Ex Parte PeckhamDownload PDFPatent Trial and Appeal BoardSep 28, 201713844345 (P.T.A.B. Sep. 28, 2017) Copy Citation 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. 13/844,345 03/15/2013 Stephen B. Peckham AUS920130051US1 7432 48916 7590 Greg Goshorn, P.C. 9600 Escarpment Blvd. Suite 745-9 AUSTIN, TX 78749 09/29/2017 EXAMINER BODDEN, EVRAL E ART UNIT PAPER NUMBER 2197 MAIL DATE DELIVERY MODE 09/29/2017 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 PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN B. PECKHAM Appeal 2017-006375 Application 13/844,3451 Technology Center 2100 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, 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 7—20. Appellant has previously canceled 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 International Business Machines Corp. App Br. 3. Appeal 2017-006375 Application 13/844,345 STATEMENT OF THE CASE2 The Invention Appellant's claimed invention relates to techniques for the modification of shared libraries without shutting down associated programs Spec. 11. Exemplary Claim Claim 7, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 7. An apparatus, comprising: a processor, a non-transitive computer-readable storage medium (CRSM); and logic, stored on the CRSM and executed on the processor, for: generating a patch corresponding to a shared library; determining that the patch fits within the shared library; generating a signature that identifies the shared library and an offset corresponding to a location of the patch in the shared library; searching a volatile memory to identify, based upon the signature, a copy of the shared library stored in the volatile memory, and overlying the patch in the copy at a position corresponding to the offset. 2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Sept. 23, 2016); Reply Brief ("Reply Br.," filed Mar. 10, 2017); Examiner's Answer ("Ans.," mailed Jan. 11, 2017); Final Office Action ("Final Act.," mailed Mar. 25, 2016); and the original Specification ("Spec.," filed Mar. 15,2013). 2 Appeal 2017-006375 Application 13/844,345 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Johnson Buban et al. ("Buban") Rajaram Barbulescu et al. ("Barbulescu") Arora et al. ("Arora") Sallam US 6,718,546 B1 US 2004/0107416 Al US 7,386,846 B2 US 2011/0107070 Al US 2014/0229921 Al US 2015/0113650 Al Apr. 6, 2004 June 3, 2004 June 10, 2008 May 5, 2011 Aug. 14, 2014 Apr. 23, 2015 Rejections on Appeal R1. Claims 7, 11—13 and 17—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buban, Barbulesch, Johnson, and Sallam. Final Act. 3. R2. Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buban, Barbulesch, Johnson, Sallam and Arora. Final Act. 24. R3. Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buban, Barbulesch, Johnson, Sallam, and Rajaram. Final Act. 30. R4. Claims 10 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buban, Barbulesch, Johnson, Sallam, Arora and Rajaram. Final Act. 33. CFAIM GROUPING Based on Appellant's arguments (App. Br. 7—9), we decide the appeal of obviousness rejection R1 of claims 7, 11—13, and 17—20 on the basis of 3 Appeal 2017-006375 Application 13/844,345 representative claim 7. Remaining claims 8—10 and 14—16 in Rejections R2 through R4, not argued separately or with specificity, stand or fall with the respective independent claim from which they depend.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. We do not consider arguments which Appellant could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellant's arguments with respect to claim 7 and, unless otherwise noted, we incorporate by reference herein and 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 in the Examiner's Answer in response to Appellant's arguments. We highlight and address specific findings and arguments regarding claim 7 for emphasis as follows. 1. $ 103(a) Rejection R1 of Claims 7, 11—13 and 17—20 Issue 1 Appellant argues (App. Br. 7—9; Reply Br. 2) the Examiner's rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious over the combination 3 "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." 