Ex Parte Adam et al

Patent Trials and Appeals Board

Mar 26, 2019

14462203 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/462,203 08/18/2014
98841 7590 03/26/2019
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807-0381
FIRST NAMED INVENTOR
Constantin M. Adam
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.
YOR920130764US 1 1984
EXAMINER
NGUY,CHID
ART UNIT PAPER NUMBER
2435
MAIL DATE DELIVERY MODE
03/26/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CONSTANTIN M. ADAM, SHANG Q. GUO,
JOHN J. ROFRANO, Y AOPING RUAN, FREDERICK Y. WU, and
SAIZENG
Appeal2017-010020
Application 14/462,203 1
Technology Center 2400
Before JAMES R. HUGHES, MICHAEL R. ZECHER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-21, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
Appeal2017-010020
Application 14/462,203
STATEMENT OF THE CASE
Introduction
Appellants' purported invention generally relates to risk validation
using a protected shell that validates commands and scripts to be executed.
Spec. 1 :23-29. Claim 1 is illustrative of the appealed subject matter and
reads as follows:
1. A method comprising:
invoking, on a computer system, a shell through
which a plurality of at least one of commands and scripts
can be executed;
validating individual ones of said plurality of at
least one of commands and scripts at least in part by
simulating execution of said individual ones of said
plurality of at least one of commands and scripts to
estimate effects of said execution on a configuration of
said computer system; and
executing, via said shell, given individual ones of
said plurality of at least one of commands and scripts, for
which said validation is successful.
The Examiner's Rejections2
Claims 1, 2, 11, 12, 16, 17, and 21 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Lee (US 2015/0128250 Al; May 7,
2015) and Gurumurthy (US 2015/0052402 Al; Feb. 19, 2015). Final Act.
3-8.
2 In the Final Office Action, the Examiner rejected claims 1-21 as indefinite
under 35 U.S.C. § 112(b). Final Act. 2-3. However, the Examiner
withdrew this indefiniteness rejection in the Answer. Ans. 3. Thus, this
indefiniteness rejection is not before us.
2
Appeal2017-010020
Application 14/462,203
Claims 3-10, 13-15, and 18-20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Lee, Gurumurthy, and Ylonen
(US 2015/0222604 Al; Aug. 6, 2015). Final Act. 8-12.
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellants' contentions and the evidence of record. Appellants persuade us
the Examiner fails to establish that the claims are unpatentable over the cited
references.
The Examiner finds the combination of Lee and Gurumurthy teaches
or suggests "validating individual ones of said plurality of at least one of
commands and scripts at least in part by simulating execution of said
individual ones of said plurality of at least one of commands and scripts to
estimate effects of said execution on a configuration of said computer
system," as recited in claim 1. Final Act. 4 (citing Lee ,r,r 1, 46, Figs. 4, 5;
Gurumurthy ,r 23); Ans. 13-14 (citing Gurumurthy ,r,r 23, 35, 36).
Appellants argue the Examiner erred because Gurumurthy does not
teach or suggest "simulating execution of said individual ones of said
plurality of at least one of commands and scripts to estimate effects of said
execution on a configuration of said computer system." See App. Br. 11-14;
Reply Br. 2--4. In particular, Appellants argue Gurumurthy teaches actual,
rather than simulated, execution of a software application being tested. App.
Br. 12; Reply Br. 4.
Appellants have persuaded us of Examiner error. The Examiner finds
Gurumurthy teaches testing scripts with different scenarios to validate the
script or identify issues in the system being tested. Ans. 13 ( citing
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Appeal2017-010020
Application 14/462,203
Gurmnurthy ,r 23). The Examiner concludes the claims do not define "a
simulation" as anything different than a "test" and Gurumurthy' s testing
comprises the claimed simulation. Ans. 13. We disagree. Claim 1 recites
"simulating execution" of commands and scripts "to estimate effects of said
execution" on the system. Thus, claim 1 requires the simulation estimate
effects of execution, not test the actual effects of execution. In contrast,
Gurumurthy's teachings relate to validating commands and scripts based on
the actual effects of execution of the commands and scripts. See
Gurumurthy ,r,r 18 ("The validators ensure the application is running
correctly and alert the operator when a failure is detected .... The validators
[may] be used to verify operation at a specific time, or they may run in the
background occasionally 'waking up' to test the application."), 4-6, 24, 25,
and 44--46.
Accordingly, we are constrained by the record to agree with
Appellants that the Examiner has not sufficiently established Lee and
Gurumurthy teach or suggest "validating individual ones of said plurality of
at least one of commands and scripts at least in part by simulating execution
of said individual ones of said plurality of at least one of commands and
scripts to estimate effects of said execution on a configuration of said
computer system." We, therefore, do not sustain the Examiner's
obviousness rejection of independent claim 1 as unpatentable over Lee and
Gurumurthy. 3 We also do not sustain the Examiner's obviousness rejection
of independent claims 11 and 16, which recite commensurate limitations,
and claims 2, 12, 17, and 21, dependent therefrom.
3 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants' other arguments.
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Appeal2017-010020
Application 14/462,203
The Examiner finds dependent claims 3-10, 13-15, and 18-20 are
unpatentable over Lee, Gurumurthy, and Ylonen. See Final Act. 8-12. The
Examiner does not find Ylonen teaches or suggests the disputed limitation
from the independent claims discussed above. Accordingly, we also do not
sustain the Examiner's obviousness rejection of claims 3-10, 13-15, and
18-20.
DECISION
We reverse the decision of the Examiner rejecting claims 1-21.
REVERSED
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