a library
server 110 (Fig. 1).

ANALYSIS
At the outset, we consider Appellant’s arguments only to the extent
that such arguments are directed to claimed subject matter.

ISSUE 1
We decide the question whether Appellant has shown error in the
Examiner's legal conclusion that claims 21-30 are directed to non statutory
subject matter under 35 U.S.C. § 101. For convenience, we reproduce
independent claim 21, as follows:
21. A computer program device for
intercepting user exit interfaces in IMS
programs, comprising:
logic means for communicating
between an interception routine and an
interface routine to resolve name ambiguity
and enable simultaneous use of a single exit
by plural users.
(Claim 21).

We note that Appellant has expressly invoked 112, sixth paragraph,
not only in the principal Brief (page 8), but also in the last line of the
Specification: “No claim element herein is to be construed under the
provisions of 35 U.S.C. section 112, sixth paragraph, unless the element is
expressly recited using the phrase ‘means for.’” (Spec. 8).
Therefore, we look to Appellant’s Specification for guidance on the
intended scope of the claimed “logic means” (claim 21). In particular, we
look to the Specification to identify the corresponding structure for the
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function of “communicating between an interception routine and an interface
routine to resolve name ambiguity and enable simultaneous use of a single
exit by plural users.” (Claim 21).3
The pertinent portion of the Specification (pointed to by Appellant)
begins on page 4 and continues to page 5, as follows:
It is to be understood that in the system 10 described
above, the logic of the present invention can be contained
on a data storage device with a computer readable
medium, such as a computer diskette. Or, the instructions
may be stored on a magnetic tape, hard disk drive,
electronic read-only memory (ROM), optical storage
device, or other appropriate data storage device or
transmitting device thereby making a computer program
product, i.e., an article of manufacture according to the
invention. In an illustrative embodiment of the invention,
the computer-executable instructions may be written
using mainframe assembler language. Moreover, the IMS
user program 24 may be written using assembler, PL/I,
FORTRAN, COBOL, Pascal, REXX, or Java.

The flow charts herein illustrate the structure of the logic
of the present invention as embodied in computer
program software. Those skilled in the art will appreciate
that the flow charts illustrate the structures of computer
program code elements including logic circuits on an
integrated circuit, that function according to this
invention. Manifestly, the invention is practiced in its
essential embodiment by a machine component that

3 In Aristocrat Techs. Austl. Pty Ltd. v Inter. Game Tech., 521 F.3d
1328 (Fed. Cir. 2008), the court set forth that for a claim to a programmed
computer, a particular algorithm may be the corresponding structure under
§ 112, sixth paragraph.

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renders the program elements in a form that instructs a
digital processing apparatus (that is, a computer) to
perform a sequence of function steps corresponding to
those shown.
(Spec. 4-5, emphasis added).
Thus, consistent with the Specification, we find that the 112, sixth
paragraph scope of the claimed “logic means” broadly encompasses at least
a first embodiment that consists of software per se: “[t]he flow charts herein
illustrate the structure of the logic of the present invention as embodied in
computer program software.” (Spec. 5, ll. 7-8). We also find that the 112,
sixth paragraph scope of the claimed “logic means” broadly encompasses at
least a second embodiment where “computer program code elements
[include] logic circuits on an integrated circuit.” (i.e., firmware) (Spec. 5, ll.
9-10).
Thus, the intended scope of Appellant’s claim 21 broadly
encompasses statutory subject matter (i.e., logic circuits on an integrated
circuit) as well as non statutory subject matter (i.e., software per se). Our
reviewing court has clearly stated that “[t]he four categories [of § 101]
together describe the exclusive reach of patentable subject matter. If a claim
covers material not found in any of the four statutory categories, that claim
falls outside the plainly expressed scope of § 101 even if the subject matter
is otherwise new and useful.” In re Nuijten, 500 F.3d at 1354. Because the
scope of the claimed “logic means” clearly covers material not found in any
of the four statutory categories (i.e., software per se), we conclude that
independent claim 21 is non statutory under 35 U.S.C. § 101. Because
dependent claims 22-30 do not remedy the deficiencies of claim 21, we also
conclude that claims 22-30 are non statutory under 35 U.S.C. § 101.

