Ex Parte Sverdlov et al

Patent Trial and Appeal Board

Sep 7, 2016

12495183 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/495, 183 0613012009
106095 7590 09/09/2016
Baker Botts LLP
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Y akov I. Sverdlov
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.
063170.9321 2364
EXAMINER
MILLER, VIV AL
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
09/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AKOV I. SVERDLOV, MILAN SHAH,
RAMESHNATARAJAN, FRANKLIN J. RUSSELL JR.,
HERBERT P. MEHLHORN, TIMOTHY G. BROWN,
GREGORY M. GOTTA, J. MATTHEW GARDINER,
and JEFFREY C. BROBERG
Appeal2015-004896
Application 12/495, 183
Technology Center 2100
Before JOHNNY A. KUMAR, JOHN A. EV ANS, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-004896
Application 12/495, 183
STATEMENT OF CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-19. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
Claim 1 is representative of the invention and reproduced below:
1. A binary code modification system comprising:
a code modifier comprising instructions stored in a
memory and executable on a computer, the code modifier
operable to:
access a binary software code comprising one or more
code segments; and
generate a modified software code by inserting one or
more executable instructions into the binary software code, the
one or more executable instructions operable to generate at least
a portion of the binary software code as a web service interface.
REJECTIONS AT ISSUE 1
Claims 1, 3-10, and 12-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Oost (Niek Oost, Binary Code Analysis for
Application Integration (Sept. 2008), http://www.cs.rug.nl/ds/uploads
/completed/oost.pdt) in view of Berry (US 6,662,359 Bl, Dec. 9, 2003).
Final Act. 6-12.
1 Throughout this opinion we refer to the Final Office Action ("Final Act.")
mailed on February 13, 2014, and the Examiner's Answer ("Ans.") mailed
on January 28, 2015.
2
Appeal2015-004896
Application 12/495, 183
Claims 2 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable Oost and Berry, in further view of Bales (US
2004/0068554 Al, Apr. 8, 2004). Final Act. 12-14.
ISSUE
Appellants have presented several arguments as to why the
combination of the references does not teach or suggest the features recited
in independent claims 1 and 10. 2
These contentions present us with the issue: did the Examiner err in
finding that the combination of Oost and Berry teaches or suggests the
features recited in representative claim 1, supra, and similarly recited in
independent claim 1 O?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred.
Further, we have reviewed the Examiner's response to Appellants'
arguments. The Examiner has provided a comprehensive response to each
argument presented by the Appellants on pages 10 through 1 7 of the
Answer. We have reviewed this response and concur with the Examiner's
findings and conclusions. 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 Final Action and
Answer in response to Appellants' Appeal Brief. Final Act. 2-14; Ans. IO-
2 Throughout this opinion we refer to the Appeal Brief dated September 11,
2014.
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Appeal2015-004896
Application 12/495, 183
17. We observe that no Reply Brief is of record to rebut such findings
including the Examiner's responses to Appellants' arguments.
DECISION
The decision of the Examiner to reject claims 1-19 is affirmed.
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).
AFFIRMED
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