Ex Parte Scian et al

Patent Trial and Appeal Board

Oct 17, 2012

10869345 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANTHONY F. SCIAN and HARRY R. MAJOR
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Appeal 2010-006589
Application 10/869,345
Technology Center 2100
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Before BRUCE R. WINSOR, JEREMY J. CURCURI,
and DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from an August 3, 2009,
Final Rejection of claims 1, 2, 4-9, and 11-30, which constitute all the claims
pending in this application. Claims 3 and 10 are cancelled. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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STATEMENT OF THE CASE
Appellants’ invention relates to compressing software routines
predicted to be seldom used prior to loading the routines onto a mobile
device. See, e.g., Spec. 1. Claims 1 and 26, which are illustrative of the
invention, read as follows:
1. A system for reducing the size of a
device application to be loaded onto a mobile
device, comprising:
a processor;
a predictor module executable by the
processor to apply a predicate to the plurality of
software routines, the predicate being a function
operable to identify a pre-determined feature
within one or more of the software routines; and
a compression module executable by the
processor to compress the identified software
routine to generate a compressed software routine;
wherein the mobile device is to decompress
the compressed software routine when the
compressed software routine is to be accessed on
the mobile device;
wherein the pre-determined feature is a
reserved word;
wherein the pre-determined feature is
indicative of a software routine less likely to be
executed repeatedly on the mobile device.

26. A method for reducing the size of
software stored in a mobile device, comprising the
steps of:
selecting a predicate function that is
operable to identify a feature within a software
routine, wherein the feature is indicative of a
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software routine that is less likely to be executed
repeatedly on the mobile device;
applying the predicate function to a plurality
of software routines to be stored on the mobile
device to identify one or more of the software
routines that include the feature;
compressing the identified software routine;
and
loading the software routines, including the
compressed software routine, onto the mobile
device;
wherein the mobile device is to decompress
the compressed software routine when the
compressed software routine is to be accessed by
an execution thread on the mobile device.
Claims 1, 2, 4-5, 8-9, 13, 15-21, and 29-30 stand rejected under 35
U.S.C. § 103(a) as obvious1 over Debray (S. Debray et al., Profile-Guided
Code Compression, ACM 2002-PLDI’02, Berlin, Germany, 95-105) (Jun.
2002) and Venners (B. Venners, Objects and Java, Building Object-
Oriented, Multi-Threaded Applications with Java, Jan. 12, 2002, 1-23,
archived at:
http://web.archive.org/web/20020124044957/
http://www.artima.com/objectsandjava/webuscript/index.html).
See Final Rej. 4-10; see also Ans. 4-12.

1 Page 4 of the Final Rejection states that the rejection is under 35 U.S.C. §
102(b). However, page 5 states the Examiner’s view that the claims are
obvious. The Examiner’s Answer, at 2, also states the basis for the rejection
as 35 U.S.C. § 103(a). Appellants’ Brief, at 11, also acknowledges that the
rejections are under Section 103(a). Therefore, we interpret the rejection to
be under Section 103(a) and view the Examiner’s recitation of Section
102(b) in the Final Office Action as a harmless typographical error.
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Claims 6-7 stand rejected under 35 U.S.C. § 103(a) as obvious over
Debray, Venners, and Online C++ Tutorial (Online C++ Tutorial, Section
7.3: Constructors and Destructors, 1-2, archived at:
http://web.archive.org/web/20011207123904/www.intap.net/~d
rw/cpp/cpp07_03.htm).
See Final Rej. 10-11; see also Ans. 12-13.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Debray, Venners, and Horsley (US 5,260,693, Nov. 9, 1993, filed Oct. 11,
1991). See Final Rej. 11-12; see also Ans. 13-14.
Claims 11, 12, 22, 23, and 25-28 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Debray and Venners. See Final Rej. 12-14; see
also Ans. 10-12.