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ISSUE 2
We decide the question of whether Appellant has shown that the
primary Fortin reference teaches away from Appellant’s claimed invention.
As discussed regarding ISSUE 4 infra, we find Appellant has
mischaracterized (App. Br. 6, ¶1) the thrust of the Examiner’s rejection by
shifting the focus to Fortin’s user-supplied exit routine 720, instead of
traversing the Examiner’s specific finding that Fortin’s common exit code
(718, Fig. 7, col. 6, l. 62) teaches a single exit that is used by plural target
routines (i.e., users) (Ans. 10, 12, ¶¶1-3). Moreover, “[t]he prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . . .” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). This reasoning is applicable here.
Accordingly, we find Appellant’s “teaching away” arguments unavailing.

ISSUE 3
We decide the question whether Appellant has shown the Examiner
has erred by relying upon impermissible hindsight.
With respect to the issue of hindsight, in KSR the U.S. Supreme Court
reaffirmed that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” KSR, 127 S. Ct. at 1742. See also Graham v. John Deere
Co., 383 U.S. at 36. Nevertheless, in KSR the Supreme Court also qualified
the issue of hindsight by stating that “[r]igid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” KSR, 127 S. Ct. at 1742-43.
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In KSR, the Supreme Court further stated:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.

KSR, 127 S. Ct. at 1740.

This reasoning is applicable here. The Examiner looks to the
secondary Baer reference for its teaching of storing routines in an IMS
library (Ans. 4). While Appellant contends that the Examiner’s proffered
motivation to combine has been made without regard to what the references
fairly teach or suggest (App. Br. 7), Appellant fails to specifically traverse
the Examiner’s finding that an artisan would have been motivated to
combine Fortin and Baer to make access of library objects (i.e., common exit
routines) available to multiple users as well as allowing the users to store
and retrieve said objects (Ans. 5; see also FF 5-6). Therefore, we find
Appellant has not met his/her burden of showing that the Examiner has erred
by relying on impermissible hindsight in formulating the rejection (see App.
Br. 7, 8).

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ISSUE 4
We decide the question whether Appellant has shown error in the
Examiner's finding that the combination of Fortin and Baer teaches and/or
suggests the use of a single exit by plural users (see independent claims 1,
11, and 21).
While Appellant contends that Fortin does not address the topic of
enabling a single exit to be used by multiple users (App. Br. 5), we find
Appellant has mischaracterized (App. Br. 6, ¶1) the thrust of the Examiner’s
rejection by shifting the focus to Fortin’s user-supplied exit routine 720,
instead of traversing the Examiner’s specific finding that Fortin’s common
exit code (718, Fig. 7, col. 6, l. 62) teaches and/or suggests a single exit that
is used by plural target routines (i.e., where each target routine is associated
with a user) (Ans. 10, 12, ¶¶1-3). We note that Fortin teaches that the
demux-entry code first calls the common Exit code 718 (relied on by the
Examiner), that is followed by a call to the user supplied Exit
instrumentation routine 720 (FF 1-2). We find the Examiner’s association of
plural users with plural target routines is supported by Fortin’s teaching that
the target routines are selected by the user (FF 3). We also find that Baer’s
teaching of an object library suggests that multiple users (i.e., clients) access
the object library (FF 6). We note that the Examiner’s rejection is based on
the combination of the references. Thus, we find the weight of the evidence
supports the Examiner’s position as set forth in the Answer. Accordingly, we
find Appellant has not met his/her burden of showing that the Examiner
erred.

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ISSUE 5
We decide the question whether Appellant has shown error in the
Examiner's finding that the combination of Fortin and Baer teaches and/or
suggests resolving name ambiguity. (see independent claims 1, 11, and 21).
After reviewing the record before us, we find Appellant has failed to
traverse the Examiner’s specific finding that “[i]t should be noted that col.
2:33-57 of Baer expressly discloses identifying each Java Object with a
unique key (which comprises text string(s) and object attributes (e.g., name
of the Java Object)), obviously, to avoid name/identity ambiguity (Emphasis
added).” (Ans. 11; see also FF 5). Therefore, we find Appellant has not met
his/her burden of showing that the Examiner erred.

