Ex Parte Burghard et al

Patent Trial and Appeal Board

Nov 21, 2016

13246513 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/246,513
140440 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
09/27/2011
11/23/2016
FIRST NAMED INVENTOR
Stephen J. Burghard
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.
GB920100046US1 8639
EXAMINER
HUDA, MOHAMMED NURUL
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN J. BURGHARD, MARK TODD, PHILIP R. LEE,
and ANDREW WRIGHT
Appeal2014-009152
Application 13/246,513
Technology Center 2100
Before THU A. DANG, ERIC S. FRAHM, and NORMAN H. BEAMER,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009152
Application 13/246,513
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 6-15. Claims 1-5 have been canceled. 1 We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 6 under appeal, with emphasis added to
the key portions of the claim, reads as follows:
6. A computer program product embodied in a computer
readable storage medium, wherein the medium does not include
a propagating signal, for developing software, the software
comprising a plurality of programs, the computer program
product comprising the programming instructions for:
receiving a change to a program;
invoking a data structure checking procedure;
parsing the changed program for reference to a data
structure;
locating other instances of the data structure in other
programs within the software;
comparing the referenced data structure to the located
other instances of the data structure;
performing a predefined action in response to any
detected differences between the referenced data structure and
the located other instances of the data structure; and
repeating said parsing, locating, comparing and
performing for all data structures within the changed program.
1 Claims 1-5 are the subject of related Appeal No. 2014-009281 (application
serial no. 13/405,314), and are drawn to method claims which correspond
substantially to the computer program product (claims 6-10) and system
(claims 11-15) of the instant application on appeal.
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Application 13/246,513
Examiner; s Re} ections2
(1) The Examiner rejected claims 6-8 and 11-13 as being
unpatentable under 35 U.S.C. § 103(a) over De Seadbra e Melo (US
2006/0168558 Al; published July 27, 2006) (hereinafter, "Melo"). Final
Act. 9-13.
(2) The Examiner rejected claims 9, 10, 14, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over Melo and Foti (US
2007/0288892 Al; published Dec. 13, 2007). Final Act. 13-16.
Principal Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 3-27)
and the Reply Brief (Reply Br. 2-20), the following two principal issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 6-8 and 11-13 as being
obvious over Melo because Melo fails to teach or suggest the salient features
of independent claims 6 and 11, including "receiving a change to a program"
as recited in independent claims 6 and 11?
(2) Did the Examiner err in rejecting dependent claims 9, 10, 14,
and/or 15 as being obvious over the combination of Melo and Foti because
the combination fails to teach or suggest (i) locating data structures having
"a same name," as recited in dependent claims 9 and 14; and/or (ii) detecting
"a similar data structure," as recited in dependent claims 10 and 15?
2 The Examiner has withdrawn both the provisional obviousness-type double
patenting rejection of claims 6-15 (see Final Act. 3-7) and the non-statutory
subject matter rejection of claims 6-10 (see Final Act. 7-9) under 35 U.S.C.
§ 101. See Ans. 10-11. Therefore, these rejections are not before us on
appeal and will not be further discussed herein.
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Application 13/246,513
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 9--16; Ans.
3-10) in light of Appellants' contentions in the Appeal Brief (App. Br. 3-
27) and the Reply Brief (Reply Br. 2-20) that the Examiner has erred, as
well as the Examiner's response (Ans. 11-24) to Appellants' arguments in
the Appeal Brief. We disagree with Appellants' arguments as to claims 6-
15.
We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 9--16; see also Ans. 3-11 ),
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 11-24). We highlight and
amplify certain teachings and suggestions of the references, as well as
certain ones of Appellants' arguments for emphasis as follows.