37 C.F.R. § 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 4 Appeal 2017-006375 Application 13/844,345 of Buban, Barbulesch, Johnson, and Sallam is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests an apparatus that includes a processor and a non-transitive computer-readable storage medium (CRSM) with logic stored thereon and executed by the processor, for carrying out the functions of, inter alia, "searching a volatile memory to identify, based upon the signature, a copy of the shared library stored in the volatile memory," as recited in claim 7? Analysis Appellant contends "[a]lthough | [0029] states that a shared library may be 'identified by a digital signature,' the digital signature is only used to identify a shared library on a pre-compiled list rather than one in a memory. Appellants] submit that the scanning of a list of shared libraries does not suggest the scanning of a memory." App. Br. 8. We agree with the Examiner's finding that Sahara's scanning a memory page-by-page to identify any mapping of any process to a shared library teaches or at least suggests the disputed limitation, "searching a volatile memory to identify ... a copy of the shared library," as recited in claim 7. Final Act. 8, citing Sallam 128. We further agree with the Examiner's finding that Sahara's shared libraries, being identified by a digital signature, teaches or at least suggests the disputed limitation "searching . . . based upon the signature." Final Act. 8, citing Sallam, 129. We agree with the Examiner because Sallam's scanning of memory for a shared library, where the shared library is identified by a unique signature, teaches or at least suggests the disputed limitation. Sallam, || 28, 29. 5 Appeal 2017-006375 Application 13/844,345 Appellant further argues: [T]he purpose of Sallam's technology is to detection of suspicious shared libraries so that the loading can be either prevented or corrected. Appellants] submit that it is not reasonable to combine art directed at the prevention of loading particular libraries with art that is specifically designed to facilitate the loading and updating of shared libraries. App. Br. 8. We are not persuaded by Appellant's arguments. It is not clear which "art" Appellant is referencing specifically in combination with Sallam; it seems Appellant is comparing the present application with Sallam. We are not persuaded the Examiner erred because our reviewing court further guides it is irrelevant that the prior art and the claimed invention may have different purposes. See Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were designed to resolve different problems ... is insufficient to demonstrate that one invention teaches away from another."). It is sufficient that references suggest doing what Appellant did, although Appellant's particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 539 (CCPA 1967)). For a prima facie case of obviousness to be established, the reference need not recognize the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Appellant. See, e.g., In 6 Appeal 2017-006375 Application 13/844,345 re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013 (CCPA 1972); In re Dillon, 919 F.2d 688, (Fed. Cir. 1990), cert, denied, 500 U.S. 904 (1991). Thus, Appellant has not persuaded us that the Examiner erred. As explained in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007), it is error to assume that a person of ordinary skill attempting to solve a problem will be led only to those elements of the prior art designed to solve the same problem. Rather, [cjommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, an in many case a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. ... A person of ordinary skill is also a person of ordinary creativity, not an automaton. Id. at 420-421. Furthermore, Appellant argues Barbulescu with respect to the claim term "signature," and argues the claimed invention's advantages over Barbulesch. App. Br. 8. We are not persuaded by Appellant's arguments because Appellant is arguing the references separately. The Examiner cites Sallam's signatures to teach the claimed "signature" in the contested limitation. Final Act. 8. We also are unpersuaded by Appellant's arguments because, in arguing the invention's certain unclaimed advantages (App. 7 Appeal 2017-006375 Application 13/844,345 Br. 8), Appellant is arguing limitations not in the claim. We find this argument is not responsive to the rejection articulated by the Examiner. 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 obviousness rejection R1 of representative independent claim 7. Grouped claims 11—13 and 17—20 fall therewith. See Claim Grouping, supra. §103 Rejections R2—R4 of Claims 8—10 and 14—16 In view of the lack of any substantive or separate arguments directed to the obviousness rejections R2 through R4 of claims 8—10 and 14—16 under § 103 (see App. Br. 10-11), we sustain the Examiner's rejections of these claims, as they fall with their respective independent claims. Arguments not made are waived. REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 1—3) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellant has not shown. 8 Appeal 2017-006375 Application 13/844,345 CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 through R4 of claims 7—20 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 7—20 under pre- AIA 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 41.50(f). AFFIRMED 9 Copy with citationCopy as parenthetical citation