Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Mar 31, 2020

15393182 - (D) (P.T.A.B. Mar. 31, 2020)

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.
15/393,182 12/28/2016 Sameer Tejani 337074-US-CNT 8594
69316 7590 03/31/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
GOORAY, MARK A
ART UNIT PAPER NUMBER
2199
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAMEER TEJANI, ADINA M. TRUFINESCU,
YASSER SHAABAN, ABOLADE GBADEGESIN, ASHISH BABBAR,
MEI-CHIN TSAI, SUBRAMANIAN RAMASWAMY, and
CASIMIR LAKSHAN FERNANDO
____________

Appeal 2018-007982
Application 15/393,182
Technology Center 2100
____________

Before JAMES R. HUGHES, CARL L. SILVERMAN, and
SCOTT E. BAIN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was held on
March 16, 2019.
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to “appli-
cant” as defined in 37 C.F.R. § 1.42(a) (2017). Appellant identifies
Microsoft Corporation as the real party in interest. Appeal Br. 4.
Appeal 2018-007982
Application 15/393,182
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STATEMENT OF THE CASE
The invention relates to tools and techniques for installing, executing,
and/or updating managed applications through generation of native code
from code in a machine dependent intermediate language code (MDIL).
Abstract; Spec. ¶ 2, Figs. 1–3. Claim 1, reproduced below, is exemplary of
the subject matter on appeal (emphasis added):
1. A method comprising:
receiving, at a computing device, machine dependent
intermediate language code (MDIL code) generated by an
online provider for an application;
at the computing device, installing the application on the
computing device by generating a native image for the
application by binding the MDIL code, the generating the
native image comprising:
binding a portion of the MDIL code with one or more
libraries on the computing device; and
storing the native image on the computing device for use
when loading the application for execution.
Appeal Br. 16 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Steinmetz et al. US 5,812,854 Sept. 22, 1998
Trowbridge et al. US 6,484,313 Bl Nov. 19, 2002
Hogg et al. US 2005/0102649 A1 May 12, 2005
Brumme et al. US 2005/0193369 A1 Sept. 1, 2005
Richardson et al. US 2009/0064196 Al Mar. 5, 2009
Gassoway US 7,900,199 B2 Mar. 1, 2011
Bandakka et al. US 2013/0125107 A1 May 16, 2013
Sunghyun Hong et al., Java Client Ahead-of-Time Compiler for
Embedded Systems, SCH OF ELEC. ENG AND COMP. SCI (2007) (hereinafter
“Hong”)

