Ex Parte Horiuchi et al

Patent Trial and Appeal Board

Jun 27, 2018

13304290 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/304,290 11/23/2011
84986 7590 06/29/2018
GRASSOPLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
FIRST NAMED INVENTOR
Y oshio Horiuchi
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.
JP920100087US1 3599
EXAMINER
WU, TSUNG YIN
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
admin@grassoip.com
vromme@grassoip.com
fgrasso@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIO HORIUCHI, KENJI UCHIDA,
and MASAKI WAKAO
Appeal 2017-011381
Application 13/304,290
Technology Center 2400
Before THU A. DANG, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm-in-part.
Appeal 2017-011381
Application 13/304,290
CLAIMED SUBJECT MATTER
Appellants' invention is generally directed to enabling pair
programming in a cloned local environment. Spec. ,r 1. Claims 1, 16, and
18-20 are independent claims. Claim 1 is illustrative:
1. A method for pair programming comprising:
in response to a request to create a clone environment of a
local environment of a user of a first client, receiving at a
computer a notice of intent to participate in the clone
environment from a second client, the second client different
from the first client;
creating the clone environment of a local environment of
the first client, on the computer using information on the local
environment held by the first client; and
after receiving the notice of intent to participate in the
clone environment, enabling on the computer concurrent pair
programming of the same software source code in the clone
environment by the first client and the second client.
REJECTIONS
Claims 1, 2, 5, 8-10, and 12-20 stand rejected under 35 U.S.C. § 103
as obvious in view ofRosenan (US 2009/0228576 Al; Sept. 10, 2009) and
Misch (US 2011/0125798 Al; May 26, 2011). Final Act. 5-18.
Claim 3 stands rejected under 35 U.S.C. § 103 as obvious in view of
Rosenau, Misch, and Barringer (US 2009/0300604 Al; Dec. 9, 2009). Final
Act. 18-20.
Claim 4 stands rejected under 35 U.S.C. § 103 as obvious in view of
Rosenau, Misch, and Aranwela (US 2010/0257409 Al; Oct. 7, 2010). Final
Act. 21.
Claim 6 stands rejected under 35 U.S.C. § 103 as obvious in view of
Rosenau, Misch, and Beaty (US 2009/0260007 Al; Oct. 15, 2009). Final
Act. 21-23.
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Claims 7 and 11 stand rejected under 35 U.S.C. § 103 as obvious in
view of Rosenau, Misch, and Friedman (US 2009/0300151 Al; Dec. 3,
2009). Final Act. 23-25.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived.
The Examiner finds Rosenau teaches or suggests every limitation
recited in each of independent claims 1, 16, and 18-20 except for enabling
pair programming. Final Act. 5---6, 10-17. The Examiner finds that
deficiency is remedied by Misch, which the Examiner finds teaches or
suggests pair programming, and the Examiner provides a rationale for
combining the cited teachings. Id. at 6-7, 11-12, 14--18 (citing Misch ,r,r 28,
66, Fig. 4).
Of particular note, the Examiner finds Rosenau teaches creating a
cloned local environment for testing software. Final Act. 5---6 ( citing
Rosenau ,r,r 24--25, 28-29, 31, Figs. 2, 3), 11, 13-17; Ans. 22. The
Examiner finds Misch teaches or suggests enabling pair programming
because Misch discloses allowing multiple users who are members of a
particular development team to edit the same source code at the same time.
Final Act. 6-7 (citing Misch ,r,r 28, 66, Fig. 4), 11, 14--17; Ans. 22. The
Examiner finds the combination of Rosenau and Misch teaches or suggests
enabling pair programming in a cloned environment because Misch's pair
programming would enhance Rosenan's software testing results by allowing
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certain users to modify software code. Final Act. 6-7, 11-12, 14, 16, 18;
Ans. 23. The Examiner further explains the proposed modification "is a
combination of prior art elements according to known methods (i.e. allowing
concurrent editing of source code by a predefined group of user) to yield
predictable results (i.e. a predefined group of end users in Rosenau is able to
provide additional testing results on the coding level)." Ans. 23.
CLAIMS 1, 2, 4, 5, AND 7-20
"enabl[ing concurrent real-time] pair programming"
Appellants argue Misch' s cited portions do not teach or suggest
"enabling on the computer concurrent pair programming of the same
software source code in the clone environment by the first client and the
second client," as recited in claim 1 and commensurately recited in claims
16 and 18-20. App. Br. 13-18; Reply Br. 5-14. Appellants characterize
Misch's Abstract, step 412 in Figure 4, and paragraph 66, and conclude
Misch allows only one user to check out a file at a time "and no concurrent
pair programming in a clone environment is disclosed or suggested." App.
Br. 13-18; Reply Br. 6-14. Appellants argue, for the first time in the Reply
Brief, Appellants argue Misch's paragraph 28 fails to teach enabling pair
programming in a cloned environment because Misch discloses the ability
for two users to simultaneously check out, work on, and resubmit (i.e., check
in) versions of the code, which the system then reconciles. Reply Br. 6, 8,
10, 12, 14.
