Ex Parte Namjoshi

Board of Patent Appeals and Interferences

Mar 10, 2011

10614618 (B.P.A.I. Mar. 10, 2011)

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.
10/614,618 07/07/2003 Kedar Sharadchandra Namjoshi 7483
7590 03/10/2011
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06824
EXAMINER
VU, TUAN A
ART UNIT PAPER NUMBER
2193
MAIL DATE DELIVERY MODE
03/10/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEDAR SHARADCHANDRA NAMJOSHI
____________

Appeal 2009-005281
Application 10/614,6181
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed July 7, 2003. The real party in interest is Lucent
Technologies Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-005281
Application 10/614,618

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
October 31, 2007 non-final decision3 rejecting claims 1-26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention provides a method and apparatus for reducing a
program while preserving branching time properties. (Spec., 1, ll. 32-33.)
Claim 1 is illustrative:
1. A method for reducing a program, M, that preserves at
least one branching time property, f, comprising:
forming a product of said program, M[,] and said
branching time property, f, expressed as an automaton, A;
obtaining an abstract domain containing a set of abstract
values to generalized possible states of said program and
abstract relations that relate said program states to said abstract
domain; and
computing an abstract program with a reduced number of
states and an altered version of said branching time property, f,
using said product.

Appellant appeals the following rejections4:

3 We refer to the Non-final Office Action mailed Oct. 31, 2007 in which the
Examiner reopened prosecution in response to a Notice of Appeal received
on Aug 14, 2007, subsequent to the Final Office Action mailed May 14,
2007.
4 The Examiner withdrew the rejection of clams 1-26 under 35 U.S.C. § 112,
second paragraph. (Ans. 2). The Examiner’s Answer notes claims 8-11 and
21-24 as containing allowable subject matter. (Id.). Given that claims 12
and 13 are dependent upon allowed claim 8 and claims 25 and 26 are
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1. Claims 1-4, 12-17, 25, and 26 under 35 U.S.C. § 102(b) as anticipated
by Ben-Ari et al., The Temporal Logic of Branching Time, Acta Information
20, (1983), pg. 207-226 (hereafter Ben-Ari); and
2. Claims 5-7 and 18-20 under 35 U.S.C. § 103(a) as unpatentable over
Ben-Ari.

ANALYSIS
Appellant argues claims 1-26 as a group (App. Br. 6-7). We will,
therefore, treat all claims as standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

Issue: Did the Examiner err in finding that Ben-Ari discloses forming
a product, obtaining an abstract domain, and computing an abstract program,
as set forth in claim 1?

Appellant contends that “Ben[-]Ari does not address the issue of
reducing a program while preserving branching time properties. In
addition, Ben[-]Ari does not disclose or suggest, among other important
limitations, computing an abstract program with a reduced number of states
and an altered version of said branching time property, f, using said product,
as required by independent claims 1 and 14.” (App. Br. 7)
The Examiner found that “Appellant’s arguments fail to comply with
37 CFR 1.111(b) because they amount to a general allegation that the claims
define a patentable invention without specifically pointing out how the

dependent upon allowed claim 21, we shall regard claims 12, 13, 25, and 26
as not being before us on appeal. (Ans. 2.)
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language of the claims patently distinguishes them from the references.”
(Ans. 13.) The Examiner further found that “[a]ny feature provided in the
preamble of the claim . . . will bear its weight only to the extent at which
such feature has been elaborated in the body of the claim, or particularly
specified in the claim as a whole. The claimed steps recited as in (i)(ii)(iii)
does not make a remote linkage to how a ‘branch time property f’ is
preserved.” (Id.) We agree with the Examiner.

We start by noting that we refer to, rely on, and adopt the Examiner's
findings, extensive response to arguments, and conclusions set forth in the
Answer. Our discussions here will be limited to the following points of
emphasis.
While Appellant argues that Ben-Ari fails to disclose “reducing a
program while preserving branching time properties,” “forming a product,”
and “computing an abstract program,” as required by claims 1 and 14, (App.
Br. 6-7), Appellant’s arguments are void of any meaningful analysis to show
why the Examiner’s specific findings are erroneous. Appellant’s mechanical
regurgitation of claim language preceded by “Ben[-]Ari does not disclose”
does not demonstrate error in the rejection, given the Examiner’s findings
for each claim limitation. Here, Appellant’s arguments merely amount to
conclusory statements that the claimed features are not found in Ben-Ari.
However, mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); 37 C.F.R. § 1.111(b); and Ex parte
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Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
In this case, the Examiner extensively elaborated on Ben-Ari’s unified
model for a branching time, including the automaton aspects, UB model, and
cross-product aspects, inter alia, and how such constructs are related to the
claimed invention. (see Ans. 8-18.) In other words, the Examiner found that
Ben-Ari’s proposed unified system was adequate for proving properties of
nondeterministic programs. (Ans. 8-18; see also Ben-Ari, pages 207-209.)
The Examiner highlighted ample support within Ben-Ari to support the
Examiner’s stated position. Contrary to Appellant’s contention, the
Examiner did correlate the claimed limitations with the disclosure of Ben-
Ari. In response, Appellant’s Appeal Brief fails to target any specific
findings noted by the Examiner, but instead generally allege that Ben-Ari
does not disclose limitations in the claims without any specific explanation
as to why. For example, why is Ben-Ari’s finite model property expressed as
an automaton (proffered by the Examiner) distinguishable from the claimed
“forming a product . . .” limitation? “It is not the function of [the U.S. Court
of Appeals for the Federal Circuit] to examine the claims in greater detail
than argued by an Appellant, looking for nonobvious distinctions over the
prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).
Similarly, it is not the function of this Board to examine claims in greater
detail than argued by an Appellant, looking for distinctions over the prior
art.
Instead, we must look to Appellant’s Brief to show error in the
proffered prima facie case. Here, Appellant does not point to any specific
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proffered Examiner’s finding to distinguish the claimed invention from Ben-
Ari. Instead, mere conclusory statements are presented. Thus, arguments
which Appellant could have made but chose not to make in the Brief have
not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii).
We also make the observation that Appellant is offering, for the first
time, arguments in the Reply Brief regarding “satisfiability,” and “a paper
accepted at the 15th International Conference on Computer Aided
Verification,” (Reply Br. 3-5), inter alia. The Examiner’s statement of
rejection for the claims in the Answer appears to be substantially the same
as, if not identical to, the statement of the rejection in the Non-Final
Rejection dated October 31, 2007. Appellant thus could have presented the
new argument in support of the claims in the Appeal Brief, such that we
would have had benefit of the Examiner’s evaluation of the argument in the
responsive Answer. Appellant does not explain what good cause there
might be to consider the new argument. Appellant’s new argument is thus
untimely and has, accordingly, not been considered. See Ex parte Borden, 93
USPQ2d 1473 (BPAI 2010) (informative).
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Ben-Ari, the Examiner’s rejection of representative independent claim 1, as
well as claims 2-7, 12-20, 25, and 26 not separately argued by Appellant, is
sustained.

DECISION
We affirm the Examiner’s § 102 and § 103 rejections.
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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)(1)(iv) (2010).

AFFIRMED

ke

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