Ex Parte Hertling et al

Board of Patent Appeals and Interferences

Mar 27, 2012

09879399 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/879,399 06/11/2001 William Hertling 10010641-1 4605
7590 03/28/2012
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
DAO, THUY CHAN
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
03/28/2012 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 WILLIAM HERTLING and MICHAEL D. WHITMARSH
____________

Appeal 2010-008411
Application 09/879,399
Technology Center 2100
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-22, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

Appeal 2010-008411
Application 09/879,399

2
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed Aug. 4 2009), the Answer
(mailed Jan. 7, 2010), and the Reply Brief (filed Mar. 2, 2010).

Appellants’ Invention
Appellants’ invention relates to the updating of a virtual machine class
file. Upon the identification of a class file for execution by a virtual
machine, a search is made for the class file. If the requested file is not
found, a search is made in a class file repository located outside the virtual
machine file system itself. See generally Spec. 2:18-29 and 4:22-29).

Claim 1 is illustrative of the invention and reads as follows:
1. A computer-implemented method of providing a class file for
use in a virtual machine with a virtual machine file system, comprising the
steps of:
identifying a class file for execution by a virtual machine;
searching for the identified class file in the virtual machine file system;
upon generating an exception associated with searching for the
identified class file in the virtual machine file system, accessing the
identified class file in a class file repository located outside the virtual
machine file system; and
downloading the identified class file to the virtual machine file
system.

The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:

Chan US 6,470,494 B1 Oct. 22, 2002
(filed Nov. 29, 1999)
Curtis US 6,826,750 B1 Nov. 30, 2004
Appeal 2010-008411
Application 09/879,399

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(filed Mar. 23, 2000)

Claims 1, 2, 4, 9-14, 16-18, and 20-22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Chan.
Claims 3, 5-8, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chan in view of Curtis.

ANALYSIS
35 U.S.C. § 102(e) REJECTION
Appellants’ arguments with respect to independent claim 1 focus on
the contention that Chan does not disclose that, when an exception is issued
that a requested file is not found in the virtual machine file system, the
requested class file is accessed in a class file repository outside the virtual
machine file system. Appellants make a similar argument with respect to
independent claims 12, 17, and 22 which include limitations directed to
searching “outside the virtual machine file system” with slight variations in
wording. According to Appellants (App. Br. 14; Reply Br. 5-6), while Chan
may disclose that the dynamic class loader 40, after searching through hash
tables and not finding the requested class file in memory 28, will search
elsewhere, there is no indication that such a search will be made outside the
virtual machine file system itself.
We agree with Appellants as our interpretation of the disclosure of
Chan coincides with that argued by Appellants. As described by Chan, the
dynamic class loader 40 maintains a set of pointers, which are stored in hash
tables, to the class files or byte representations of such files that have already
been loaded into memory 28 (col. 5, ll. 37-43). If the hash tables do not
contain a pointer to the class files required to be loaded for execution, Chan
Appeal 2010-008411
Application 09/879,399

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indicates that a search is made for the class files in a default path (col. 6, ll.
30-35). As argued by Appellants (Reply Br. 8), however, Chan does not
disclose the nature or specifics of such default path and, in particular, there
is no disclosure that such default path is located outside the virtual machine
file system as claimed.
We recognize that the Examiner, in the “Response to Argument” at
pages 12-16 of the Answer, directs attention to the code listing for Chan’s
dynamic class loader 40 appearing in Chan’s Appendix A. In particular, the
Examiner refers to the listing statements under the heading
“ClassNotFoundException” which include the statement “Attempt to load
class from system classpath.”
According to the Examiner’s annotated comments at the right-hand
side of pages 15-16 of the Answer, Chan’s reference to a “system classpath”
in relation to an issued exception indicates that, if a search through the
stored hash tables does not locate the requested class files, a search is made
outside the virtual machine file system. As pointed out by Appellants
(Reply Br. 8), however, the parameters of the “system classpath,” which is
briefly described at column 5, lines 15-30 of Chan, are never specified.
Accordingly, we agree with Appellants that Chan’s references to a search
using a “default path” or a “system classpath” does not necessarily mean
that an attempt is made to access a file located outside the virtual machine
file system. Any conclusion otherwise could only be based on unsupported
speculation which is not sufficient to support a rejection based on
anticipation.
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Chan, we do not sustain the Examiner’s 35
Appeal 2010-008411
Application 09/879,399

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U.S.C. § 102(e) rejection of independent claims 1, 12, 17, and 22 nor the
rejection of claims 2, 4, 9-11, 13, 14, 16, 18, 20, and 21 dependent thereon.

35 U.S.C. § 103(a) REJECTION
We also do not sustain the Examiner’s obviousness rejections of
dependent claims 3, 5-8, 15, and 19 based on the combination of Curtis with
Chan. We find nothing in the disclosure of Curtis which overcomes the
innate deficiencies of Chan discussed supra.

CONCLUSION
Based on the analysis above, we conclude that Appellants have shown
that the Examiner erred in rejecting claims 1, 2, 4, 9-14, 16-18, and 20-22
for anticipation under 35 U.S.C. § 102(e), and in rejecting claims 3, 5-8, 15,
and 19 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 9-14, 16-18, and 20-
22 under 35 U.S.C. § 102(e), and claims 3, 5-8, 15, and 19 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

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