Thorsten Kramp et al.

Patent Trials and Appeals Board

Jul 17, 2019

12849122 - (D) (P.T.A.B. Jul. 17, 2019)

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.
12/849,122 08/03/2010 Thorsten Kramp CH920090015US1
(163-574)
7252
49267 7590 07/17/2019
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THORSTEN KRAMP and TAMAS VISEGRADY
____________________

Appeal 2017-007873
Application 12/849,1221
Technology Center 3600
____________________

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–16, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 Appellants failed to identify the real party in interest in their Appeal Brief
as required by 37 C.F.R. § 41.37(c)(1)(i). Assignment records indicate the
assignee in interest is International Business Machines Corporation.
2 Our Decision refers to the Specification (“Spec.”) filed August 3, 2010,
the Non-Final Office Action (“Non-Final Act.”) mailed May 13, 2016, the
Appeal Brief (“Br.”) filed October 4, 2016, and the Examiner’s Answer
(“Ans.”) mailed February 1, 2017.
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CLAIMED INVENTION
The claims are directed to a bytecode construction, method, and
system for optimizing just-in-time (JIT) compilation. Spec., 22 (Abstract).
The bytecode includes regions having logical sequences of one or more
bytecode blocks, and the bytecode is annotated with region hints. Id. The
region hints have a bytecode structure and are designed to instruct a JIT
runtime environment for JIT compilation of the regions by JIT compilers
implemented at nodes of a network. Id. The claimed invention may be used
for performance optimization in a network of nodes, such as a network of
wireless sensors, wherein the nodes have limited resources and operate in a
JIT environment. Id. at 1.
Claims 1, 7, and 15 are independent. Claims 1 and 7, reproduced
below, are illustrative of the claimed subject matter:
1. A bytecode construction, comprising:
at least one region which is a logical sequence of one or
more bytecode blocks; and
a region hint embedded in the bytecode, wherein the
region hint contains a bytecode structure and is designed to
instruct a just-in-time (JIT) runtime environment for JIT
compilation of a region by JIT compilers implemented at nodes
of a network, wherein the nodes are configured to generate JIT
profiles, store JIT profile information in a non-transitory
computer readable storage medium, and migrate the JIT profiles
between the nodes.
Br. 39 (Claims App.).
7. A method for optimizing a network of nodes which share a
same JIT runtime environment and which independently
implement JIT compilers for compiling bytecode, the method
comprising:
providing a bytecode construction, which comprises:
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at least one region which is a logical sequence of one or
more bytecode blocks; and
a region hint embedded in the bytecode, wherein the
region hints have a bytecode structure, and are designed for
instructing a just-in-time or JIT runtime environment for JIT
compilation of the regions by JIT compilers implemented at
nodes of a network, wherein the nodes are configured to
generate JIT profiles, store JIT profile information in a non-
transitory computer readable storage medium, and migrate the
JIT profiles between the nodes.

REJECTIONS & REFERENCES
(1) Claims 1–6 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter not falling within one of the enumerated
categories of invention. Non-Final Act. 5.
(2) Claims 1–16 stand rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more. Id. at 5–7.
(3) Claims 15 and 16 are rejected under 35 U.S.C. § 112, second
paragraph. Id. at 7–8.
(4) Claims 1, 2, 4, 7–11, 15, and 16 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by JOSEPH HUMMEL, ET AL., ANNOTATING THE JAVA
BYTECODES IN SUPPORT OF OPTIMIZATION, TECHNICAL REPORT 97-01 U. C.
1–15 (April 1997) (hereinafter “Hummel”). Id. at 8–11.
(5) Claims 3, 5, and 6 stand rejected under 35 U.S.C. § 103(a)
based on Hummel and Gosling (US 6,052,732, issued April 18, 2000). Id. at
11–14.