We first note that Appellants mischaracterize Misch's Abstract as
"discuss[ing] testing by a first user on a first virtual environment." E.g.,
App. Br. 13; see, e.g., Reply Br. 6. Appellants appear to be summarizing
Rosenan's Abstract, which discloses, in part, "[a]ccess is then allowed to the
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first virtual environment in order to allow the end user to test the one or
more client applications on the first virtual environment." Rosenau,
Abstract. Misch's Abstract, on the other hand, describes limiting access to
source code to members of an assigned team. Misch, Abstract.
Misch explicitly discloses that "[i]n some implementations, a SCM
[ ( software configuration management)] application can allow multiple
developers to edit the same source code module in the central repository at
the same time ( e.g., multiple developers can check-out the same source code
module from the central repository)." Misch ,r 28. The Examiner cites
paragraph 28 in the Final Action, and again in the Answer, explicitly relying
on paragraph 28 as teaching the ability of "multiple users to edit the same
source code at the same time." E.g., Final Act. 6; Ans. 22. Appellants failed
to address paragraph 28 of Misch in the Appeal Brief. See, e.g., App.
Br. 13-14. Appellants address paragraph 28 of Misch for the first time in
the Reply Brief. E.g., Reply Br. 6. Appellants provide no good cause for
failing to address the Examiner's findings previously and, accordingly, have
waived that belated argument. 37 C.F .R. § 41.41 (b )(2). For that reason
alone, Appellants argument fails to demonstrate error in the Examiner's
finding that the combination of Rosenau and Misch teach or suggest
enabling concurrent or real-time pair programming in a cloned environment.
Even if we considered Appellants' belated argument, we would not be
persuaded of Examiner error because the Examiner finds Rosenau teaches or
suggests a cloned environment, Misch teaches or suggest enabling pair
programming, and "after incorporating Misch into Rosenau, Rosenau in view
of Misch" teaches or suggests enabling pair programming in a cloned
environment. Final Act. 6-7. Appellants' argument that Misch fails to teach
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or suggest enabling pair programming in a cloned environment attacks the
references individually, but the rejection is based on a combination of
Rosenau and Misch. Accordingly, Appellants' argument is unpersuasive of
Examiner error. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(non-obviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures).
Appellants present similar arguments with respect to independent
claims 16 and 18-20. App. Br. 14--18; Reply Br. 7-14. For the above
reasons, we are not persuaded the Examiner erred in finding the combination
of Rosenau and Misch teaches or suggests enabling concurrent pair
programming in a cloned environment, as recited in independent claims 1,
16, and 18-20.
Arguments against the Combination of Rosenan and Misch
With respect to these arguments, Appellants argue claims 1, 16, and
18-20 as a group. App. Br. 18-22; Reply Br. 15-16. We select claim 1 as
representative of the group. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants present three arguments against the Examiner's proposed
combination of Rosenau and Misch. App. Br. 18-22; Reply Br. 15-16.
Specifically, Appellants argue: (1) the Examiner's proposed modification
would render Rosenau unsatisfactory for its intended purpose, App. Br. 18-
19; Reply Br. 15; (2) the Examiner's proposed modification would change
the principle of operation of Rosenau, App. Br. 20-21; Reply Br. 15-16; and
(3) Rosenau teaches away from the Examiner's proposed modification, App.
Br. 21-22; Reply Br. 16. Appellants' contention that Rosenan's purpose is
to allow end users to test "working software," which results in the ability to
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"evaluate the quality of potential sales leads, to receive feedback from the
potential customers," "to supply customer service, and to ensure the proper
configuration of the machines" underlies each of these arguments. App.
Br. 19--21; Reply Br. 15-16.
As discussed above, the Examiner finds Rosenau teaches a cloned
environment for testing, Misch teaches pair programming, and the
combination of the Rosenau and Misch's teachings teach enabling pair
programming in a cloned environment. Final Act. 6-7; Reply Br. 24--25.
The Examiner explains that the proposed combination involves adding
Misch's teaching of allowing some predefined subset of users (i.e., members
of a team) to have access to concurrently edit source code in Rosenan's
cloned environment, while leaving intact Rosenan's disclosed ability to
allow end users to test working software. Reply Br. 24--25.
For example, the Examiner explains the combination "is an additional
feature" and "adding this feature would not change the existing testing
processes in Rosenau." Id. at 25 (italics added); id. at 24 ("Misch's teaching
adds extra feedback ( on programming level) onto Rosenan's testing and help
out the sale evaluation."). The Examiner further explains incorporating
Misch's teachings into Rosenau would "enable the original developer to
gather additional feedbacks on the coding level, and then apply [ such
feedback] toward the sales evaluation, thereby increasing the accuracy of
Rosenan's sale[s] evaluation." Id. at 24.
