Ex Parte Smaltz

Patent Trial and Appeal Board

Aug 28, 2018

13590231 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/590,231
7590
David Gene Smaltz
10 Birchwood Ave.
Peaboy, MA 01960
FILING DATE FIRST NAMED INVENTOR
08/21/2012 David Gene Smaltz
08/28/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
103408-500 3941
EXAMINER
DUONG, HIEN LUONGV AN
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
08/28/2018 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 DAVID GENE SMAL TZ 1
Appeal 2018-005018
Application 13/590,231
Technology Center 2100
Before ERIC S. FRAHM, JOHN A. EV ANS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 24-53, which are the only claims pending in the
application. Claims 1-23 were canceled. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is David Gene Smaltz.
App. Br. 2.
Appeal 2018-005018
Application 13/590,231
STATEMENT OF THE CASE
Introduction
Appellant's application relates to the efficient and secure delivery of
not compiled code instructions over a network to previously downloaded
and running compiled code in the operating system, application, or browser
plugin on a device to change appearance, functionality and behavior, with
application to animation, video and 3D players. Abstract. Claim 24
illustrates the appealed subject matter and reads as follows:
24. A device including a processor, said device comprising:
a network interface for communicating with a network;
an operating system;
a memory storage;
a platform supporting compiled applications executing
within a sandbox on said device;
a compiled application with access to said platform that is
not a browser and that is executable on the platform by said
operating system for receiving first instructions and second
instructions from said network interface that are not comprised
of compiled code and that are usable by compiled applications
executing within said sandbox on platforms of a type different
than said platform;
compiled executable binary code comprising a plurality of
behaviors in portions of code for instantiation into objects, said
compiled executable binary code being associated on the
platform with said compiled application and stored in said
memory storage;
the first instructions upon receipt by said compiled
application triggering a first instantiation of at least one of said
portions of code into said objects to be executed by said compiled
application; and
the second instructions upon receipt by said compiled
application triggering a second instantiation of at least one of said
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Application 13/590,231
portions of code into said objects to be executed by said compiled
application, at least one of the second said objects comprising at
least one different said portions of code from the first said
objects.
The Examiner's Rejections
Claims 24-33, 40, 42-45, and 49-51 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Macaluso (US 2005/0215238 Al; Sept. 29,
2005), Papineau et al. (US 7,437,149 Bl; Oct. 14, 2008), and Neil (US
2007/0288424 Al; Dec. 13, 2007). Final Act. 3-10.
Claims 34-39, 41, 46-48, 52, and 53 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Macaluso, Papineau, Neil, and Landsman
et al. (US 6,314,451 Bl; Nov. 6, 2001). Final Act. 10-19.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. We disagree with Appellant's
contentions. Except as noted below, we 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 set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Claims 24, 42, and 49
Appellant argues the Examiner erred in rejecting claim 24 as
unpatentable over Macaluso, Papineau, and Neil. App. Br. 9-17; Reply Br.
2-21. In particular, Appellant argues Neil and Macaluso would not function
in the "secure sandbox" or "sandbox" taught by Papineau. App. Br. 10.
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According to Appellant, Macaluso teaches function calls to advertising
applications from other applications running on the device, which is not
allowed while running in a sandbox. Id. (citing Macaluso ,r 44, Figs. 8A,
8B). Appellant asserts Neil teaches using the operating system to download
separate instructions for each device and present screens to the user, which is
prohibited by the sandbox. Id. ( citing Neil ,r,r 33, 72, and 89). Appellant
argues Papineau teaches a secure sandbox that, if modified as proposed by
the Examiner, would no longer be a "sandbox," defeating its intended
purpose. Id. at 12 (citing Papineau 3:9-13, 22-26, 12:13-45).
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Papineau teaches a java virtual machine operating as a
"sandbox," which is "'an area in which such applets are confined' to prevent
'downloaded applets from carrying potentially dangerous or malicious
operations on the device."' Ans. 4 (citing Papineau 1:67-2:15). The
Examiner further finds, and we agree, Macaluso teaches applications on a
mobile phone may be executed in a Java virtual machine. Id. (citing
Macaluso ,r 26). The Examiner finds Neil teaches virtual machine software
and applications written in languages such as Java. Id. ( citing Neil ,r,r 30,
44). Accordingly, each of the references contemplates applications
executing in virtual machines, and Papineau specifies that its virtual machine
operates as a sandbox. We agree with the Examiner that an ordinarily
skilled artisan would have understood that the combination of Macaluso,
Papineau, and Neil teaches or suggests applications running in sandboxes,
such as a Java virtual machine.
Appellant's argument that Macaluso and Neil teach applications that
would not function in a "secure sandbox" is unpersuasive because it is