(6) Claims 12–14 stand rejected under 35 U.S.C. § 103(a) based on
Hummel and Wannamaker et al. (US 7,788,657 B2, issued August 31, 2010;
hereinafter “Wannamaker”). Id. at 14–16.
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ANALYSIS
Rejection of Claims 1–6 under 35 U.S.C. § 101 as Not Falling Within One of
the Enumerated Categories of Invention
The Examiner finds claims 1–6 are directed to a bytecode construction
that is software per se, and does not fall within one of the enumerated
categories of invention under § 101, namely, processes, machines,
manufactures, compositions of matter, and improvements thereof. Non-
Final Act. 4–5. The Examiner also finds the limitations “designed to instruct
a JIT runtime environment” and “wherein nodes are configured to” as
recited in claim 1 merely set forth various intended uses of the invention
which do not confer patentability. Id.
Appellants argue the Examiner has oversimplified claim 1 by
referring to the claim in its entirety as merely “directed to bytecode
construction.” Br. 19–20. Appellants further contend the Examiner failed to
address the recited storage medium and computer nodes, which are not
software per se. Id.
We do not agree with Appellants’ arguments. The preamble is
unequivocal in stating that claim 1 is directed to a “bytecode construction.”
Thus, the Examiner did not oversimplify the claim in finding it “directed to
bytecode construction.”
In addition, claim 1 recites no connection between the bytecode
construction and the computer-readable storage medium, and, at best, only a
connection to the computer nodes. Particularly, claim 1 recites that the
bytecode construction’s region hint is “designed to instruct a just-in-time
(JIT) runtime environment for JIT compilation of a region by JIT compilers
implemented at nodes of a network.” The nodes generate, store, and migrate
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JIT profiles that, as recited, have no apparent connection to the “at least one
region” or “region hint” of the “bytecode construction.” There is no
recitation in claim 1 that the region hint instructs a JIT compiler executing
on a node how to compile bytecode blocks of the “at least one region” of the
“bytecode construction.” Accordingly, we find unpersuasive Appellants’
arguments that the storage medium and computer nodes confer subject
matter eligibility.
Moreover, we agree with the Examiner that the phrase “designed to
instruct” can be construed as mere intended use and does not require the
“instructing” to be performed by the bytecode construction, or even that it
have the capability to perform the instructing, as the “designing” may not
have been successful in producing an operational “region hint.” In this
regard, we note that “the [Office] is obligated to give claims their broadest
reasonable interpretation during examination.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). One definition for “design” is
“4. To have as a goal or purpose; intend.” American Heritage Dictionary of
the English Language (last indexed June 13, 2009). As such, the “non-
transitory computer readable storage medium” and “nodes of a network” that
Appellants rely on to confer patentability may be construed as merely part of
a statement of intended use recited in the claim, that is, the words “designed
to instruct” connote the intention or plan that the “region hint” instruct the
JIT runtime environment, which is a distinct concept from the “region hint”
actually instructing the JIT runtime environment how to compile a region.
Claim 1. Br. 39 (Claims App.). Such intended use fails to confer
patentability. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
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F.3d 801, 809 (Fed. Cir. 2002); In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997).
Importantly, claim 1 does not recite that the “at least one region” or
“region hint” of the “bytecode construction” are implemented in any
physical device or physical medium. As such, the claim may be construed
as reciting a mere computer instruction or data abstraction. “Data in its
ethereal, non-physical form is simply information that does not fall under
any of the categories of eligible subject matter under section 101.” Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1349–50
(Fed. Cir. 2014) (“Digitech”) (“device profile” held to be patent ineligible).
As recited in claim 1, the bytecode construction, standing alone, is not
something that falls within an enumerated category of invention under
§ 101. Dependent claims 2–6 inherit this defect from claim 1, and are
likewise patent-ineligible.
Thus, for the stated reasons, we sustain the Examiner’s rejection of
claims 1–6.