Claims 6-8 and 11-13
At the outset, we note that the majority of Appellants' arguments in
the briefs (see App. Br. 3-18; Reply Br. 2-18) regarding the obviousness
rejection over Melo alone are couched in terms of Melo's failure to teach
certain features of claims 6 and 11. The rejection of claims 6-8 and 11-13
before us on appeal is one based on obviousness, and not anticipation. And,
the standard for determining obviousness is whether the prior art, in light of
the knowledge of a person of ordinary skill in the art at the time of
Appellants' invention, teaches or suggests the subject matter of the properly
supported and construed claims. In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006).
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Application 13/246,513
Section 103 (a) forbids issuance of a patent when "the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The Examiner's
"articulated reasoning" in the rejection must possess a "rational
underpinning to support the legal conclusion of obviousness." Kahn, 441
F.3d at 988. The Supreme Court, citing Kahn, 441 F.3d at 988, stated that
"rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." KSR,
550 U.S. at 418.
However, "the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id. The test is "whether the overall disclosures,
teachings, and suggestions of the prior art, and the level of ordinary skill in
the art- i.e., the understandings and knowledge of persons having ordinary
skill in the art at the time of the invention - support the legal conclusion of
obviousness." Kahn, 441 F.3d at 988. "The teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references," and "[t]he test for an implicit showing is
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art." Kahn, 441 F.3d at 987-88 (citation
omitted). A claimed invention may be obvious even when the prior art does
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Application 13/246,513
not teach each claim limitation, so long as the record contains some reason
that would cause one of skill in the art to modify the prior art to obtain the
claimed invention. Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 728
(Fed. Cir. 2002). Although an analysis of the teaching, suggestion, or
motivation to combine elements from prior art references is helpful, we must
always be mindful that the obviousness inquiry requires an "expansive and
flexible approach." Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
F.3d 1342, 1360 (Fed. Cir. 2012) (citing KSR, 550 U.S. at 415, 419).
"Under the correct [obviousness] analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed." KSR,
550 U.S. at 420 (italicized emphasis added).
In the instant case on appeal, the Examiner has provided a factual
basis and articulated reasoning with a rational underpinning to support the
conclusion of obviousness with regard to claims 6 and 11 (see Final Act. 9--
13; Ans. 3-7 and 12-18). See KSR, 550 U.S. at 418. We agree with the
Examiner's reasons for obviousness -that automated detection of conflicts
is beneficial when developing software (Melo i-f 147; Ans. 16 and 24), and it
would have been obvious to perform steps recursively in order to handle a
design model program that contains multiple structure elements that may
have changed (And. 6 and 17). Further, we agree with the Examiner as to
independent claims 6 and 11 that Melo (Fig. 1; i-fi-17, 12, 16, 19, 26, 28, 56,
91, 96, 145) teaches or suggests the salient features of independent claims 6
and 11, including "receiving a change to a program" as recited in
independent claims 6 and 11.
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Specifically, we agree with the Examiner (Ans. 12-18) that Melo's
computer design modules and interface specifications teach or suggest
programs as claimed (see i-f 7 ("application generator ... translates the
computer design models into an actual computer software system"); 3 i-f 19
(computer design models are compared using "modules" that "can be
implemented in software" or "can also be provided in the form of computer
code stored in a computer-readable medium"); and Melo's "visual modeling
environment" (see i-f 7) is encompassed by Appellants' Integrated
Development Environment (see Spec. 5: 10-17 and 7:3-12). Paragraphs 7
(computer design models are translated "into an actual computer software
system" and models include "sub-models that define how data is
structured"), 19 (software implementation in the form of computer code),
and 56 ("application generator 106 may be used to translate computer design
models into an implementation of a computer software system") of Melo
teach or suggest programs containing data structures, and paragraph 19 of
Melo discloses modules are composed of software. Furthermore, one of
ordinary skill in the art would understand software as containing programs
or computer code, which in tum contain data structures.
We further agree with the Examiner (Final Act. 9-13; Ans. 3-7 and
12-18) that Melo (i-fi-116 and 26) teaches or suggests detecting program
changes in software by checking data structures, including using parsing of
the changed program to locate data structures. In particular, Melo (i-f 24)
discloses parsing a computer design model which is composed of a program.