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inconsistent with the teachings of the references and not commensurate with
the scope of the claims. Moreover, Appellant's argument presumes that an
ordinarily skilled artisan would merely bodily incorporate the teachings of
Neil and Macaluso into the sandbox of Papineau. However, this is not the
test for obviousness. See In re Keller, 642 F.2d 413,425 (CCPA 1981). In
re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted) ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art."); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures.").
Further, Appellant has not asserted that the proposed modification
would have been beyond the capabilities of a person of ordinary skill in the
art. Absent such an assertion, we "take account of the inferences and
creative steps that a person of ordinary skill in the art would employ," and
find a person of ordinary skill in the art would overcome those difficulties
within their level of skill. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007); see also id. at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton."). Nor has Appellant asserted that the
Examiner's combination would have been "uniquely challenging or difficult
for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Appellant further argues a device configured with Papineau's sandbox
would prohibit function calls from other compiled applications to an
advertising application. App. Br. 14-15. According to Appellant, the
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Application 13/590,231
calling application and the combined Neil and Macaluso application could
not run at the same time, as taught by Macaluso. Id. (citing Macaluso ,r 30-
31 ). Appellant contends the advertising application would have to exit
before returning to the calling application, which "is not as Macaluso
intended." App. Br. 15. Appellant asserts an ordinarily skilled artisan
would, therefore, not combine the references as proposed, because it would
render the references unsuitable for their intended purposes and change their
principle of operation. Id.
Appellant has not persuaded us of Examiner error. Similar to the
"sandbox" argument above, Appellant's argument presumes a bodily
incorporation of the teachings of Macaluso, Neil, and Papineau, instead of
considering the combined teachings from the perspective an ordinarily
skilled artisan. Thus, we are not persuaded of Examiner error because
Appellant has not persuaded us that an ordinarily skilled artisan, employing
ordinary creativity and inferences, would have been unable to overcome
these difficulties. See KSR Int 'l Co., 550 at 418.
Appellant further provides argument in the Reply Brief regarding
different versions of the Java Specifications, arguing the current claimed
invention works within the Original Java sandbox and the Java 2 sandbox,
while the cited references would each function in only one or neither of the
sandboxes without modification. See Reply Br. 2-21. Appellant's
arguments have not persuaded us of Examiner error for the same reasons set
forth above.
We, therefore, sustain the rejection of claim 24 as unpatentable over
Macaluso, Papineau, and Neil. We also sustain the rejection of independent
claims 42 and 49, for which Appellant offers the same arguments. See App.
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Br. 9. We also sustain the rejection of dependent claims 25--41, 43--48, 50,
51, and 53, for which Appellant offers no separate arguments. See App. Br.
9-19.
Claim 52
Claim 52 is an independent device claim that recites, in relevant part,
"a background process with access to said platform that is not a browser and
that is executable on the platform by said operating system for receiving first
instructions and second instructions from said network interface." Appellant
argues the Examiner erred in rejecting claim 52 as unpatentable over
Macaluso, Papineau, Neil, and Landsman. App. Br. 18-19. In particular,
Appellant argues the Examiner erred because Landsman's background
process is a browser, contrary to the recited limitation. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Landsman teaches a background process that
downloads, from a server to a local computer, files for a web advertisement
during intervals when bandwidth utilization is below a particular threshold.
Final Act. 17 (citing Landsman 5:9-11). As argued by Appellant, the cited
background process is a browser. Landsman 5:9-11. However, the
Examiner further finds Macaluso teaches an application that is not a browser
that is executable on a platform "for receiving first instructions and second
instructions from said network interface." Final Act. 16 (citing Macaluso
,r,r 22-23)( emphasis omitted). The Examiner finds an ordinarily skilled
artisan would have combined Macaluso' s application that is not a browser
with Landsman's background process to arrive at the claimed invention
using known methods to achieve expected results. Final Act. 17; Ans. 13.
Appellant's argument is unpersuasive because it focuses on the individual
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teachings of Landsman without considering the combined teachings of
Macaluso and Landsman. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
see also In re Keller, 642 F.2d 413,425 (CCPA 1981). Accordingly, we are
not persuaded of Examiner error.
We, therefore, sustain the rejection of claim 52 as unpatentable over
Macaluso, Papineau, Neil, and Landsman.
DECISION
We affirm the decision of the Examiner rejecting claims 24-53.
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(±).
AFFIRMED
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