Rejection of Claims 1–16 under 35 U.S.C. § 101 as Directed to a Judicial
Exception Without Significantly More
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
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In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U. S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the [p]rogress of [s]cience” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343,
1346 (Fed. Cir. 2017) (citing Alice, 573 U. S. at 215–16).
The U.S. Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U. S. at 217–18). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U. S. at 221 (quoting Mayo, 566 U.S. at 72, 79). There is no need
to proceed to the second step, however, if the first step of the Alice/Mayo
test yields a determination that the claim is directed to patent eligible subject
matter.
The Office has recently revised its guidance for how to apply the
Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“the Revised Guidance”).
Under the Revised Guidance, we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). Revised
Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. Revised
Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated,
then the claim is not directed to a judicial exception and is patent-eligible
under § 101. Revised Guidance, 84 Fed. Reg. at 54. Only if a claim (1)
recites a judicial exception and (2) does not integrate that exception into a
practical application, do we then evaluate whether the claim provides an
inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U. S. at
222, 218.
USPTO Step 1–Categories of Invention in 35 U.S.C. § 101
Step 1 of the patent eligibility analysis is to review the claims to
ensure they fall within one of the enumerated categories of invention under
§ 101. As discussed above, claims 1–6 do not fall into any one of the
enumerated categories of invention. Claims 7–14 recite “methods” which
qualify as “processes” under § 101. Claims 15 and 16 recite “systems”
which qualify as “machines” under § 101. Thus, although claims 1–6 fail
Step 1 of the subject matter eligibility analysis, claims 7–16 satisfy Step 1.
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We proceed to Step 2A to determine whether claims 7–16 recite abstract
ideas.
Alice/Mayo—Step 1 (Abstract Idea)
USPTO Step 2A–Prongs 1 and 2 identified in the Revised Guidance

USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the
Revised Guidance), the Examiner finds the claims recite the construction of
bytecode which is considered data organization, which in turn is considered
to be “an idea of itself” and thus an abstract idea. Non-Final Act. 5–6.
Claim 7 recites a method for “providing a bytecode construction.” As
recited, this encompasses orally communicating the mentally designed
region or region hint to someone, or writing it down with pen and paper.
The same is true of claims 8–14, dependent from claim 7.
Claim 15 recites “[a] system comprising a network of nodes” and “the
network comprising computer program code means configured to implement
a method comprising the steps of: providing a bytecode construction.” The
“network of nodes” and “computer program code means” are recited in a
generic manner. Claim 16 depends from claim 15 and thus incorporates
these limitations.
We also note that the Specification expressly contemplates that JIT
compilable code is identified and annotated manually offline. Particularly,
the Specification states
bytecode is preferably annotated offline. The offline
identification of bytecode sequences suitable for JIT
compilation can be done either manually by a programmer
(e.g., by annotating the code regions accordingly), or semi-
automatically by profiling the application concerned.
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Spec., 9 (emphasis added). Thus, as claimed, the design of the
“region hint” can be carried out “manually” using pen and paper, for
example.
In a case similar to this one, our reviewing court held, “[w]ith the
exception of generic computer-implemented steps, there is nothing in the
claims that foreclose them from being performed by a human, mentally or
with pen and paper.” Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016); see also Gottschalk v. Benson, 409 U.S.
63, 67 (1972) (conversion of binary-coded decimals to pure binary numerals
can be done mentally and is thus patent-ineligible); Parker v. Flook, 437
U.S. 584 (1978) (method of updating and calculating alarm limits could be
carried out by pen and paper). Such is the case here with all of the claims
before us on appeal. Simply put, the broadest reasonable interpretation of
these claims encompasses human thought or mental designs or use of pen
and paper and, thus, recite abstract ideas.
We find each of claims 7–16 recites designing computer code (a
bytecode region and region hint) in the human mind or with pen and paper.
Such abstract idea constitutes a “mental process” which is an abstract idea
under the Revised Guidance.