3 Notably, Appellants have not addressed or otherwise rebutted the
Examiner's reliance upon paragraph 7 of Melo.
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With regard to claims 7 and 12, we agree with the Examiner (Final
Act. 12; Ans. 19--20) that Melo (i-fi-f 146 and 166; Fig. 15) teaches or suggests
displaying differences, which is equivalent to outputting a report.
With regard to claims 8 and 13, we agree with the Examiner (Final
Act. 13; Ans. 20-21) that Melo (i1i127 and 91) teaches or suggests changing
other instances of the data structure to match the referenced data structure.
In view of the foregoing, we sustain the obviousness rejection of
claims 6-8 and 11-13 under 35 U.S.C. § 103(a) over Melo alone.
Claims 9 and 14
We agree with the Examiner (Final Act. 14--16; Ans. 7-10 and 22-24)
that the combination of Melo and Foti teaches or suggests locating data
structures having "a same name," as recited in dependent claims 9 and 14.
Appellants' Specification provides a specific definition of the term
"data structure" that supports this understanding. Spec. 1: 12-14 ("A data
structure is a description of data to be found in memory that is designed as a
way of storing and organizing data in a computer so that the data can be used
efficiently."). In this light, Melo' s software development and data structure
checking procedure (see, e.g., i-fi-f 12 and 91) and comparison of attributes
(i-f 145), combined with Foti' s "pure syntactic check" for a "same name"
used to "identify identical elements" including "interface and/or properties"
(i-f 52), teaches or suggests locating data structures having "a same name," as
recited in dependent claims 9 and 14.
In light of our agreement with the Examiner's findings, Appellants'
contention that the combination of Melo and Foti fails to teach (not teach or
suggest in view of the knowledge of the person of ordinary skill in the art)
locating data structures having "a same name," as recited in dependent
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claims 9 and 14, is not persuasive. In view of the foregoing, we sustain the
obviousness rejection of claims 9 and 14 under 35 U.S.C. § 103(a) over the
combination of Melo and Foti.
Claims 10 and 15
We agree with the Examiner (Final Act. 14--16; Ans. 7-10 and 22-24)
that the combination of Melo (see, e.g., i-fi-f 12, 91, 145) and Foti (i-fi-152 and
54; Figs. 4A and 4B) teaches or suggests detecting "a similar data structure,"
as recited in dependent claims 10 and 15.
In light of Appellants' own description and/or definition of "data
structure" (Spec. 1: 12-14 ("[a] data structure is a description of data to be
found in memory that is designed as a way of storing and organizing data in
a computer so that the data can be used efficiently")), we find that the
combination of Melo and Foti discloses detecting "a similar data structure,"
as recited in dependent claims 10 and 15. Foti' s identification of identical
elements that include similar interfaces and/or properties (i-f 52) is
encompassed by the recited detection of a similar data structure.
In light of our agreement with the Examiner's findings, Appellants'
contentions that the combination of Melo and Foti fails to teach (not teach or
suggest in view of the knowledge of the person of ordinary skill in the art)
detecting "a similar data structure," as recited in dependent claims 10 and
15, are not persuasive. In view of the foregoing, we sustain the obviousness
rejection of claims 10 and 15 under 35 U.S.C. § 103(a) over the combination
of Melo and Foti.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 6-8 and 11-13 as
being obvious over Melo because Melo teaches or suggests the salient
features of independent claims 6 and 11, including "receiving a change to a
program" as recited in each of independent claims 6 and 11.
(2) The Examiner has not erred in rejection claims 9, 10, 14, and 15 as
being obvious over the combination of Melo and Foti because the
combination teaches or suggests (i) locating data structures having "a same
name," as recited in dependent claims 9 and 14; and/or (ii) detecting "a
similar data structure," as recited in dependent claims 10 and 15.
DECISION
The Examiner's rejections of claims 6-15 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)(l )(iv).
AFFIRMED
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