ISSUES
Appellants argue independent claims 1, 15, 26, 27, 29, and 30 together
as a group. See App. Br. 11. Although Appellants nominally argue
independent claims 15, 26, 27, 29, and 30 separately from claim 1, see App.
Br. 15-19, the arguments presented for claims 15, 26, 27, 29, and 30 are
substantially the same as those presented for claim 1. Appellants do not
separately argue the rejections of the dependent claims with particularity.
See generally App. Br. 11-19. Accordingly, we will discuss Appellants’
contentions by reference to claim 1.
Appellants contend that neither Debray nor Venners discloses:
1. a “predicate being a function operable to identify a pre-
determined feature within one or more software routines”;
2. “compress[ing] the identified software routine;” or
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3. “wherein the pre-determined feature is a reserved word,”
as recited in claim 1. See App. Br. 12 (emphasis and bracketed alterations
by Appellants).
Accordingly, the issues raised by Appellants’ contentions are as
follows: With regard to each of the above referenced claim limitations, did
the Examiner err in finding that the combination of Debray and Venners
teaches or suggests the limitation?
Rather than repeat the arguments here, we refer to the Briefs and the
Answer for the respective positions of Appellants and the Examiner. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ANALYSIS
Rejections of Claims 1, 2, 4-9, 11-25, and 27-30 under 35 U.S.C. § 103(a)
Appellants contend that neither Debray nor Venners discloses a
“predicate being a function operable to identify a pre-determined feature
within one or more of the software routines.” According to Appellants’
Specification, at 3, “[a] predicate 18 is a function that is applied by the
predictor module 12 in order to identify a particular feature (or features)
within one or more of the software routines 16 that is indicative of a routine
that is less likely to be executed by the mobile device 22.” The Specification
further explains that “software routines . . . may be segments or portions of
one or more software applications or other contiguous program files . . . .”
Id.
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The Examiner found that Debray discloses this limitation in Figure 1,
at page 96 and in Section 5, starting at page 101. According to the
Examiner, Debray “discloses the detailed implementation of identifying
infrequently executed portion of program (cold code) by
searching/identifying each of [the] instructions executed at runtime and
comparing with the total number of instructions executed by the program at
runtime to determine the execution frequency.” Ans. 4, 15 (emphasis by
Appellants); see also Final Rej. 3.
We agree with the Examiner’s finding. Debray’s technique identifies
a portion of software code to compress and compresses that portion prior to
runtime. See Debray 96 and Figure 1 (showing the organization of Debray’s
code before and after compression). Debray identifies a candidate for
compression by identifying pre-existing features of a block, namely the
number of instructions in the block and the execution frequency of those
instructions, “i.e., the block’s contribution to the total number of instructions
executed at runtime.” Debray 101. If the block’s contribution is below a
chosen threshold, it is “considered to be cold,” id., a term Debray uses to
describe code that is “infrequently executed,” Debray 95.
Appellants also contend that neither Debray nor Venners discloses
“compress[ing] the identified software routine.” The Examiner found that
Debray discloses “a compression module executable by the processor to
compress the identified software routine to generate a compressed software
routine” in Section 4, “Compressible Regions,” starting at page 99.
We agree with the Examiner’s finding. Debray’s technique “create[s]
‘functions’ from arbitrary code regions and allow[s] these regions to be
compressed and decompressed.” Debray 99. After blocks of code are
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identified as “cold,” Debray’s technique groups “cold” blocks from a single
function together into a “tree” or “set” and determines whether it is
“profitable” to compress those blocks. Debray 100. If the performance
benefit of compressing the set of blocks outweighs the cost, “we make this
tree a compressible region.” Id. Thus, Debray discloses compressing the
identified software routine.
Appellants argue that in their invention, “[a]ll software routines so
identified are compressed.” App. Br. 11 (emphasis by Appellants). This
argument is not commensurate in scope with the claim language. Instead,
claim 1, for example, simply requires the identification of a pre-determined
feature within “one or more of the software routines” and the subsequent
compression of that identified software routine. It suffices that a pre-
determined feature of at least one of Debray’s software routines is identified
and that software routine is compressed.
Appellants also contend that neither Debray nor Venners discloses
“wherein the pre-determined feature is a reserved word.” The Examiner
concedes that Debray “does not explicitly disclose wherein the pre-
determined feature is a reserved word . . . .” Ans. 5. However, the
Examiner found that Venners disclosed using a reserved word, specifically
“” as an identifier for a class and that Venners describes this class as
only invoked once during execution. See Id. The tag “” is the same
“reserved word” described as an example in Appellants’ Specification (e.g.,
Spec. 4). The Examiner further found that Venners and Debray were in
analogous arts, and that it would have been obvious to use the reserved word
described in Venners to identify cold code for compression in Debray:
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Therefore, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to directly use
the reserved word in the function to identify the cold code
during the examining procedure. Because the special reserved
word “” is easy to identif[y] and indicative of [code]
less likely to be executed repeatedly (invoke[d] once). One
would have been motivated to do so to identify/compress the
cold code in order to reduce code size as suggested by Debray
(see for example, p.95, section 1, Introduction, first paragraph,
“This makes it desirable to reduce the application’s runtime
memory requirements for both instructions and data”).
Ans. 5.
Appellants dispute this finding. Appellants characterize Debray as
