Ex Parte Wade

Patent Trial and Appeal Board

May 31, 2013

10881663 (P.T.A.B. May. 31, 2013)

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.
10/881,663 06/30/2004 Roy Wade LSIL02US01 (04-0333) 1762
24319 7590 05/31/2013
LSI CORPORATION
1320 Ridder Park Drive
San Jose, CA 95131
EXAMINER
TECKLU, ISAAC TUKU
ART UNIT PAPER NUMBER
2198
MAIL DATE DELIVERY MODE
05/31/2013 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 ROY WADE

___________

Appeal 2010-010933
Application 10/881,663
Technology Center 2100
____________

Before ERIC B. CHEN, TREVOR M. JEFFERSON, and LARRY J. HUME,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-36, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to managing several versions of a device
with embedded object code by using an editor to scan the object code,
finding a signature, changing one or more parameters within the object code,
and replacing the object code. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A software system comprising:
an executable code comprising a predetermined signature, at
least one optional routine, and an indicator to indicate if said optional
routine is to be executed, said indicator being located in a
predetermined location relative to said predetermined signature, said
executable code being stored in a first computer readable storage
medium, said indicator being configured such that said optional
routine is not to be executed; and
an editor adapted to scan said executable code for said
signature, solicit an input, modify said indicator such that said
optional routine may be executed to create a modified executable
code, and replace said executable code with said modified executable
code.

