Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Feb 11, 2022

2020005961 (P.T.A.B. Feb. 11, 2022)

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. 15/449,876 03/03/2017 Gabriel Alexandru Ghiondea 401363-US-NP 7392 69316 7590 02/11/2022 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER OKEKE, IZUNNA ART UNIT PAPER NUMBER 2497 NOTIFICATION DATE DELIVERY MODE 02/11/2022 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): chriochs@microsoft.com ljohnson@microsoft.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GABRIEL ALEXANDRU GHIONDEA, MORGAN ASHER BROWN, JEREMY SCOTT BARTON, and BARRY DORRANS ____________ Appeal 2020-005961 Application 15/449,876 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, ERIC B. CHEN, and MINN CHUNG, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 6, 7, 13, 14, and 20. Claims 3-5, 8-12, and 15-19 are objected to as being dependent upon a rejected base claim, but is otherwise indicated as being allowable. See Claims App.; Final Act. 4-8. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Microsoft Technology Licensing, LLC. Appeal Br. 1. Appeal 2020-005961 Application 15/449,876 2 The present invention relates generally to determining whether to compile the source code based on whether the first checksum and the second checksum are the same. See Spec. Abstr. Claim 13, reproduced below with disputed limitations emphasized, is representative: 13. A method of providing security for code comprising: generating source code by a code generator; generating, by the code generator, a first checksum of a file that includes the source code; providing, by the code generator, the first checksum to a compiler via a first secure channel; generating, by the compiler, a second checksum of the file that includes the source code; and selectively compiling the source code, by the compiler, based at least in part on whether the first checksum and the second checksum are same, the first checksum and the second checksum being the same indicating that the source code is to be compiled, the first checksum and the second checksum being different indicating that the source code is not to be compiled. REFERENCES The references relied upon by the Examiner are: Name Reference Date Sathyanathan US 2015/0378697 A1 Dec. 31, 2015 Karuppusamy US 2017/0193004 A1 July 6, 2017 REJECTION Claims 1, 2, 6, 7, 13, 14, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Karuppusamy and Sathyanathan. Final Act. 4-8. We review the appealed rejections for error based upon the issues Appeal 2020-005961 Application 15/449,876 3 identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Issue: Did the Examiner err in finding that Karuppusamy and Sathyanathan collectively teach or suggest “selectively compiling the source code . . . based at least in part on whether the first checksum and the second checksum are [the] same,” as set forth in each of the independent claims 1, 13, and 20? We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to the Appellant’s arguments. We concur with Appellant’s conclusion that the Examiner erred in finding that the combination of the references teaches or suggests “selectively compiling the source code . . . based at least in part on whether the first checksum and the second checksum are [the] same.” Although we agree with the Examiner that Karuppusamy teaches determining whether the first and second checksums are the same (see Final Act. 5-6; see also Ans. 4; see also Karuppusamy ¶ 34 (“a determination is made whether the checksum of the replicated file matches with the checksum of the file . . . if the checksum of the replicated file matches with the checksum of the file, a determination may be made”)), we agree with Appellant the neither Karuppusamy nor Sathyanathan teach compiling the source code based in part on the checksums being the same. The Examiner admits that Karuppusamy does not explicitly disclose a compiler and compiling the source code based on a determination, i.e., based at least in part on whether the checksums are the same. Final Act. 6. We Appeal 2020-005961 Application 15/449,876 4 determine, however, the Examiner errs in the Examiner’s interpretation of Sathyanathan. As for Sathyanathan, Appellant contends that while Sathyanathan teaches compiling the source code, Sathyanathan “teaches away from the above-recited features . . . [because Sathyanathan] explains that functions described therein are to be compiled if the corresponding checksums are different” (Appeal Br. 10), not the same. We agree with Appellant. For example, Sathyanathan discloses incremental compilation, whereby only the modified portion of the source code is compiled, instead of compiling the modified source code in its entirety. See Sathyanathan ¶ 4. Sathyanathan further discloses “[i]f there is no difference in the checksums, the function may be treated as though it is unaffected. If there is a difference in the checksums, then we continue compiling the function.” Sathyanathan ¶ 116. In other words, Sathyanathan partially compiles the source code when function changes (modifications, deletions, additions) are determined, and these function changes coincide with the checksums being different. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001). Here, we find that a person of ordinary skill, upon reading Sathyanathan, would be led to compile the source code when the checksums are different. This is a direction divergent from the path taken by Appellant. As such, we agree with Appellant that Sathyanathan teaches away from the claimed invention. Thus, we disagree with the Examiner’s finding that Sathyanathan combined with Karuppusamy teaches compiling the source code based on Appeal 2020-005961 Application 15/449,876 5 the checksums being the same, as recited in each of the independent claims. Since we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. Accordingly, we will not sustain the Examiner’s obviousness rejection of claims 1, 2, 6, 7, 13, 14, and 20. CONCLUSION The Examiner’s rejection of claims 1, 2, 6, 7, 13, 14, and 20 as being unpatentable under 35 U.S.C. § 103 is reversed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6, 7, 13, 14, 20 103 Karuppusamy, Sathyanathan 1, 2, 6, 7, 13, 14, 20 REVERSED