USPTO Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong 2, of the Revised Guidance, we discern no
additional element (or combination of elements) recited in claims 7–16 that
integrates the judicial exception into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). For example, Appellants’
claimed additional elements (e.g., “computer-readable storage medium” and
“nodes of a network”) do not (1) improve the functioning of a computer or
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other technology; (2) apply to any particular machine (except for a generic
computer); (3) effect a transformation of a particular article to a different
state; and (4) apply in any meaningful way beyond generally linking the use
of the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Specifically, in claims 7–14, the “at least one region” and the “region
hint” of the “bytecode construction” are not recited as implemented in any
physical device or medium. Thus, we are not persuaded that these claims
recite any practical application (i.e., recite any improvement in the
functioning of a computer or other technology, an application to a machine,
effect an article’s transformation, or be applied in any meaningful way).
Independent claim 15 recites “computer program code means” which
is generically recited. Spec. 17, Fig. 1. This “computer program code
means” is configured to implement a single-step method of “providing a
bytecode construction, stored in a non-transitory computer readable storage
medium.” Claim 15, like independent claim 7, does not recite any element
that implements the provided bytecode construction. Thus, the claims do not
improve the functioning of a computer or other technology, or be applied to
a machine, or affect a transformation of an article to a different state or
thing, or be applied in a meaningful way.
Moreover, in each of the claims, the “region hint” is “designed to
instruct” or “designed for instructing,” which may be construed as a mere
statement of intended use, as the Examiner finds. Non-Final Act. 3. This
means that the limitations following this phrase are accorded no patentable
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weight. As such, they cannot provide a practical application of the abstract
idea. See Catalina Mktg., Schreiber, supra.
Although the “region hint” may be “designed to instruct” or “designed
for instructing,” the JIT runtime environment for JIT compilation of a region
by JIT compilers implemented at nodes of a network, these limitations
merely link the judicial exception to a technological environment. Likewise,
the lack of any connection of the “region hint” to nodes being configured to
generate, store, and migrate JIT profiles in claims 7–16, means this part of
the claim lends no support for practical application of the “bytecode
construction” in the claims. Merely limiting the use of an abstract idea to a
particular technological environment is not sufficient to confer patent
eligibility. Alice, 573 U.S. at 222–223 (citing Bilski, 561 U.S. at 610–612);
Flook, 437 U.S. at 588–90.
Accordingly, although claims 7–16 recite additional elements such as
“JIT runtime environment,” “JIT compiler,” “computer program code
means,” “network of nodes,” “JIT profiles,” and “non-transitory computer
readable storage medium,” these additional elements are recited generically,
at a high level of generality, and do not go beyond the abstract idea recited
in the claims, namely, the designing computer code (a bytecode region and
region hint) in the human mind or with pen and paper. Thus, the claims are
directed to a judicial exception that is not integrated into a practical
application of that exception.
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Alice/Mayo—Step 2 (Inventive Concept)
USPTO Step 2B identified in the Revised Guidance
Under Federal Circuit precedent, an “inventive concept” under Alice
step 2 can be established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a “solution . . . necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks”
(see DDR Holdings, 773 F.3d 1245, 1257 (Fed. Cir.
2014));
(2) transform the abstract idea into “a particular, practical
application of that abstract idea,” e.g., “installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user” (see BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) “entail[] an unconventional technological solution ([e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)” and “improve the
performance of the system itself” (see Amdocs Ltd. v.
Openet Telecom, Inc., 841 F.3d at 1300, 1302 (Fed. Cir.
2016)).
Similarly, as recognized by the Revised Guidance, an “inventive
concept” under Alice step 2 can be evaluated based on whether an additional
element or combination of elements:
(1) “[a]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;” or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.”
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See Revised Guidance, 84 Fed. Reg. at 56.
