Ex Parte Burghard et al

Patent Trial and Appeal Board

Nov 21, 2016

13405314 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/405,314
140440 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
02/26/2012
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.
GB920100046US2 8518
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
Appeal2014-009281
Application 13/405,314
Technology Center 2100
Before THU A. DANG, ERIC S. FRAHM, and NORMAN H. BEAMER,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
1 Claims 6-15 are the subject of related Appeal No. 2014-009152
(Application Serial No. 13/246,513), and are drawn to the computer program
product (claims 6-10) and system (claims 11-15) which correspond,
respectively and substantially, to method claims 1-5 of the instant
application on appeal.
Appeal2014-009281
Application 13/405,314
Exemplary Claim
Exemplary and sole independent claim 1 under appeal, with emphasis
added to the key portions of the claim, reads as follows:
1. A method for developing software, the software
comprising a plurality of programs, the method comprising:
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, by a processor, 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.
Examiner's Rejections2
(1) The Examiner rejected claims 1-3 as being unpatentable under
35 U.S.C. § 103(a) over de Seabra e Melo (US 2006/0168558 Al; published
July 27, 2006) (hereinafter, "Melo"). Final Act. 7-11.
(2) The Examiner rejected claims 4 and 5 as being unpatentable under
35 U.S.C. § 103(a) over Melo and Foti (US 2007/0288892 Al; published
Dec. 13, 2007). Final Act. 11-13.
2 The Examiner has withdrawn the provisional obviousness-type double
patenting rejection of claims 1-5 (see Final Act. 2-7). See Ans. 10.
Therefore, this rejection is not before us on appeal and will not be further
discussed herein.
2
Appeal2014-009281
Application 13/405,314
Principal Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 2-25)
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 1-3 as being obvious over
Melo because Melo fails to teach or suggest the salient features of the
claims, including "receiving a change to a program" as recited in
independent claim 1?
(2) Did the Examiner err in rejecting dependent claims 4 and/or 5 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 claim 4; and/or (ii) detecting a "similar
data structure," as recited in dependent claim 5?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 7-13; Ans.
4--10) in light of Appellants' contentions in the Appeal Brief (App. Br. 2-
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' conclusions as to claims 1-
5.
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
Final Office Action from which this appeal is taken (Final Act. 7-13; see
also Ans. 4--10), and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 11-24).
3
Appeal2014-009281
Application 13/405,314
We highlight and amplify certain teachings and suggestions of the
references, as well as certain ones of Appellants' arguments for emphasis as
follows.
Claims 1-3
At the outset, we note that the majority of Appellants' arguments in
the briefs (see App. Br. 2-17; 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 1-3. The rejection of claims 1-3 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, 441 F.3d 977, 988 (Fed. Cir. 2006).
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 \~1hole \~1ould 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 In re Kahn, 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 (internal citation, quotation marks, and bracketed alteration
omitted).
4
Appeal2014-009281
Application 13/405,314
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." KSR, 550 U.S. at 418. 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 (quoting In re Kotzab, 217 F.2d 1365, 1370 (Fed. Cir.
2000)). A claimed invention may be obvious even when the prior art does
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
5
Appeal2014-009281
Application 13/405,314
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 claim 1 (see Final Act. 7-10; Ans.
4---6 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. 19), 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
(Final Act. 10; Ans. 6 and 17). Further, we agree with the Examiner as to
independent claim 1 that Melo (Fig. 1; i-fi-17, 12, 16, 19, 26, 28, 56, 91, 96,
145) teaches or suggests the salient features of independent claim 1,
including "receiving a change to a program" as recited in independent claim
1.
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
3 Notably, Appellants have not addressed or otherwise rebutted the
Examiner's reliance upon paragraph 7 of Melo.
6
Appeal2014-009281
Application 13/405,314
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. 4---6 and
12-18) that Melo (i-fi-f 16, 19, 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.
With regard to claim 2, 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 claim 3, we agree with the Examiner (Final Act. 13;
Ans. 20-21) that Melo (i-fi-f 27 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 1-3 under 35 U.S.C. § 103(a) over Melo alone.
Claim 4
We agree with the Examiner (Final Act. 11-12; Ans. 8-9 and 21-24)
that the combination of Melo and Foti teach or suggest locating data
structures having "a same name," as recited in dependent claim 4.
7
Appeal2014-009281
Application 13/405,314
Appellants' Specification provides a specific definition of the term
"data structure" that supports this understanding. Spec. 1: 15-1 7 ("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 claim 4.
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 claim
4, is not persuasive. In view of the foregoing, we sustain the obviousness
rejection of claim 4 under 35 U.S.C. § 103(a) over the combination of Melo
and Foti.
Claim 5
We agree with the Examiner (Final Act. 12-13; Ans. 9-10 and 21-24)
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 claim 5.
In light of Appellants' own description and/or definition of "data
structure" (Spec. 1: 15-17, "[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
8
Appeal2014-009281
Application 13/405,314
combination of Melo and Foti discloses detecting a "similar data structure,"
as recited in dependent claim 5. 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 claim 5, are not
persuasive. In view of the foregoing, we sustain the obviousness rejection of
claims 5 under 35 U.S.C. § 103(a) over the combination of Melo and Foti.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-3 as being
obvious over Melo because Melo teaches or suggests the salient features of
the claims, including "receiving a change to a program" as recited in
independent claim 1.
(2) The Examiner has not erred in rejection claims 4 and 5 as being
obvious over the combination of Melo and Foti because the because the
combination teaches or suggests (i) locating data structures having "a same
name," as recited in dependent claims 4; and/or (ii) detecting a "similar data
structure," as recited in dependent claim 5.
DECISION
The Examiner's rejections of claims 1-5 under 35 U.S.C. § 103(a) are
affirmed.
9
Appeal2014-009281
Application 13/405,314
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
10