Ex Parte Jamison

Patent Trial and Appeal Board

Jul 11, 2016

13455309 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/455,309 04/25/2012 WILFRED Cadelina JAMISON
73109 7590 07113/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
RSW920030277US3
8152-0183
CONFIRMATION NO.
3370
EXAMINER
VU, TUAN A
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
07/13/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILFRED CADELINA JAMISON
Appeal2014-008926
Application 13/455,309
Technology Center 2100
Before LINZY T. McCARTNEY, MONICA S. ULLAGADDI, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 24--43, which constitute all of the claims pending in
this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is IBM Corporation.
App. Br. 1.
2 Claims 1-23 have been canceled. App. Br. 2.
Appeal2014-008926
Application 13/455,309
fNVENTION
Appellant's invention relates to determining a benefit of reducing the
memory footprint of a Java-based computer application. Abstract. Claim 24
is illustrative and reads as follows:
24. A method, within a computer hardware system having a
heap, of improving performance in a Java-based computer
program, compnsmg:
state;
executing the computer program within a virtual machine;
identifying when the computer program enters a steady
only after the computer program being within the steady
state, obtaining information regarding garbage collection
associated with the computer program; and
predicting, based upon the information, changes in
performance of the computer program that will result from
modifying the computer program.
REJECTIONS
Claims 37--43 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 24--28, 30-35, 37--41, and 43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sumit Chawla, Fine-tuning
Java Garbage Collection Performance, Jan. 2003, 1-10 ("Chawla"),
Findeisen (US 2004/0181562 Al; published Sept. 16, 2004), Garthwaite
(2004/0111448 Al; published June 10, 2004), and Lewis et al. (US
6,493,730 Bl; issued Dec. 10, 2002) ("Lewis").
Claims 29, 36, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Chawla, Findeisen, Garthwaite, Lewis,
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Application 13/455,309
and SunMicrosystems, "Tuning Garbage Collection with the 5. 0 Java TM
Virtual Machine," Copyright 2003, pp. 1-15 ("SunMicSys").
Claims 26, 27, 33, 34, 39, and 40 are provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as
unpatentable over claims 3, 4, 10, 11, 16, and 17 of U.S. Patent No.
8,245,213.
Claims 26, 27, 33, 34, 39, and 40 are provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as
unpatentable over the combination of claim 1 of U.S. Patent No. 7,434,214,
Findeisen, and Garthwaite.
ANALYSIS
Rejection of Claims 37-43 under 35 US.C. § 101
Claims 37--43 recite a "computer usable storage medium." App. Br.
28-31. The Examiner rejected those claims as directed to non-patentable
subject matter because the recited term "medium" does not preclude a
transitory container of signals. Final Act. 2. Appellant contends the
Examiner's interpretation of the recited "storage medium" is "per se ...
unreasonable." App. Br. 11.
We agree with the Examiner. The Board held in a precedential
decision that a recited machine-readable storage medium, having a program
stored thereon, and absent an express limitation of scope to non-transitory
storage media, is ineligible under § 101 because it encompasses transitory
media. Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013)
(precedential). Appellant's Specification, particularly at pages 24 and 25,
does not disclaim propagation media or transitory propagating signals from
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Application 13/455,309
the meaning of "computer readable storage medium." Spec. 24--25. The
Specification describes "signal bearing media" using transmission forms,
such as, for example, radio frequency and light wave transmissions, which
we find encompasses transitory media, which is not patent eligible. See id.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
independent claim 37 and claims 38--43, which depend from claim 37.
Rejection of Claims 24-43 under 35 US.C. § 103(a)
With regard to the obviousness rejection of claim 24, Appellant
contends neither the "ready state" nor the "stable heap size" taught in
Chawla teaches or suggests the "steady state" recited in claim 24. App. Br.
12-16. Appellant further argues that the cited portions of Chawla,
Findeisen, Garthwaite, and Lewis do not teach or suggest the steps of "only
after the computer program being within the steady state, obtaining
information regarding garbage collection associated with the computer
program" and "predicting, based upon the information, changes in
performance of the computer program that will result from modifying the
computer program," recited in claim 24. Id. at 11-22.
The Examiner interprets "steady state" in a running software program
to mean "a SW state that cannot be deemed unstable, or still subjected to
changes or ongoing sub-processes having effect on a usable part of
memory." Ans. 17. Claims, however, must be given their broadest
reasonable interpretation "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We find the Examiner's
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Application 13/455,309
interpretation overly broad in view of the explicit definition of "steady state"
set forth in Appellant's Specification:
A steady state is defined as occurring when:
- the standard deviation from GCINTavg<5%
- the standard deviation from GCavg<5%
- the standard deviation from GARBAGEavg<5%
- the standard deviation from LIVEMEMavg<5%
- the HeapSize is the same all throughout.
Spec. 20, lines 6-12.
In view of the definition of "steady state" in Appellant's
Specification, the Examiner's findings with regard to Chawla, Findeisen,
Garthwaite, and Lewis do not sufficiently show that the cited portions of
each reference teach or suggest a "steady state" as Appellant defines the
term.
For these reasons, we do not sustain the 35 U.S.C. § 103(a) rejection
of representative claim 24, or of independent claims 31 and 3 7, which
contain similar limitations. We also do not sustain the 35 U.S.C. § 103(a)
rejections of claims 25-30, 32-36, and 38--43, which depend from claims
24, 31, and 37, respectively. See App. Br. 11, 22.
Provisional Double Patenting Rejections of Claims 26, 27, 33, 34, 39-40
With respect to the rejections based upon the judicially created
doctrine of obviousness-type double patenting, Appellant has not contested
or identified an error in the Examiner's rejections. See App. Br. 3 n.1.
Thus, we treat any argument with respect to those rejections as waived and
affirm the rejections. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008).
Accordingly, we summarily sustain the Examiner's nonstatutory double
patenting rejections of claims 26, 27, 33, 34, and 39--40.
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Application 13/455,309
DECISION
We affirm the Examiner's decision rejecting claims 37--43 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 24--43 under
35 U.S.C. § 103(a).
We affirm the Examiner's decision provisionally rejecting claims 26,
27, 33, 34, 39, and 40 under the doctrine of obviousness-type double
patenting.
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-IN-PART
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