Ex Parte Peckham

Patent Trial and Appeal Board

Nov 30, 2017

14040825 (P.T.A.B. Nov. 30, 2017)

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.
14/040,825 09/30/2013 Stephen B. Peckham AUS920130051US2 1086
48916 7590
Greg Goshorn, P.C.
9600 Escarpment Blvd.
Suite 745-9
AUSTIN, TX 78749
EXAMINER
BODDEN, EVRAL E
ART UNIT PAPER NUMBER
2197
MAIL DATE DELIVERY MODE
11/30/2017 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 2017-007086
Application 14/040,8251
Technology Center 2100
Before LARRY J. HUME, NORMAN H. BEAMER, 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 1—7. 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 2017-007086
Application 14/040,825
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. 12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A method, comprising:
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 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
Oct. 11, 2016); Reply Brief ("Reply Br.," filed April 5, 2017); Examiner's
Answer ("Ans.," mailed Feb. 6, 2017); Final Office Action ("Final Act.,"
mailed April 6, 2016); and the original Specification ("Spec.," filed
Sept. 30, 2013).
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Application 14/040,825
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Davidson et al. ("Davidson")
Johnson
US 5,559,884 Sept. 24, 1996
US 6,718,546 B1 Apr. 6, 2004
US 2004/0107416 Al June 3, 2004
US 7,386,846 B2 June 10, 2008
US 2014/0229921 Al Aug. 14, 2014
US 2015/0113650 Al April 23, 2015
Buban et al. ("Buban")
Rajaram
Arora et al. ("Arora")
Sallam
Rejections on Appeal
R1. Claims 1—7 stand rejected under nonstatutory obviousness-type
double patenting (OTDP) as obvious over claims 7—12 and 19 of copending
US 13/844,345. Final Act. 3.
R2. Claims 1 and 5—7 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Buban, Davidson, Johnson, and Sallam.
Final Act. 6.
R3. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Buban, Davidson, Johnson, Sallam, and Arora.
Final Act. 16.
R4. Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Buban, Davidson, Johnson, Sallam, and Rajaram.
Final Act. 19.
R5. Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Buban, Davidson, Johnson, Sallam, Arora, and
Rajaram. Final Act. 21.
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Appeal 2017-007086
Application 14/040,825
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 7—11), we decide the
appeal of Rejection R2 of claims 1, 5, and 6 on the basis of claim 1. We
address rejection R2 of separately argued claim 7, infra.
We address remaining claims 2, 3, and 4 in rejections R3, R4, and R5,
separately, infra?
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 claims 1
and 7, and we incorporate 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 incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments for emphasis as
follows.
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 Appellant does 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).
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Appeal 2017-007086
Application 14/040,825
1. OTDP Rejection R1 of Claims 1—7
The Examiner rejected claims 1—7 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 7—12
and 19 of copending application no. 13/844,345. Final Act. 3.
Appellant does not contest or otherwise address the OTDP rejection.
Therefore, we summarily affirm this rejection. See Manual of Patent
Examining Procedure § 1205.02 ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it.").
2. Obviousness Rejection R2 of Claims E 5, and 6
Issue
Appellant argues (App. Br. 7—8; Reply Br. 2—3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Buban, Davidson, 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 a method that includes, inter alia, the step of "searching a
volatile memory to identity a copy of the shared library stored in the volatile
memory," as recited in claim 1?
Analysis
Appellant contends the disputed limitation is not taught by Sallam
because "Sallam does not employ signatures to identity shared libraries."
App. Br. 7.
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Application 14/040,825
We are not persuaded by Appellant's argument because Appellant is
arguing the references separately. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The Examiner cites Davidson for teaching or
suggesting the limitation "generating a signature that identifies the shared
library." Final Act. 8.
Appellant further argues Sallam's "scanning of a list of shared
libraries does not suggest the scanning of a memory." App. Br. 8.
The Examiner finds Buban's checksum validation of the binary
checksum matching the target teaches or at least suggests "searching a
volatile memory to identify a copy of the shared library," as recited in
claim 1. Ans. 2—3. The Examiner further finds Sallam's monitor 110 scans
memory, page by page, to identify any mapping of any process to a shared
library, teaches or at least suggests the disputed limitation. Ans. 3, citing
Sallam 128. The Examiner also finds Sallam's shared libraries, identified by
digital signatures, teaches the disputed limitation. Ans. 4.
We further note Appellant is arguing limitations not recited in the
claim. Claim 1 recites "searching a volatile memory," and not scanning of a
memory as argued by Appellant. We agree with the Examiner's finding that
both Buban's checksum matching and Sallam's page-by-page scanning teach
or at least suggest the disputed limitation "searching a volatile memory," as
recited in claim 1, because both Buban's checksum matching and Sallam's
scanning teach or at least suggest "searching a volatile memory."
Ans. 2-4.
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Application 14/040,825
Appellant further argues combining Sallam's technology, which is
directed at preventing loading libraries, with prior art designed to facilitate
the loading and sharing of libraries, is not reasonable because the references
are directed to different purposes.
However, our reviewing court guides: 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 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 reLinter, 458 F.2d 1013 (CCPA 1972); In re
Dillon, 919 F.2d 688, (Fed. Cir. 1990), cert, denied, 500 U.S. 904 (1991).
We agree with the Examiner's finding that both Sallam and Buban are
analogous art, both identify shared libraries, and that it would not be beyond
the skill of one of ordinary skill in the art to enhance Buban with the features
of Sallam. Ans. 6.
Accordingly, on this record, 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 of independent
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claim 1 and claims 5 and 6, which fall therewith. See Claim Grouping,
supra.
2. Obviousness Rejection R2 of Claim 7
Issue 2
Appellant argues (App. Br. 9) the Examiner's rejection of dependent
claim 7 under 35 U.S.C. § 103(a) as being obvious over the combination of
Buban, Davidson, 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 the limitation of "wherein the identifying a copy of the shared
library stored in the memory is based upon the signature," as recited in
claim 7?
Analysis
Appellant contends that Davidson doesn't teach claim 7's limitation
because each of Davidson's executable modules is based upon a different
signature. App. Br. 9.
We agree with the Examiner's finding that Davidson's signatures teach
or at least suggest the "signature" used to identify the shared library as
recited in claim 7's disputed limitation. Ans. 7. We also agree with the
Examiner's further finding that Sahara's identifying shared libraries by a
digital signature teaches the disputed limitation as recited in claim 7. Id.
We agree with the Examiner's finding because both Davidson and Sallam
use a signature to identify a shared library, and because claim 7 does not
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recite further limitations on the claim term "signature" that would preclude
the Examiner's broad but reasonable claim interpretation.
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 of dependent claim 7.
2. Obviousness Rejections R3—R5 of Claims 2, 3, and 4
As Appellant has not provided separate, substantive arguments with
respect to dependent claims 2, 3, and 4, we sustain the Examiner's rejections
R3—R5 of these claims under 35 U.S.C. § 103(a), as they fall with
independent claim 1. Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2—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, which Appellant has
not shown. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
(1) The Examiner did not err with respect to nonstatutory
obviousness-type double patenting Rejection R1 of claims 1—7, and we
summarily sustain the rejection.
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(2) The Examiner did not err with respect to obviousness
Rejections R2—R5 of claims 1—7 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 1—7.
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
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