Ex Parte Darlet

Board of Patent Appeals and Interferences

Aug 8, 2012

09754785 (B.P.A.I. Aug. 8, 2012)

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.
09/754,785 01/04/2001 Pierre-Alain Darlet 40101/06901 3238
30636 7590 08/09/2012
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
RUTTEN, JAMES D
ART UNIT PAPER NUMBER
2197
MAIL DATE DELIVERY MODE
08/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PIERRE-ALAIN DARLET
____________________

Appeal 2010-004717
Application 09/754,785
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004717
Application 09/754,785

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-15 and 40-60. Claims 16-39 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed invention is directed to a method and system for
“receiving a software module, the software module including references,
where] at least some of the references are backward references.” (Spec. 3.)
The method includes “reordering the software module to remove at least
some of the backward references.” (Id.).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer readable storage medium including a set of
instructions executable by a processor, the set of instructions
operable to:
receive a software module, the software module including
references to locations within the software module, at least some of
the references being backward references; and
reorder components of the software module into a
predetermined order based on a type of the components to remove at
least some of the backward references,

wherein the components include at least one of a header, a
section, and a table,

wherein the reordered software module includes the at least
some of the backward references, and

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wherein the at least some of the backward references in the
reordered software module are stored in a memory to avoid a
nonsequential reading of the reordered software module.
(disputed limitations emphasized).

PRIOR DECISION
Appeal No. 2007-0224 (Application No. 09/754,785) mailed May 23,
2007. (Examiner Affirmed (§§ 102, 103), New Grounds of Rejection under
§ 101 set forth by Board Panel under the authority of 37 C.F.R. § 41.50(b)).

REJECTIONS
1. Claims 1-15, 40, 41, and 43-60 stand rejected under 35 U.S.C. 103(a)
as being unpatentable over John Levine, LINKERS AND LOADERS, chapter 6,
June 1999, online accessed 08/15/2005, available at
http://www.iecc.com/linker/linker06.txt (hereinafter “Levine”).
2. Claim 42 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Levine and Breslau (U.S. Patent
Number 6,185,733 B1, issued February 6, 2001).

GROUPING OF CLAIMS
Based on Appellant’s arguments in the Briefs, we decide the appeal
on the basis of claims 1 and 42. See 37 C.F.R. § 41.37(c)(1)(vii).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 4, et seq.).

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Appellant’s Contentions
Appellant contends “that no ‘predetermined order’ is disclosed or
suggested by Levine, and that the ordering disclosed by Levine is not ‘based
on a type of the components,’ and, therefore, Levine does not disclose or
suggest ‘reorder[ing] components of the software module into a
predetermined order based on a type of the components,’ as recited in claim
1.” (App. Br. 5).
Independent claim 1
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
“reorder[ing] components of the software module into a predetermined
order based on a type of the components,” within the meaning of claim 1
(emphasis added)?

ANALYSIS
At the outset, we observe that Appellant supports the aforementioned
contentions by referring to an “exemplary embodiment of Figures 1-4 of the
Specification” (App. Br. 4), and further contending that “[w]hile other
orders may be possible in other exemplary embodiments, one of skill in the
art will understand that this order is clearly predetermined and based on the
functions of various components, as recited in claim 1.” (App. Br. 5,
emphasis added).
The Examiner disagrees:
Appellant appears to contend that, “based on a type of the
components,” must be interpreted as meaning “based on the
functions of the various components,” (Br. 4-5 (emphasis
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added) (citing Specification, pp. 5-17, Figs. 1-4).) Despite
appellant’s contrary assertion, claim 1 does not recite the
reordering being, “based on the functions of various
components.” (See Br. 5; Claim 1.)

