Ex Parte Motta

Patent Trial and Appeal Board

Sep 24, 2014

11590137 (P.T.A.B. Sep. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GIOVANNI MOTTA
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Appeal 2012-004059
Application 11/590,1371
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellant's "invention relates generally to the generation of update
packages by a generator that can be used to update firmware/software
components in mobile handsets." Spec. ¶ 7.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to disputed limitation):
1. A matching component in a generator of update
packages including computer executable instructions stored in a
non-transitory medium which when executed by a processor
matches a first version of code to a second version of code, the
matching component comprising:
a first string buffer that holds a first string that is derived
from the first version of code;
a second string buffer that holds a second string that is
derived from the second version of code; and
wherein the matching component executes instructions to
extend a length of matches found by a longest common
substring technique by allowing a controlled number of
mismatches.

2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Sept. 21, 2011); Reply Brief ("Reply Br.," filed Jan. 11, 2012); Examiner's
Answer ("Ans.," mailed Nov. 25, 2011); Final Office Action ("Final Act.,"
mailed July 19, 2011); and the original Specification ("Spec.," filed
Oct. 30, 2006).
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Fries et al.
("Fries")
US 6,425,125 B1 July 23, 2002
Motta US 7,797,695 B2 Sept. 14, 2010
Rejections on Appeal
R1. Claims 1–6 stand rejected on the ground of nonstatutory
obviousness-type double patenting ("OTDP") as being unpatentable over
claims 1–7 of Motta in view of Fries. Ans. 4.
R2. Claims 1–6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Fries. Ans. 6.
GROUPING OF CLAIMS
Based on Appellant's arguments (App. Br. 7–11), we decide the
appeal of claims 1–6 under both rejections R1 and R2 on the basis of
representative claim 1.
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
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contentions with respect to claims 1–6, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner's Answer in response to Appellant's Arguments. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
1. OTDP Rejection R1 of Claims 1–6
Issue 1
Appellant argues (App. Br. 7–8) the Examiner's rejection of
claims 1–6 on the ground of nonstatutory obviousness-type double patenting
is in error. These contentions present us with the following issue:
Did the Examiner err in finding claims 1–7 of Motta in combination
with Fries teaches or suggests all the limitations of claim 1?
Analysis
Appellant argues "[t]he Examiner acknowledges '[Motta] does not
expressly claim: the longest common substring technique,'" and relies upon
Fries for this teaching. App. Br. 7 (citing Final Act. 5). Appellant further
contends Fries does not make up for the deficiencies of Motta, and only
"mention[s] 'the longest common substring' at column 5 line 54." App.
Br. 7. Appellant contends Fries does not teach the recited "longest common
substring" technique as described in Appellant's Specification. Id.
Further in this regard, Appellant contends the "language in Fries [col.
5, l. 54; col. 7, ll. 15–33] is not analogous to 'the matching component
executes instructions to extend a length of matches found by a longest
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common substring technique by allowing a controlled number of
mismatches,['] as recited in Appellant's independent claims 1 and 4." App.
Br. 8.
We turn to the Specification for context with respect to the recitation
"longest common substring," which describes: "[l]et us define a word w as a
longest common substring of x and y if w is a substring of x, a substring of y
and its length is maximal." Spec. ¶ 22.
We note, "[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel
meaning to a claim term, the words take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
In response to Appellants' arguments, the Examiner points out:
[T]the only limitation in the rejection which relies upon the
teaching of Fries is "found by a longest common substring
technique." Appellant does not appear to argue that Fries fails
to teach the longest common substring technique, but that Fries
fails to teach the limitation as a whole. Applicant has not
particularly explained why the cited portions of Fries fail to
teach a longest common substring technique.
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Ans. 10.
We see nothing in Appellant's Specification, or in their arguments,
cited above, that would preclude the Examiner's broad but reasonable
interpretation that Fries' substring matching module 84 and its associated
operation disclose the disputed limitation.3 We further find Appellant has
not rebutted the Examiner's findings by any evidence of record in this
regard, but instead merely asserts, "this language in Fries is not analogous"
to the disputed limitation of claims 1 and 4. App. Br. 8.
Appellant's assertions amount to unsupported attorney argument,
without analysis or evidence, and therefore we give them little weight. See
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang,
100 F.3d 135, 139–140 (Fed. Cir. 1996). Therefore, we do not find error in
the Examiner's reliance on the combined teachings and suggestions of
claims 1–7 of Motta with Fries to render claim 1 unpatentable under the
OTDP doctrine. We also note the Examiner's findings in the Answer with
respect to Rejection R1 remain unrebutted by Appellant in the Reply Brief.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of