Claims 7–14 clearly are not “rooted in computer technology” because
the “at least one region” and “region hint” are not implemented in any
physical device or medium. Also, claims 7–16 suffer from the problem that
“providing a bytecode construction” cannot be “rooted in computer
technology” if no device or medium implements it. Likewise, Appellants
fail to demonstrate the claims provide a technical solution to a technical
problem when the recited “bytecode construction” is not implemented in any
physical device or medium (claims 7–14), or is not provided to any device or
medium that uses the “bytecode construction” for some purpose (claims 15–
16).
Moreover, rather than provide an unconventional technological
solution, the totality of the evidence of record establishes that the additional
elements of claims 7–16 simply append to the judicial exception well-
understood, routine, and conventional activities previously known to the
industry, specified at a high level of generality. For example, the
Specification explains that JIT deployment with a sensor network with a
heterogeneous set of sensor nodes has been described by G.V. YEE, ET AL.,
THIRD WORKSHOP ON EMBEDDED NETWORKED SENSORS (EMNETS) (2006).
Further, Hummel states “[t]he bytecodes are annotated during the original
source code to bytecode translation, allowing both traditional interpretation
by a JVM and aggressive optimization by an annotation-aware bytecode
compiler.” Hummel, 1. Hummel further states “[t]he most popular
approach is on-the-fly compilation, also known as “just-in-time” (or JIT)
compilation.” Id. at 4. Wannamaker states “[t]he most common examples
of JIT compiles in the field today operate on Java byte-code.” Wannamaker,
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1:12–14. Wannamaker also recognizes the problem that JIT technologies
may be ineffective or fail on consumer devices with limited memory or CPU
(such as home sensor networks). Id. at 1:15–27. Wannamaker states its
invention is “for annotating a Java application file or ground Java
application file to insert compiler hinting information such that a just-in-time
compiler in a target environment preferentially compiles byte-code within
the java application file.” Id. at Abstract. In Wannamaker’s Figure 3, a VM
interpreter receives a ground file with hints and triggers the JIT compiler to
compile the instruction or group of instructions (“region”) associated with
the detected hint (“region hint”). Id. at 8:28–35.
Thus, not only is the “region” and “region hint” disclosed by these
references, environments in which they operate, such as “bytecode
structure,” “JIT runtime environment,” “JIT compilers,” “nodes of a
network,” and “computer readable storage medium” were well-known,
routine, and conventional at the time of the invention, contrary to
Appellants’ arguments. Br. 16–22.
Appellants rely on McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016) as supporting patentability of the claims.
Br. 14–15. We do not find McRO apposite to the facts of this case. In
McRO, the claims were directed to animating lip synchronization and facial
expression of three-dimensional characters automatically using complex
processing involving morph weight streams, timed data files of phonemes,
transition parameters, and other data. McRO is very different from this case,
where, in claims 1–14, the “at least one region” and “region hint” are not
implemented in any physical device or medium, and, in claims 15–16,
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nothing implements the provided “bytecode construction” to do anything
useful with it.
Appellants further cite to Helios Software, LLC v. Spectorsoft Corp.,
2014 WL 4796111 (D. Del. Sept. 18, 2014) for the proposition that claims
reciting computer activity may be patent-eligible if the computer plays a
significant part in permitting the claimed method to be performed.
Appellants do not show how Helios has any similarity to facts of this case.
Again, claims 7–14 do not recite that the “bytecode construction” is
implemented in any physical device or medium, so it could not assist a
computer to “play a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for
permitting a solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.” SiRF Tech., Inc. v.
Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). With respect to
claims 7–16, the mere “provi[sion of] a bytecode construction” does not
implement it, and, thus, it could not play a significant part in permitting a
claimed method to be performed. Accordingly, we find Appellants’
argument unpersuasive to show Examiner error. Appellants have not shown
that the claims recite an “inventive concept” or that the claims amount to
“significantly more” than the abstract ideas embodied therein.