Claims 1-9, 13-21 and 25-33 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by O’Dowd (U.S. Patent Application Publication No.
2002/0066080 A1; May 30, 2002).
Claims 10-12, 22-24, and 34-36 are rejected under 35 U.S.C. § 103(a)
as being obvious over O’Dowd and Wyatt (U.S. Patent No. 7,007,159 B2;
Feb. 28, 2006.)
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ANALYSIS
§ 102 Rejection
First, we are unpersuaded by Appellant’s arguments (Br. 7) that
O’Dowd does not describe the limitation “optional routine may be executed
to create a modified executable code,” as recited in independent claim 1.
The Examiner found that the branch instructions of O’Dowd
correspond to the limitation “optional routine may be executed to create a
modified executable code.” (Ans. 3, 10-11; O’Dowd, ¶¶ [0025], [0035].)
We agree with the Examiner.
O’Dowd relates “to tracing the execution path of a computer
program.” (¶ [0002].) O’Dowd provides a method for tracing an execution
path of a computer program, which includes branch instructions and
“identifying each branch instruction; evaluating each branch instruction to
be one of true and false.” (¶ [0025].) Thus, O’Dowd describes the
limitation an “optional routine.” O’Dowd further provides “instrumenting
said instructions associated with an evaluation of true with a signature
instruction.” (¶ [0035].) Thus, O’Dowd describes the limitation an
“optional routine may be executed to create a modified executable code.”
Appellant argues that “[t]he Office Action appears to argue that the
FUNCTION(p3, p4) in FIG. 2 of O’Dowd teaches the claimed optional
routine,” but “FUNCTION(p3, p4) appears to cause five lines that begin
with ‘FUNCTION’ to be added to the trace log 130 when function 130 is
called with p3 and p4 as parameters (O’Dowd, FIG. 2)” and “[e]ntries in the
trace log 130 consist of data that cannot be executed.” (Br. 7.) However,
the Examiner found that the branch instruction of O’Dowd, rather than
“FUNCTION(p3, p4)” as illustrated in Figure 2 of O’Dowd, corresponds to
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the limitation “optional routine may be executed to create a modified
executable code.” (Ans. 3, 10-11.)
Therefore, we agree with the Examiner that O’Dowd describes the
limitation “optional routine may be executed to create a modified executable
code.”
Next, we are unpersuaded by Appellant’s arguments (Br. 7-8) that
O’Dowd does not describe the limitation “said indicator being located in a
predetermined location relative to said predetermined signature,” as recited
in independent claim 1.
The Examiner found that the signature instruction of O’Dowd
corresponds to the claimed “predetermined signature” (Ans. 3; O’Dowd,
¶ [0037]) and that the signature points of O’Dowd correspond to the claimed
“indicator” (Ans. 11; O’Dowd, fig. 5). The Examiner further found that
Figures 4 and 5 of O’Dowd describe the limitation “said indicator being
located in a predetermined location relative to said predetermined
signature.” (Ans. 11-12.) We agree with the Examiner.
O’Dowd explains that “signature instructions are always associated
with a branch instruction” (¶ [0036]) (i.e., the claimed “predetermined
signature”) and that upon execution of a program, a signature area 300 is
defined that contains eight signature points 310 (i.e., the claimed
“indicator”) (¶ [0048]). Figure 5 of O’Dowd illustrates a sample program,
“test program,” in which execution information is gathered at run-time
(¶ [0047]), such that the sample program (i.e., “repeat until condition =
TRUE”) is separate from the signature area 300 containing the signature
points 310 (i.e.,“define sig_area size(8)” (¶ [0048])). Thus, O’Dowd
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describes the limitation “said indicator being located in a predetermined
location relative to said predetermined signature.”
Appellant argues that “O’Dowd fails to disclose any relationship
between the location of the signature instruction (being a computer
instruction in an object code) and the location where the signature point
(being a piece of data somewhere in memory) is pushed or stored to.”
(Br. 7.) However, as found by the Examiner (Ans. 11), Figure 5 of O’Dowd
illustrates that the “define sig_area size(8)” (i.e., the claimed “predetermined
signature”) is separate from the “repeat until condition = TRUE” (i.e., the
claimed “indicator”).
Therefore, we agree with the Examiner that O’Dowd describes the
limitation “said indicator being located in a predetermined location relative
to said predetermined signature.”
Last, we are unpersuaded by Appellant’s arguments (Br. 9) that
O’Dowd does not describe the limitation “an indicator to indicate if said
optional routine is to be executed,” as recited in independent claim 1.
The Examiner found that the signature point of O’Dowd corresponds
to the limitation “an indicator to indicate if said optional routine is to be
executed.” (Ans. 3, 16-17; O’Dowd, ¶¶ [0056]-[0057], fig. 5.) We agree
with the Examiner.
As discussed previously, Figure 5 of O’Dowd illustrates a sample
program, “test program,” in which execution information is gathered at run-
time. (¶ [0047].) O’Dowd explains that “signature points are added into the
signature area from left to right” (¶ [0056]) such that “corresponding
identifiers have been pushed into the signature area” that indicate which set
of instructions were executed at run-time and the order of execution
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(¶ [0057]). Thus, O’Dowd describes the limitation “an indicator to indicate
if said optional routine is to be executed.”
Appellant argues that “the optional routine [as claimed] has not yet
been executed, and the indicator can be used to indicate whether or not the
optional routine will be executed, thus controlling the future execution
path.” (Br. 8.) Accordingly, Appellant argues “the signature point or the
identifier is not used to indicate the execution path to be followed through
the program” because “the signature point or the identifier is used to indicate
the execution path that has already been followed through the program.”
(Br. 9.) However, this argument is not commensurate in scope with claim 1,
because the claim does not expressly require the “optional routine” to
control the future execution path. In other words, the claim language
“optional route is to be executed” is broad enough to encompass the “test
program” illustrated in Figure 5 of O’Dowd. (¶ [0047]; see also Ans. 16-
17.)
Therefore, we agree with the Examiner that O’Dowd describes the
limitation “an indicator to indicate if said optional routine is to be executed.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 102(e). Claims 2-9 depend from independent claim 1, and
Appellant has not presented any substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 2-9 under 35 U.S.C.
§ 102(e) for the same reasons discussed with respect to independent claim 1.
Independent claims 13 and 25 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any substantive arguments with respect to these claims. We
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sustain the rejection of claims 13 and 25, as well as dependent claims 14-21
and 26-33, for the same reasons discussed with respect to claim 1.

§ 103 Rejection
Although Appellant nominally argues the rejection of dependent
claims 10-12, 22-24, and 34-36 separately (Br. 10), the arguments presented
do not point out with particularity or explain why the limitations of the
dependent claims are separately patentable. Instead, Appellant argues that
“[e]ach of claims10-12, 22-24, and 34-36 depends from one of independent
claims that Appellant maintains are allowable for at least the reasons stated
above.” (Id.) We are not persuaded by these arguments for the reasons
discussed with respect to claims 1, 13, and 25, from which claims 10-12, 22-
24, and 34-36 depend. Accordingly, we sustain this rejection.

DECISION
The Examiner’s decision rejecting claims 1-36 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)(1)(iv).

AFFIRMED

ELD