Ex Parte Roth et al

Board of Patent Appeals and Interferences

Sep 8, 2010

10940204 (B.P.A.I. Sep. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN T. ROTH and ARUN GIRISH KRISHNA
____________________

Appeal 2009-006537
Application 10/940,2041
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed September 14, 2004. The real party in interest is
Hewlett-Packard Development Company.
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 2009-006537
Application 10/940,204

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 29 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejection.

Appellants’ invention relates to a method of validating a source code
submission (Spec. 1, ll. 31 to 32). In the words of Appellants:
[A] determination is made by the software
configuration management system as to whether or
not the submitter has ownership authorization for
each of the source files. In other words, a
determination is made as to whether the developer
is among the owners for each of the source files
submitted, or has been granted permission to
submit the file by one of the owners of it. If not,
then the submission is rejected due to lack of
ownership authority.
However, even if the submitter has
ownership authorization for each of the source
files, the submission is not yet authorized. . . .
[T]o become an authorized submission, a review
enforcement procedure is run and must be passed.
(Spec. 5, ll. 6 to 16).

The following claim is illustrative of the claims on
appeal:
Claim 1:
1. A method of validating a source code
submission, the method comprising:
2
Appeal 2009-006537
Application 10/940,204

receiving a source code submission
command, including at least one source code file
and a list of claimed reviewers, from a submitter,
wherein the claimed reviewers are persons whom
the submitter is claiming have reviewed the source
code submission;

checking that the submitter has ownership
authorization for each submitted source code file;
and

verifying that review requirements for a
valid submission are satisfied in reliance upon the
list of claimed reviewers for each submitted source
code file.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Law US 2004/0243260 A1 Dec. 02, 2004
(filed Sep. 19, 2003)

REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 29 stand rejected under 35 U.S.C. § 102(e) for being
anticipated over Law.

We have only considered those arguments that Appellants actually
raised in the Brief. Arguments that Appellants 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).

3
Appeal 2009-006537
Application 10/940,204

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(e). The issue specifically turns
on whether Law teaches Appellants’ claimed “source code submission
command” (claim 1) and the claim limitation “verifying that review
requirements for a valid submission are satisfied in reliance upon the list of
claimed reviewers for each submitted source code file” (claim 1).

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method and system of source code
submission that includes a verification process (Spec. 1, ll. 31 to 33).
Verification is performed so that review requirements for a valid submission
are satisfied for each submitted source code file (id. at 2, ll. 2 to 3).
Law
2. The Law reference teaches a source code submission procedure in a
process control system or safety system that includes a reviewing step. (See
¶¶ [0075], [0082], [0083].) Reviewers ensure that the software code file
submitted by a user (i.e., software developer) meets review requirements for
a valid submission (id.).
PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).
4
Appeal 2009-006537
Application 10/940,204

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 29
under 35 U.S.C. § 103(a)

The Examiner has rejected the noted claims for being anticipated by
Law, as expressed in the Answer, pages 3 to 14.
Appellants contend that Law’s approval routine 181 (see ¶ [0069]) is
not the same as the claimed “source code submission command” of claim 1
(Brief 10, middle).
In reviewing the record before us, we note that Appellants’ argued
approval routine 181 was not cited by the Examiner for this feature. (See
Ans. 3, middle and 15, top to middle). Instead, the Examiner relied upon
Law’s paragraph [0082], which teaches a user who submits modifications of
software that is controlling how a recipe is mixed in a process control system
(e.g., a cookie batter mixing operation). Recipe modifications (i.e., changes
to the proportion of ingredients, such as salt or sugar, included in the batter)
are controlled by Law’s software processes (id.). Law teaches that such
modifications occur via a software code review process. (See Fig. 15.) We
find that Appellants’ claimed “source code submission command” is
synonymous with Law’s teachings for a user submitting software updates in
a software coding review procedure.
We thus adopt and endorse the Examiner’s findings that Law’s cited
software modification process (see ¶ [0082]) teaches Appellants’ claimed
“source code submission command.”
Appellants also contend the claim limitation “verifying that review
requirements for a valid submission are satisfied in reliance upon the list of
claimed reviewers for each submitted source code file” (claim 1) is not
5
Appeal 2009-006537
Application 10/940,204

taught by the Law reference (Brief 11, top to middle). However, the
Examiner says Appellants’ claimed “verifying” step reads on Law’s block
406. Here, Law teaches soliciting approval of an update to software coding
from each person responsible for authorizing a change in the code used in a
process control or a safety system (¶ [0083]).
Accordingly, we adopt and endorse the Examiner’s findings that
Law’s block 406 (¶ [0083]) teaches Appellants’ “verifying” step (claim 1).
Next, Appellants argue that in the claimed invention, “It is possible
for the submitter to claim falsely that one of the central authorities has
reviewed a change.” (Brief 11, top; Spec. 7, ll. 2 to 4). Appellants argue
that “no such false claim of review would be possible under the technique of
Law because Law relies upon receiving approvals from all the reviewers.”
(Brief 11, top).
Although we read the claims in light of the Specification, we do not
import limitations from the Specification into the claims. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We find unpersuasive
Appellants’ above-stated argument since their contention is not
commensurate with the scope of claim 1. Claim 1 includes no such
recitation of a submitter falsely claiming that one of the central authorities
has reviewed a change. (See claim 1.)
For all of the above-stated reasons, we find that Appellants have
shown no error in the Examiner’s rejection.

6
Appeal 2009-006537
Application 10/940,204

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 1 to
29.

DECISION
We affirm the Examiner’s anticipation rejection of claims 1 to 29.

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

peb

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
7