Ex Parte Alexander III et al

Board of Patent Appeals and Interferences

Jun 30, 2004

09306190 (B.P.A.I. Jun. 30, 2004)

The opinion in support of the decision being entered today was not written for publication and is
not binding precedent of the Board.

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte WILLIAM PRESTEN ALEXANDER III
and
WEIMING GU
_______________

Appeal No. 2003-0954
Application No. 09/306,190
_______________

ON BRIEF
_______________

Before JERRY SMITH, RUGGIERO and MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the final rejection of claims 1-3, 7-14, and 18-24. The
Examiner has indicated claims 4-6 and 15-17 as allowable. (Final rejection, paper number 5,
page 7)
Invention

Appellant’s invention relates to a process and system for dynamically compiling a
program. (Appellants’ specification, page 1, lines 15-17) Particularly, if during execution it is
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determined that the interpretation of a method meets certain criteria that indicate a hot spot, then
the interpretation is halted. A new method is then constructed, compiled, and invoked in such a
manner that the newly constructed method recreates the execution state of the halted method.
(specification, page 5) The compiled method executes at a faster speed than the interpreted
method. (specification, page 38, lines 25-27)
Claim 1 is representative of the claimed invention and is reproduced as follows:

1. A process for executing a method, the process comprising the computer-implemented
steps of:

during execution of an interpreted method, determining to compile the interpreted
method;

constructing a second method;

compiling the second method; and

invoking the second method so that an execution state of the interpreted method is
recreated.

References
The reference relied on by the Examiner is as follows:
White Paper, “The Java Hotspot TM Performance Engine Architecture”, Sun Microsystems, Inc.,
April 1999. (Hereinafter referred to as the White Paper)

Rejections At Issue

Claims 1-3, 7-9, 11-14, 18-20, and 22-24 stand rejected under 35 U.S.C. § 102 as being
anticipated by the White Paper.
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Claims 10 and 21 stand rejected under 35 U.S.C. § 103 as being obvious over the White
Paper.
Throughout our opinion, we make references to the Appellants’ briefs, and to the
Examiner’s Answer for the respective details thereof.1

OPINION

With full consideration being given to the subject matter on appeal, the Examiner’s
rejections and the arguments of the Appellants and the Examiner, for the reasons stated infra,
we reverse the Examiner’s rejection of claims 1-3, 7-9, 11-14, 18-20, and 22-24 under
35 U.S.C. §102 and claims 10 and 21 under 35 U.S.C. §103.

I. Whether the Rejection of Claims 1-3, 7-9, 11-14, 18-20, and 22-24 Under
35 U.S.C. §102 is proper?

It is our view, after consideration of the record before us, that the disclosure of the White
Paper does not fully meet the invention as recited in claims 1-3, 7-9, 11-14, 18-20, and 22-24.
Accordingly, we reverse.
It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

1 Appellants filed an appeal brief on March 1, 2002. Appellants filed a reply brief on July 22,
2002. The Examiner mailed out an office communication on May 20, 2002.
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With respect to independent claim 1, Appellants’ argue, “the White Paper does not
provide any teaching of determining, during execution of an interpreted method, to compile the
interpreted method.” (brief, page 15, lines 27-29) The Examiner responds, “claim 1 […] does
not claim whether it runs completely the first method or not.” (answer, page 14, lines 3-4)
Appellants reply, “claims 1 and 2 clearly state that the determination to compile is made during
execution” and “do state that the method is not run completely.” (reply brief, page 8, lines 33-35)
We find Appellants’ argument persuasive.
Our reviewing court states in In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) that “claims must be interpreted as broadly as their terms reasonably allow.”
Our reviewing court further states, “[t]he terms used in the claims bear a ‘heavy presumption’
that they mean what they say and have the ordinary meaning that would be attributed to those
words by persons skilled in the relevant art.” Texas Digital Sys. Inc v. Telegenix Inc., 308 F.3d
1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir. 2002), cert. denied, 538 U.S. 1058 (2003).
Upon our review of Appellants’ specification, we fail to find any definition of the term
“during” that is different from the ordinary meaning. We find the ordinary meaning of the term
“during” is best found in the dictionary. We note that the definition most suitable for “during” is
“at some time in”.2 We find that the claim language precludes reading on a determination that
occurs “after” the execution of the interpreted method such as in the prior art system of
Appellants’ background and in the Java Hotspot system of the White Paper. As pointed out by

2 Webster’s II New Riverside University Dictionary, 1988, page 411. Copy provided to
Appellants.
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Appellants, “[t]here is no ability in the mechanism described in the White Paper to determine to
compile an interpreted method during execution of the interpreted method.” (reply brief, page 7,
lines 21-23) Therefore, we will not sustain the Examiner’s rejection under 35 U.S.C. § 102.
With respect to independent claims 2, 3, 12, 13, 14, 23, and 24, these claims share the
“during execution” limitation of claim 1 discussed above and we will not sustain the Examiner’s
rejection under 35 U.S.C. § 102 for the reason discussed above with respect to claim 1.

II. Whether the Rejection of Claims 10 and 21 Under 35 U.S.C. §103 is proper?

It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims 10 and 21. Accordingly, we reverse.
With respect to independent claims 10 and 21, these claims share the “during execution”
limitation of claim 1 discussed above and we will not sustain the Examiner’s single reference
rejection under 35 U.S.C. § 103 for the reason discussed above with respect to claim 1.

Other Issues
We note that at the time of filing there was a misspelling in the name of one of the
applicants. That misspelling is still present in the official record. His signature in the file shows
appellant Alexander, III’s middle name is “Preston” not “Presten”. Also, other records at the
USPTO show the spelling to be “Preston.” Appellants are invited to make the appropriate
correction to the inventorship.
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Conclusion
In view of the foregoing discussion, we have not sustained the rejection under
35 U.S.C. §102 of claims 1-3, 7-9, 11-14, 18-20, and 22-24, and we have not sustained the
rejection under 35 U.S.C. §103 of claims 10 and 21.
REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

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