ISSUE 6
We decide the question whether Appellant has shown error in the
Examiner's finding that the combination of Fortin and Baer teaches and/or
suggests a comparison, as recited in claim 8.
Appellant contends that “[t]here is simply no comparison of anything
at all in the relied-upon portions of Fortin, much less the particularly recited
comparison of, e.g., claim 8.” (App. Br. 8). However, our review of the
Briefs indicates that Appellant has failed to address the Examiner’s specific
findings regarding the comparison the Examiner indicates is necessarily (i.e.,
inherently) present in the Fortin reference, as follows:
It is respectfully submitted that without comparing the User
Supplied Instrumentation Routine (i.e., "candidate user-exit") to
a predetermined interception routine 'eye catcher' (e.g., either
Common Exit Code or the User Supplied Entry Instrumentation
Routines in the Instrumentation Library of FIG.7), it would be
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impossible for the demux-entry of FIG.6A to select (i.e.,
treating the "candidate user-exit" as a user exit routine) and
compute the right address for the Exit Instrumentation Routine.
(Ans. 13).
Based upon the above, we find the Examiner has provided a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent “comparison” necessarily flows from the teachings of
Fortin. “[A]fter the PTO establishes a prima facie case of anticipation based
on inherency, the burden shifts to appellant to ‘prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.’”
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)). See also MPEP §§ 2112 (IV.), (V.).
While the present case pertains to § 103, and not § 102, we note that the
question of obviousness is "based on underlying factual determinations
including . . . what th[e] prior art teaches explicitly and inherently . . . ." In
re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citing Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966); In re Dembiczak, 175 F.3d 994, 998
(Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)).
Here, Appellant has not met the burden of proving with evidence that
the subject matter shown to be in the prior art does not possess the
characteristic relied on by the Examiner. Therefore, we find Appellant has
not met his/her burden of showing that the Examiner erred.

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Dependent claims 5-7, 15-20, and 25-30
Appellant did not separately argue these claims that stand rejected as
being unpatentable over the combination of Fortin, Baer, and Chan. Thus,
Appellant has not shown the Examiner erred in rejecting claims 5-7, 15-20,
and 25-30. See 37 C.F.R. § 41.37(c)(1)(vii) (“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.”).

CONCLUSION
Based on the findings of facts and analysis above, Appellant has not
established that the Examiner erred in rejecting claims 21-30 under
35 U.S.C. § 101.
Based on the findings of facts and analysis above, Appellant has not
established that the Examiner erred in rejecting claims 1 and 5-30 under
35 U.S.C. § 103(a) for obviousness.

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DECISION
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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MARTIN, Administrative Patent Judge, concurring-in-part and dissenting-
in-part.