(Ans. 11).
We agree with the Examiner, and decline Appellant’s invitation to
read limitations from the Specification into the claims. “[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments.”
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)
(citations omitted). A basic canon of claim construction is that one may not
read a limitation into a claim from the written description. Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Thus,
Appellant’s argument (“this order is clearly predetermined and based on the
functions of various components,” App. Br. 5 (emphasis added)) is
unconvincing because it is not commensurate with the scope of the claim.
In broadly but reasonably construing the scope of the disputed
“predetermined order,” even when we consider (as context) the portion of
the Specification Appellant points to for support (App. Br. 2; Spec. p. 5, ll.
25-29), we find only a non-limiting exemplary description of how the
claimed predetermined order is generated based on a type of the
components:
In step 104, in accordance with the present invention, the
software module is processed into an alternative format,
eliminating many of the backward references in the file, and
placing the components of the software module in a
predetermined order. In the example embodiment, this may be
accomplished as a separate step using the procedure describe[d]
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below. However, skilled practitioners of the pertinent art will
recognize that other procedures of generating a software
module in the alternative format are possible.

(Spec. 5, ll. 25-29) (emphasis added).
In the Reply Brief, Appellant acknowledges that Levine teaches
reordering, “but without reference to the type of object files being
reordered.” (Reply Br. 4). In particular, Appellant contends that “Levine
does not provide any support for the notion that these object files cover
multiple types of such files.” (Id.) (emphasis added).
However, we find Levine’s files are at least of type “object file.”
(Levine 5). We conclude that the broad language of claim 1 does not
positively recite that multiple types are required: “reorder[ing] components
of the software module into a predetermined order based on a type of the
components . . .” (claim 1)(emphasis added). Thus, we conclude that the
language of claim 1 broadly encompasses selectively reordering only a
plurality of components of a (single) particular type (e.g., object file type)
into a predetermined order according to any method.
Because the ordering in Levine (by the “lorder” program) is disclosed
as only being applied to the input set of object file type, we find Levine’s
(re)ordering is “based on a type of the components,” within the meaning of
claim 1. (Levine 5). Because Levine’s sorted list of object files (“tsort”
topological sort on the output of “lorder”) has “each symbol [] defined after
all the references to it,” (i.e., all backward references are removed) (id.), we
find Levine teaches “removing] at least some of the backward references,”
within the meaning of claim 1.
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On this record, Appellant has not persuaded us that the Examiner’s
construction of the disputed claim term “predetermined order” is overly
broad, unreasonable, or inconsistent with the Specification. For essentially
the same reasons articulated by the Examiner (Ans. 10-13), and for the
reasons discussed above, we are of the view that the disputed limitation of
“reorder[ing] components of the software module into a predetermined
order based on a type of the components” (claim 1) (emphasis added) is at
least suggested by the cited combination of Levine and Breslau.
For these reasons, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. Accordingly, we sustain the Examiner’s obviousness rejection
of independent claim 1.

Independent claims 9 and 55
Regarding claims 9 and 55, Appellant merely recites the language of
these claims and contends that these claims are allowable for the same
reasons previously advanced for claim 1. (App. Br. 5-6). However, “[a]
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, we sustain the Examiner’s obviousness
rejection of independent claims 9 and 55 for the same reasons discussed
above regarding claim 1.

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Dependent claim 42
Regarding claim 42, Appellant “submits that Breslau does not cure the
deficiencies of Levine discussed above with reference to claim 1.” (App. Br.
6-7). However, we are not persuaded of any deficiencies regarding Levine
for the reasons discussed above regarding claim 1. Therefore, we sustain the
Examiner’s obviousness rejection of claim 42 for the same reasons discussed
above regarding claim 1.

Remaining Dependent claims
Regarding the remaining dependent claims, Appellant presents no
separate arguments. Arguments not made are considered waived. 1
Therefore, the remaining dependent claims fall for the same reasons
discussed above regarding the respective independent claims.

DECISION
We affirm the Examiner’s § 103 rejections of claims 1-15, and 40-60.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

ORDER
AFFIRMED

1 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board
to consider the merits of that ground of rejection . . . . [T]he Board may treat
any argument with respect to that ground of rejection as waived.”).
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