Ex Parte Droshev et al

Patent Trial and Appeal BoardApr 26, 2016

11193167 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111193, 167 0712912005 50400 7590 04/28/2016 SCHWEGMAN LUNDBERG & WOESSNER/SAP P.O. BOX 2938 MINNEAPOLIS, MN 55402 Mladen I. Droshev 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. 2058.408US 1 8849 EXAMINER LOUIE, JUE WANG ART UNIT PAPER NUMBER 2193 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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): uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MLADEN I. DROSHEV, IVAN T. ATANASSOV, NIKOLAI W. NEICHEV, GEORGI N. STANEV Appeal 2014-004576 Application 11/193,167 Technology Center 2100 Before DEBRA K. STEPHENS, KARA L. SZPONDOWSKI, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 41, 43--45, 48, 50-52, 55, 57-59, and 61---68, which constitute all claims pending in the application. (App. Br. 13-18.) We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. INVENTION Appellants' disclosed invention relates to a system and method for improving the efficiency of remote method invocations ("RMI") within a Appeal2014-004576 Application 11/193,167 multi-tiered enterprise network and for generating and configuring dynamic proxies. (Spec. i-f 1.) Claims 41 and 61, which are representative, reads as follows with bracketed annotations: 41. A method comprising: identifying whether a method call made by a first object and directed to a second object is a local method call or a remote method call; detecting whether a stub capable of handling the method call exists; and [i] responsive to an identification that the method call is the local method call and further responsive to a detection that the stub does not exist: binding the first object directly to the second object; and making the method call directly to the second object. 61. The method of claim 41, further comprising: [ii] responsive to a determination that the method call is the local method call and further responsive to a detection that the stub exists, using a local invocation handler of the stub to manage the local method call. REJECTION Claims 41, 43--45, 48, 50-52, 55, 57-59, and 61-68 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. 1 (Ans. 2.) 1 In the Answer, the Examiner withdrew the rejections made under 35 U.S.C. Â§ 103(a). (Ans. 4--5.) 2 Appeal2014-004576 Application 11/193,167 ISSUES ( 1) Did the Examiner err in finding that imitation [ i] in claim 41 lacks written description support? (2) Did the Examiner err in finding that limitation [ii] in claim 61 lacks written description support? ANALYSIS Limitation [i] in Claim 41 Appellants argue that the Examiner erred in finding that the Specification-as-filed does not describe limitation [i] of claim 41. (App. Br. 13.) Limitation [i] recites a binding action (i.e., binding the first object directly to the second object) and a method-call action (i.e., making the method call directly to the second object). (See claim 41.) The limitation further recites that the binding and method-call actions are responsive to identifying a local method call (an identification that the method call is the local method call) and detecting that the recited stub does not exist. (Id.) Appellants added limitation [i] to their claims during prosecution. (Final Act. 2; Ans. 2; see also original claims.) Central to the issue of written description support for limitation [i] is Figure 8 in the Specification, reproduced below: 3 Appeal2014-004576 Application 11/193,167 ~ 0â‚¬tec! Method Call ,1 801 Fig. B -----------. Skip Sutl-.<;/Slrnletol'\5 & Dir.ictly Invoke Local MG!hod 8-03 Figure 8 illustrates a method for generating dynamic proxies and/or skeletons. (Spec. i123.) Appellants argue that the method of Figure 8 provides some of the written description support for limitation [i]. (App. Br. 13-14; Reply Br. 5.) Specifically, Appellants argue the path from steps 801 to 803 is "responsive to a determination that the method call is the local method call," as recited in claim 41. (App. Br. 13-14; Reply Br. 5.) Appellants further argue that step 4 Appeal2014-004576 Application 11/193,167 803 performs the recited binding and making-the-call actions. (App. Br. 13- 14; Reply Br. 5.) Appellants, however, do not argue that steps 801 through 803 by themselves disclose performing the actions of step 803 responsive to a detection that a stub does not exist. As the Examiner notes, steps 804 and 805 