disclosing a “processor-intensive task of comparing all of the instructions
executing at runtime to determine the execution frequency of each
instruction,” an approach that “entails complex algorithms and extensive
processing resources.” Reply Br. 2. In contrast, “the claimed compression
technique requires only the identification of a pre-determined reserved
word.” Id.; see also App. Br. 13 (“software routines are selected for
compression based simply on the identification of a reserved word in the
code.”). According to Appellants, to modify Debray to search for reserved
words would be to disregard Debray’s teaching. See Reply Br. 3.
We agree with Appellants that modifying Debray as suggested by the
Examiner would be contrary to the teachings of Debray. Debray recognized
that:
The “functions” that we use as a unit of compression and
decompression may not agree with the functions specified by
the program. It is often the case that a program-specified
function will contain some frequently-executed code that
should not be compressed, and some infrequently-executed
(cold) code that should be compressed.
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Debray 99. “To address this issue, [Debray] create[s] ‘functions’ from
arbitrary code regions and allow[s] these regions to be compressed and
decompressed.” Id. The size of the blocks are, in turn, chosen by balancing
the size of the runtime buffer that would be necessary to accommodate the
blocks against the number of times control would transfer between
compressed and uncompressed code. See id. Debray also provides for
flexibility in setting thresholds between code that is frequently used and
code that is “cold” so that a user can choose the approximate percentage of
the total number of instructions to compress. See Debray 101. Moreover,
even if blocks of code are compressible, Debray’s approach still evaluates
whether it is “profitable” to do so. See Debray 100.
The Examiner reasons that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to directly use the
reserved word in the function to identify the cold code during the examining
procedure.” Ans. 5. According to the Examiner, Debray could be modified
to “only search[] for user specified (pre-determined) reserved word and
compressing such identified user specified (predetermined) software routines
for the purpose of reducing the program code size as indicated by Debray . .
. .” Ans. 16. This would be done to “efficiently identify the cold code.” Id.
We are not persuaded by the Examiner’s reasoning. The stated goals
of Debray include “the design of an effective compression/decompression
scheme so that the decompressor code is small and quick . . .; identification
of appropriate units for compression and decompression . . .; as well as
optimizations that improve the overall performance of the system . . . .”
Debray 95. While it may be more efficient to simply search for reserved
words to identify cold code, it would be at the expense of the flexibility and
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accuracy detailed in Debray. “Trade-offs often concern what is feasible, not
what is, on balance, desirable. Motivation to combine requires the latter.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000),
see also id. at 1349 n.8 (“The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). The Examiner does not persuasively explain why a person of
ordinary skill in the art would seek to sacrifice the stated objectives of
Debray in order to achieve more efficiency in identifying cold code.
Therefore, we conclude that the Examiner has not articulated a reasoning
with rational underpinnings that a person of ordinary skill in the art would
have modified Debray to search for reserved words, such as the
reserved word discussed in Venners. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
Accordingly, we do not sustain the rejection of (1) claim 1; (2) claims
15, 27, 29, and 30, which include recitations substantially the same as those
we find to not be taught or suggested by the cited prior art; (3) claims 2, 4-9,
and 11-14, which depend from claim 1; (4) claims 16-25, which depend
from claim 15; and (5) claim 28, which depends from claim 27.
Rejection of Claim 26 under 35 U.S.C. § 103(a)
Appellants also argue claim 26 in conjunction with claim 1 and only
nominally argue it separately. See App. Br. 11, 16. Although Appellants
argue in their Brief, at 11, and Reply, at 2, that the claimed pre-determined
feature of claim 26 is a reserved word, this is not recited in claim 26.
Otherwise, claim 26 is substantially the same as claim 1. For the reasons
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detailed above for representative claim 1, we agree with the Examiner’s
findings that Debray discloses “applying the predicate function to a plurality
of software routines . . . to identify one or more of the software routines that
include the feature” and “compressing the identified software routine” and
are unpersuaded by Appellants’ arguments to the contrary.
The Examiner’s rejection of claim 26 was under 35 U.S.C. § 103(a).
See Ans. 2. We note, however, that the Examiner found each of the
limitations of claim 26 in Debray, see Ans. 4-5, 12, a finding we agree with.
Thus, the Examiner properly could have rejected claim 26 under 35 U.S.C.
§ 102(b). Furthermore, the Board may rely on less than all of the
references applied by the Examiner in an obviousness rationale without
designating it as a new ground of rejection. See In re Bush, 296 F.2d 491,
496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966).
In any case, “[i]t is well settled that anticipation is the epitome of
obviousness.” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002)
(internal quotation marks omitted). The Examiner’s rejection of claim 26 as
obvious is sustainable. See In re Pearson, 494 F.2d 1399, 1402 (C.C.P.A.
1974) (“[T]his court has sanctioned the practice of nominally basing
rejections on § 103 when, in fact, the actual ground of rejection is that the
claims are anticipated by the prior art.”). Accordingly, we sustain the
rejection of claim 26.

ORDER
The decision of the Examiner to reject claims 1, 2, 4-9, 11-25, and 27-
30 is reversed.
The decision of the Examiner to reject claim 26 is affirmed.
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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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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