I write separately because I respectfully disagree with the Majority on
two points.
The first point is the Majority’s finding that Appellant has not
traversed “the Examiner’s specific finding that Fortin’s common exit code
. . . teaches a single exit that is used by plural target routines (i.e., users).”
(Majority op. at 12, Issue 2.)
In the last (nonfinal) Office action (at 4), the Examiner equated
“users” with “client routines” in finding that “a common exit code clearly
anticipates a single instance of a given exit interface that is used by multiple
target routines/users.” I note that the Examiner’s language, “exit interface,”
differs from the claim language argued by Appellant, which reads “use of a
single exit by plural users” (emphasis added). Thus, the Examiner’s above
finding implied that the Examiner was construing the term “exit” to be broad
enough to read an exit interface, i.e., Fortin’s Common Exit Code.
However, as pointed out by the Majority, in the Answer the Examiner
specifically found that “the Common Exit Code clearly teaches a Single Exit
that is used by plural Target Routines” (emphasis added). (Ans. 10.)
In the Brief, Appellant did not expressly challenge the Examiner’s
above equation of “target routines” with “users” or the Examiner’s finding
that Fortin’s Common Exit Code is an “exit interface.” Instead, Appellant
argued that Fortin fails to disclose “multiple target routines using a single
exit,” as required by the claims:
Elements 720 and 722 are lines drawn between the common
exit code in the library and a user-supplied exit routine, strongly
implying just the opposite of what is claimed. The relied-upon
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part of col. 5 of Fortin discloses that an “entry [i.e.,
demultiplexer entry] is provided for each target routine”, lines
48 and 49, and that a single entry and single exit routine are
selected from plural routines, lines 53-55. Both of these
teachings are strongly suggestive of an exit/entry being selected
for a specific target routine, the opposite of multiple target
routines using a single exit.
(App. Br. 6.) In the Reply Brief, Appellant further argues that
“‘[i]nstrumenting’ a large number of routines is not the same thing as
providing a single exit to plural user, . . . .”4 Reply Br. 1-2.
The Majority found that in making the above-quoted argument in the
Brief,
Appellant has mischaracterized (App. Br. 6, ¶1) the thrust of the
Examiner’s rejection by shifting the focus to Fortin’s user-
supplied exit routine 720, instead of traversing the Examiner’s
specific finding that Fortin’s common exit code (718, Fig. 7,
col. 6, l. 62) teaches a single exit that is used by plural target
routines (i.e., users) (Ans. 10, 12, ¶¶1-3).
(Majority op. at 12, Issue 2.5) I do not entirely agree that Appellants’
argument fails to traverse “the Examiner’s specific finding that Fortin’s
common exit code . . . teaches a single exit that is used by plural target
routines.” My understanding of Appellant’s argument is that the Common
Exit Code, the user supplied exit routines, and the demultiplexer entries
collectively will fail to result in multiple target routines using a single “exit,”
which argument strikes me as implicitly traversing the Examiner’s
conclusion that the claim term “exit” is broad enough to read on the

4 The remainder of this sentence reads, “much less providing it
simultaneously to plural users as required by, e.g., Claim 1.” I agree with
the Majority’s finding (supra, p. 5 n.2) that Appellant’s reliance on the
claim term “simultaneously” is belated and entitled to no consideration.
5 A similar finding appears at Majority op. at 14, Issue 4.
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Common Exit Code. Specifically, Appellant’s argument suggests that
Appellant believes the claim term “exit” should be limited to an exit point.
However, Appellant has not provided a satisfactory explanation of why the
claim term “exit,” when given its broadest reasonable interpretation
consistent with the rest of the claim language and the remainder of
Appellant’s application, should be so narrowly construed. For this reason
and for the other reasons cited by the Majority, I concur in the Majority’s
affirmance of the § 103(a) rejections with the exception of the rejection of
claims 8-10, addressed below.
My second point of disagreement with the Majority is that I would
reverse rather than affirm the § 103(a) rejection of claim 8 and its dependent
claims 9 and 10. Claim 8 depends on claim 1 through claims 5-7 and calls
for:
comparing a “candidate user-exit” load module to a
predetermined interception routine “eye-catcher”; and
treating a non-matching “candidate user-exit” load
module as a user exit routine.
(Claims App., Br. 11) (emphasis added). As noted by the Majority, the
Examiner found that such a comparison is inherently present in Fortin:
It is respectfully submitted that without comparing the User
Supplied Instrumentation Routine (i.e., “candidate user-exit”) to
a predetermined interception routine 'eye catcher' (e.g., either
Common Exit Code or the User Supplied Entry Instrumentation
Routines in the Instrumentation Library of FIG.7), it would be
impossible for the demux-entry of FIG.6A to select (i.e.,
treating the “candidate user-exit” as a user exit routine) and
compute the right address for the Exit Instrumentation Routine.
(Ans. 13.) Appellant responded by arguing:
Whatever the merits or lack thereof of the various “id ests” and
“exempli gratia” used throughout the argument above as well as
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Appeal 2008-3824
Application 10/629,431

the Answer as a whole, what is noteworthy is that nowhere does
Fortin teach, nor do the conferees allege, that a non-matching
candidate user-exit toad module is treated as a user exit routine.
No mention appears in this portion of the Answer about what
happens if no match is found in Fortin, much less that a non-
matching entity is treated as anything, much less still that it is
treated as a user exit routine.
(Reply Br. 3) (emphasis added). I find this argument persuasive and would
accordingly reverse the § 103(a) rejection of claim 8 and its dependent
claims 9 and 10.

pgc

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