Accordingly, we conclude claims 7–16 are unpatentable under
35 U.S.C. § 101 as directed to abstract ideas without significantly more.
Claims 15 and 16 are rejected under 35 U.S.C. § 112, second paragraph
The Examiner rejected claims 15 and 16 under 35 U.S.C.
§ 112, second paragraph, as indefinite for reciting a “system comprising a
network of nodes” and then later reciting the network “comprises” (rather
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than “further comprises”) “computer program code means.” Br. 39 (Claims
App.); Non-Final Act. 7. The Examiner also finds the “computer program
code means” is not recited in conjunction with any function, so it is unclear
whether these words convey structure or function. Non-Final Act. 7–8.
Appellants argue there is no requirement in the MPEP to use the term
“further comprising” and one of ordinary skill in the art would know that the
system includes both a network of nodes and a computer program, as
explicitly recited in the claims. Br. 24.
The preamble makes clear that the network includes nodes
(specifically, a “network of nodes”) so it is appropriate that the Examiner
rejected the claims as lacking definiteness for not reciting “further
comprising” when later reciting the network further comprises “computer
program code means.”3 The Examiner has the responsibility of “ferreting
out indefinite claims prior to issuance” when a skilled artisan cannot
reasonably discern the metes and bounds of the claim, i.e., the claim is
unclear. In re Packard, 751 F.3d 1307, 1323 (Fed. Cir. 2014). Here, the
claim language presents ambiguity as to whether the “network” includes
only the “nodes” or also the “computer program code means.” The
Examiner’s rejection is appropriate here and consistent with the role the
Office plays in ensuring the quality of patents and compliance with statutory
requirements. Id. at 1324.

3 Claim 15 recites both a system (machine) and method steps for using the
system (process), which may create indefiniteness as to when direct
infringement occurs. See In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Claim 15 may be indefinite
under 35 U.S.C. § 112, second paragraph for this additional reason.
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18
We also agree with the Examiner that the recitation of “computer
program code means” without reference to any function renders the claim
indefinite because it is unclear whether the word “means” invokes § 112,
sixth paragraph. Generally, the word “means” in a claim creates a
presumption that § 112, sixth paragraph is being invoked. Personalized
Media Communications, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–
704 (Fed. Cir. 1998). However, the lack of any function associated with the
recited “means” may or may not be construed as invoking § 112, sixth
paragraph, depending on the circumstances. TecSec, Inc. v. Int’l Bus.
Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013) (“system memory
means” and “digital logic means” did not invoke § 112, sixth paragraph due
to sufficient structure in the specification); Skky, Inc. v. Mindgeek, S.A.R.L.,
859 F.3d 1014 (Fed. Cir. 2017) (“wireless device means” did not invoke
§ 112, sixth paragraph because sufficient structure was recited).
Hence, it can be appreciated that the “computer program code means”
as recited in these claims can be construed variously as invoking § 112, sixth
paragraph, or not. “[T]he patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that patent
examiners demand that applicants do so in appropriate circumstances so that
the patent can be amended during prosecution rather than attempting to
resolve the ambiguity in litigation.” Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Thus, we sustain the
Examiner’s rejection under § 112, second paragraph.
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19
Rejection of Claims 1, 2, 4, 7–11, 15, and 16 under 35 U.S.C. § 102(a)
as anticipated by Hummel
The Examiner finds these claims anticipated under § 102(a) by
Hummel. Non-Final Act. 8–11. Regarding independent claims 1, 7, and 15,
Appellants contend the Examiner errs by finding the “region hints” and “JIT
profiles” equivalent in the rejection. Br. 27. Appellants also argue Hummel
has no discussion of migrating JIT profiles. Id. at 27–28.
Appellants’ arguments are unpersuasive. The claims recite that the
“region hint” is “designed to instruct” or “designed for instructing” the JIT
runtime environment. These are statements of intended use that are not
given patentable weight in the subject matter eligibility analysis. See
Catalina Mktg., Schreiber, supra. Furthermore, the claims recite no
significant connection of the “JIT profiles” to any element of the claim,
including the “at least one region,” “region hint,” or “providing a bytecode
construction” comprising those two things. As recited in the claims, the
“bytecode construction” has no relation to the “JIT profiles” other than they
touch upon “nodes of a network” that may not even be the same nodes.