3 Fries discloses, "substring matching module 84 . . . finds common
character substrings in the two program versions to identify the matching
sections in the two images . . . [and] identifies the common substrings
regardless of their respective locations within the program versions." Fries
col. 4, l. 65 – col. 5, l. 3. Fries further discloses, "the substring matching
module 84 finds, for any two strings, s1 and s2, and two offsets into the
strings, p1 and p2, the longest common substring starting at offset p1 in
string s1 and offset p2 in string s2. The substring matching module 84 runs a
process that works backwards in the two strings from their ends to their
beginnings, computing longest substrings in terms of earlier computed
longest substrings." Fries col. 5, ll. 52–63.
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the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's Rejection R1 of independent claim 1. As Appellant has not
provided separate arguments with respect to independent claim 4, or
dependent claims 2, 3, 5, and 6, rejected on the same basis as claim 1, we
similarly sustain the Examiner's rejection of these claims under the doctrine
of obviousness-type double patenting.
2. § 102 Rejection R2 of Claims R2
Issue 2
Appellant argues (App. Br. 8–11; Reply Br. 4–5) the Examiner's
rejection of claims 1–6 under 35 U.S.C. § 102(b) as being anticipated by
Fries is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a
matching component that "executes instructions to extend a length of
matches found by a longest common substring technique by allowing a
controlled number of mismatches," as recited in claim 1?
Analysis
Appellant contends, "Fries appears to teach a method which
incorporates a . . . matching module to identify and label through pointer
headers matching and nonmatching sections for separate uses . . . [but] does
not appear to teach extending a length of matches by allowing a controlled
number of mismatches." App. Br. 9 (citing Fries col. 5, l. 54; col. 7,
ll. 15–33). "As such, Appellant respectfully submits that the Fries reference
does not teach or suggest each and every element in Appellant's independent
claims 1 and 4." App. Br. 10.
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In response, the Examiner finds, the "strings [in Fries] do not entirely
match, [but] the progression from Fig. 5a–Fig. 5c shows that a length of
matches is extended by allowing for controlled mismatches as represented
by the numerical values in the depicted table . . . [which are] explained
further in Fries, col. 6, line 32–col. 7, line 6." Ans. 11. In addition, the
Examiner finds "Appellant has not particularly explained why the longest
common substring technique taught by Fries fails to teach the claimed
limitations." Id.
We find, similar to Appellant's response to Rejection R1, supra,
Appellant does not offer any analysis or evidence to rebut the Examiner's
findings, other than arguing, in pertinent part, "Appellant respectfully
submits that the teachings of Fries are not analogous to, 'the matching
component executes instructions to extend a length of matches found by
allowing a controlled number of mismatches', as recited in Appellant's
independent claims 1 and 4, as previously presented." Reply Br. 4–5.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1. As Appellant has
not provided separate arguments with respect to independent claim 4 or
dependent claims 2, 3, 5, and 6, rejected on the same basis as claim 1, we
similarly sustain the Examiner's rejection of these claims under 35 U.S.C.
§ 102(b).
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REPLY BRIEF
To the extent Appellant advances new arguments in the Reply Brief
(Reply Br. 4–5) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
CONCLUSIONS
(1) The Examiner did not err with respect to the Obviousness-Type
Double Patenting rejection of claims 1–6 over claims 1–7 of Motta in view
of Fries, and we sustain the rejection.
(2) The Examiner did not err with respect to the anticipation
rejection of claims 1–6 under 35 U.S.C. § 102(b) over Fries, and we sustain
the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1–6.
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) (2011).
AFFIRMED

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