of Figure 8, respectively, disclose detecting whether a stub exists and acting if it does not. (Ans. 6.) Steps 804 and 805, however, are not performed for local calls and, thus, the action in step 805 is not "responsive to a determination that the method call is the local method call." (Id.) Appellants argue another portion of the Specification in combination with steps 801 to 803 teaches limitation [i] as a whole. (App. Br. 4, 13; Reply Br. 5.) Specifically, Appellants contend that paragraph 39 describes a situation where no stub is generated. (App. Br. 13; Reply Br. 5.) Appellants further contend that paragraph 39 is in the same section of the Specification as the paragraph describing steps 801 through 803. (App. Br. 13; Reply Br. 5.) Appellants additionally argue, combined, paragraph 39 and steps 801 through 803 describe limitation [i]. (App. Br. 4, 13-14; Reply Br. 5.) We are not persuaded. Even if we accept Appellants' combination of the pertinent disclosures, the fact that the actions in step 803 would occur when a stub does not exist does not make the actions in step 803 responsive to a detection that the stub does not exist. (Ans. 6.) As the Examiner finds, for a local call, step 803 will occur regardless of whether a stub exists. (Ans. 6.) In the Reply, Appellants argue paragraph 41 demonstrates the existence of a stub can matter even for local method calls. (Reply Br. 4.) The issue here, however, is not whether the existence of a stub ever matters 5 Appeal2014-004576 Application 11/193,167 for a local method call, but rather whether the existence of a stub is considered in step 803 or some other step that performs the binding and making-the-call actions recited in limitation [i]. Accordingly, we sustain the Examiner's rejection of claim 41 and adopt the Examiner's findings in the Final Action and the Answer on the issue of written description for limitation [i]. Claims 48 and 55 each recite limitation [i] and are not separately argued from claim 41. (App. Br. 13-18.) Accordingly, we sustain the rejection of claims 48 and 55 for the reasons set forth above. Claims 43--45, 50-52, 57-59, and 61---68 each incorporate through dependency the limitations of one of claims 41, 48, and 55 and, with respect to limitation [i], are not argued separately from claim 41. (App. Br. 13-18.) Therefore, we sustain the rejection of claims 43--45, 50-52, 57-59, and 61- 68 for the reasons set forth above. Limitation [ii] in Claim 61 Appellants argue the Examiner erred in finding the as-filed Specification does not support limitation [ii] in claim 61. Appellants argue that paragraph 41 of the Specification discloses "using a local invocation handler of the stub to manage the local method call" "responsive to a determination that the method call is the local method call," as recited in claim 61. (App. Br. 16; Reply Br. 9-10.) For limitation [ii], what is missing from paragraph 41, as interpreted by Appellants, is for the local invocation handler to be "responsive to a detection that the stub exists." (See claim 61.) Appellants argue paragraph 39 of the Specification discloses generating a dynamic proxy to handle remote method invocations upon 6 Appeal2014-004576 Application 11/193,167 detecting that no stub exists. (App. Br. 16; Reply Br. 9.) Appellants further argue that because the dynamic proxy, which, in one embodiment, includes a local invocation handler, is generated based on a detection that no stub exists, one skilled in the art would have understood the use of the stub to manage the local method call must also be based on detecting that the stub exists. (App. Br. 16-17; Reply Br. 9.) We are not persuaded one skilled in the art would have understood the use of the stub to manage the local method call must be based on a detecting that the stub exists because Appellants do not present any persuasive evidence or arguments supporting that proposition. (App. Br. 16-17; Reply Br. 9.) Therefore, we are not persuaded the Examiner erred in finding limitation [ii] lacks written description support. Accordingly, we also sustain the Examiner's rejection of claim 61 for a lack of written description support for limitation [ii] and of claims 64 and 67, which recite the same limitation and are not separately argued. (App. Br. 16-18.) DECISION The decision of the Examiner to reject claims 41, 43--45, 48, 50-52, 55, 57-59, and 61--68 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 7