Thus, because migrating JIT profiles has no relationship or connection
to any element of the claim, we sustain the Examiner’s rejection of the
independent claims 1, 7, and 15. No separate arguments are presented for
dependent claims 2, 4, 8–11, or 16, so we sustain the rejection of those
claims for the same reasons as the independent claims.

Rejection of Claims 3, 5, and 6 under 35 U.S.C. § 103(a) based on
Hummel and Gosling
The Examiner finds these claims obvious under § 103(a) over
Hummel and Gosling. Non-Final Act. 11–14.
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Appellants argue that Gosling discloses verifying bytecode as opposed
to constructing a bytecode with region hints to instruct a JIT runtime
environment. Br. 32. Appellants also argue Gosling fails to cure the alleged
deficiencies of Hummel. Id.
We do not agree with Appellants’ arguments. Claims 3, 5, and 6 do
not recite “constructing a bytecode” as argued. Br. 32. Rather, claim 1,
from which these claims depend, recites “[a] bytecode construction”
comprising “at least one region” and “a region hint.” Thus, Appellants’
argument is not supported by corresponding language in the claims, which
do not recite anything about “constructing a bytecode.” Limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Furthermore, the Examiner relies on Hummel, not Gosling, to disclose
the “bytecode construction” of claim 1. Non-Final Act. 8–9. Thus,
Appellants’ argument fails to address the Examiner’s ground of rejection as
applied, and, for this additional reason, we find Appellants’ arguments
unpersuasive. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.”).
Because we agree with the Examiner that Hummel anticipates claim
1, there were no deficiencies in Hummel regarding claim 1 that Gosling was
needed to supply.
Accordingly, we sustain the Examiner’s rejection of claims 3, 5, and 6
under § 103.
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21
Rejection of Claims 12–14 stand rejected under 35 U.S.C. § 103(a)
based on Hummel and Wannamaker
The Examiner finds these claims obvious over Hummel and
Wannamaker. Non-Final Act. 14–16.
Appellants argue Wannamaker states it does not employ embedded
region hints. Br. 35. Instead, Appellants contend Wannamaker uses a
separate hint, or annotator, file in addition to the application file itself. Id.
(citing Wannamaker, 7:30–36). Appellants’ argument relates to language in
claim 7, from which claims 12–14 depend, reciting “a region hint embedded
in the bytecode.”
The Examiner agrees that Wannamaker discloses separate hint file
and application file, but also finds that the reference discloses an embedded
region hint as claimed. Ans. 29. Specifically, Wannamaker states
[t]he annotator tool is the tool that annotates interpretable p-
code such as Java class files and the like to insert therein
annotations that identify methods or, more generally, p-code
instructions appropriate to be compiled by a target environment
just-in-time compiler.
Wannamaker, 7:32–36. Thus, Appellants’ argument focuses on the two files
that are input to Wannamaker’s annotator tool, not the output of the tool,
which is equivalent to and discloses the embedded “region hint.”
Appellants reiterate the argument concerning migrating JIT profiles,
which we previously found unpersuasive with respect to the rejection of
claim 7 from which these claims depend.
Accordingly, we sustain the Examiner’s rejection of claims 12–14
under § 103.
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DECISION
The Examiner’s rejection of claims 1–16 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 15 and 16 under 35 U.S.C. § 112,
second paragraph is affirmed.
The Examiner’s rejection of claims 1, 2, 4, 7–11, 15, and 16 under
35 U.S.C. § 102(a) is affirmed.
The Examiner’s rejections of claims 3, 5, and 6, and 12–14 under
35 U.S.C. § 103(a) are 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