THE REJECTIONS
Claims 1, 5, 6, 8–11, and 14–16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Trowbridge et al. (“Trowbridge”), in view of
Richardson et al. (“Richardson”) and Steinmetz et al. (“Steinmetz”). Final
Act. 2–8.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trowbridge, Richardson, Steinmetz, and Gassoway et al.
Final Act. 8–9.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being un-patentable
over Trowbridge, Richardson, Steinmetz, Gassoway, and Bandakka et al.
(“Bandakka”). Final Act. 10–11.
Claims 7 and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Trowbridge, Richardson, Steinmetz, and Brumme et
al. (“Brumme”). Final Act. 11–13.
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Claims 12 and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Trowbridge, Richardson, Steinmetz, and Hong.
Final Act. 13–14.
Claims 18–20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hogg et al. (“Hogg”), Trowbridge, Brumme, and
Steinmetz. Final Act. 15–18.
ANALYSIS
The Examiner finds Trowbridge teaches the limitations of claim 1,
except the limitation that the intermediate language is machine
dependent intermediate language and the limitation that the binding includes
libraries on the computing device. Final Act. 2–3 (citing Trowbridge, 2:14–
16, 10:58–63, 7:39–65, 10:64–11:62). The Examiner finds Steinmetz
teaches a system that can convert code to machine independent code that is
used to generate machine code. Id. at 3 (citing Steinmetz, Fig. 3). The
Examiner relies on Richardson for the binding limitation and this is not
disputed. Id. at 3–4. The Examiner determines it would be obvious to one
of ordinary skill in the art to modify Trowbridge with Steinmetz because
both teach using intermediate code to generate machine code such that it
would be obvious for Trowbridge to receive a machine intermediate code as
taught by Steinmetz. Id. at 3 (citing Trowbridge, 5:52–62, 2:14–16, 10:58–
63).
Appellant argues the Examiner errs in finding that a person of
ordinary skill in the art would modify the machine independent code of
Trowbridge with machine dependent code of Steinmetz. Appeal Br. 9–15.
Appellant refers to Trowbridge as solely directed to machine independent
code. Id. at 11 (citing Trowbridge, 2:42–47, 2:57–61, 1:26–27).
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Appellant argues Trowbridge teaches that its intermediate language code is
not the type of code described in Steinmetz: “[t]he terminology intermediate
language as used herein does not generally refer to data communicated from
the front end of a compiler . . . to the back end of the compiler (emphasis
omitted),” and this is the Steinmetz structure. Id. (citing Trowbridge, 1:28–
31; Steinmetz, Fig. 3). Appellant argues modifying Trowbridge to use the
teaching of Steinmetz would render Trowbridge inoperable for its intended
purpose of machine independent code and platform independence. Id. at 12–
13. Appellant argues Trowbridge teaches against the Steinmetz type of code
that employs a front-to-back end compiler and, therefore, Trowbridge and
Steinmetz are incompatible and their teaching would have discouraged the
Examiner’s suggested combination. Id. at 13. Appellant argues neither
Steinmetz nor Trowbridge teaches “receiving machine dependent
intermediate language code generate by an on line provider.” Id. at 14.
Appellant argues that the Examiner relies on conclusory statements and
provides no reason a person of ordinary skill in the art would modify
Trowbridge’s machine independent intermediate language to receive
machine dependent intermediate language. Id. at 14–15.
In the Answer, the Examiner finds that Trowbridge does not disclose
anything to criticize, discredit, or otherwise discourage the use of machine
dependent intermediate language, and Trowbridge is not limited to just java
and platform independent intermediate code. Ans. 4 (citing Trowbridge,
5:57–62, 1:20–27). The Examiner finds Trowbridge’s use of the phrase
“does not generally refer” does not criticize, discourage the use of a front
end compiler and it would be reasonable for the Examiner to interpret the
Trowbridge Figure 3 compiler 204 as the front end and the mechanism that
Appeal 2018-007982
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generate the native code as the back end. Id. at 5 (citing Trowbridge, 1:28–
31, 6:60–7:12, 7:22–27, Fig.3). The Examiner finds employing machine
dependent code in Trowbridge would not render Trowbridge inoperable for
its intended purpose because Trowbridge’s machine independent
intermediate language and platform independence is just a goal. Id. at 6.
Regarding the combination of Trowbridge and Steinmetz, the
Examiner determines
Throwbidge [sic] teaches the intermediate code is
compiled to native code, which is then saved, and which can be
run (column 7, lines 60-65). Steinmetz teaches translating the
intermediate code into machine code (native code). This results
in code with fast and efficient performance (column 10, lines 27-
31 and figure 3). Since both teach the translation/compiling of
independent code to machine/native code for execution and since
Steinmetz teaches as stated above that intermediate code can be
either machine independent or machine dependent, it would have
been obvious for this also to be the case for Throwbridge. As
stated above Throwbridge does not teach away from the use of
machine dependent intermediate code. This seems to be no more
than a design choice and would be obvious to try. One can use
machine independent intermediate code or machine dependent
code. Machine dependent intermediate code which has a very
close relationship with particular hardware platform's machine
code. Thus, there exists a near one-to-one relationship with the
instructions in the machine-dependent intermediate code and the
instructions that exits in machine code. This will allow the
system to have independent code that closely represents the
machine code that will be generated. Efficiencies of well-
designed user-defined code will not be lost with the use [of]
machine dependent intermediate code.
Id. at 7.
We are persuaded by Appellant’s arguments that one of ordinary skill
in the art would not combine Trowbridge and Steinmetz as suggested by the
Examiner to result in the claimed invention which is directed to machine
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dependent intermediate language (MDIL). Trowbridge is directed to MIIL
(machine independent intermediate language) and Steinmetz is directed to
MDIL, and the differences between MIIL and MDIL are significant. Here,
in addition to the general differences between MIIL and MDIL, Steinmetz
generates the MDIL within a compiler while Trowbridge generates its MIIL
outside a compiler. Referring to Figure 3 of Steinmetz, the compiler
processes code from a compiler front end to a compiler back end to generate
the MDIL. See also Steinmetz, 6:3–6. In contrast, Trowbridge’s compiler,
as shown in Figure 3, generates the intermediate code and a separate
mechanism generates the MIIL (native code). See Trowbridge, 6:60–7.1–12.
Additionally, Trowbridge expressly teaches that the term “intermediate
language as used herein does not generally refer to the data communicated
from the front end of a compiler . . . to the back end of a compiler,” and this
is the structure described by Steinmetz. See Trowbridge 1:28–31;
Steinmetz, Fig. 3.
On the record before us, the Examiner presents insufficient evidence
that one of ordinary skill in the art would combine Trowbridge and
Steinmetz as suggested by the Examiner. We note
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Keller, 642 F.2d 413, 425 (CCPA 1981).
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Here, the Examiner provides insufficient evidence as required for
obviousness. As stated by the Supreme Court, the Examiner’s obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness. . . . [H]owever,
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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 15 and 18 as these claims are argued together with claim
1. We also do not sustain the rejection of dependent claims 2–14, 16, 17, 19,
and 20. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious . . . .”).
Because our decision is dispositive of the rejections, we do not
address additional arguments raised by Appellant.

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DECISION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6,
8–11,
14–16
103(a) Trowbridge,
Richardson,
Steinmetz
1, 5, 6,
8–11,
14–16
2, 3 103(a) Trowbridge,
Richardson,
Steinmetz, Gassoway
2, 3
4 103(a) Trowbridge,
Richardson,
Steinmetz, Gassoway,
Bandakka
4
12,13 103(a) Trowbridge,
Richardson,
Steinmetz, Hong
12, 13
18–20 103(a) Hogg, Trowbridge,
Brumme, Steinmetz
18–20
Overall
Outcome
1–20

REVERSED