We find unavailing Appellants' contentions that Rosenau teaches
away from enabling pair programming or that the Examiner's proposed
modification either renders Rosenau unsatisfactory for its intended purpose
or changes Rosenan's principle of operation. A reference teaches away
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when an ordinarily skilled artisan, upon reading the reference, would be
( 1) discouraged from following the path set out in the reference, or (2) led in
a direction divergent from the path taken by Appellants. In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006). That is not the case here. The Examiner
does not propose to provide all users (including those without programming
experience) access to source code. Rather, the Examiner finds a person of
ordinary skill in the art would have added Misch's teaching of enabling pair
programming to Rosenan's cloned environment such that some predefined
subset of users would be allowed to concurrently edit source code, while still
providing cloned testing environments to all users, as taught by Rosenau.
Ans. 24--25. The test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In re Keller, 642
F.2d413, 425 (CCPA 1981).
We see no error in the Examiner's position in this regard. Rosenau
does not discourage enabling pair programming to some predefined subset
of users. As Appellants' point out, Rosenau does not contemplate access to
source code of the programs executed in cloned environments, which means
Rosenau fails to discourage or lead a person of ordinary skill in the art away
from using the disclosed environment for additional purposes. See Reply
Br. 15. Moreover, the Examiner's proposed combination does not change
Rosenan's principle of operation or render Rosenau unsatisfactory for its
intended purpose because the Examiner's proposed modification merely
adds functionality and leaves Rosenan's user-testing functionality intact.
Therefore, we disagree with Appellants that Rosenau teaches away from the
Examiner's proposed combination, or that the Examiner's proposed
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modification changes Rosenan's principle of operation or renders Rosenau
unsatisfactory for its intended purpose.
For the above reasons, we are not persuaded the Examiner erred in
combining the cited teachings of Rosenau and Misch.
Summary
Other than claims 3 and 6, discussed in more detail below, Appellants
present no separate substantive arguments with respect to the dependent
claims. See Final Act. 18-22. Accordingly, for the reasons discussed above,
we are not persuaded the Examiner erred in rejecting claims 1, 2, 4, 5, and
7-20 as obvious.
CLAIM3
Claim 3 depends directly from independent claim 1. The Examiner
finds Rosenau and Misch teach or suggest the subject matter recited in claim
1 and further finds Barringer discloses the limitations additionally recited in
dependent claim 3. Final Act. 18-21.
Appellants argue Barringer does not teach a first client and, therefore,
Barring cannot teach the aspects of the claim that recite a first client. App.
Br. 22-23. Appellants also argue the Examiner's finding that the sending,
acquiring and retrieving steps ( executed if the recited information was not
sent from the first client) are inherent is not persuasive because those steps
are "not inherent when information is not sent in Barringer," id. at 23, and
the Examiner's "general reference to a repository in Barringer does not
implicitly guarantee that all of the [recited] claim language," Reply Br. 17.
The Examiner explains that the rejection relies on Barringer for
teaching a user requesting software from a repository, but that incorporating
Barringer's repositories into the Rosenau-Misch system "in order to provide
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coding reference information to the user when editing source codes in the
clone environment" would result in cloning Barringer' s repositories from the
first environment into multiple clone environments such that "data from a
repository within a clone environment is data sent from the first client."
Ans. 26. Accordingly, it is the combination of Barringer with Rosean and
Misch that results in checking whether information was sent from a first
client and, if not, executing the sending, acquiring, and retrieving steps with
respect to the first client. Id. Appellants do not respond to these findings
and explanation from the Examiner. See Reply Br. 1 7.
Appellants' argument that "the sending, acquiring, and retrieving of
this claim language is not inherent when information is not sent in
Barringer," is unpersuasive because it fails to identify a deficiency in the
Examiner's findings. See App. Br. 23. First, the Examiner states only that
"[i]t is inherent that the name of the file must be sent to the origin
repository"; the Examiner does not rely on inherency for the other
limitations. Final Act. 19--20. The Examiner explains that in order to
retrieve information associated with a file from a location, the file name
must be sent to that location to identify the relevant information. We agree
with the Examiner and are not persuaded by Appellants' arguments to the
contrary.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 3 as obvious in view of Rosenau, Misch, and Barringer.
CLAIM6
The Examiner finds Beaty teaches or suggests claim 6' s additionally
recited limitation of creating the cloned environment "upon receipt of
permission for the second client or the user in association with the second
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client to participate in the clone environment from the first client." Final
Act. 22 (citing Beaty ,r,r 63, 74--75, Fig. 7, Abstract); Ans. 27.
Appellants assert Rosenau discloses authenticating requests but does
not teach or suggest sending a query to a first client requesting permission
for the second client to participate, as recited in claim 6. App. Br. 23.
Appellants further argue "a general discussion [ of] allocation of virtual
machines and client authentication does not disclose or suggest the specifics
of this portion of claim 6" and "because no such creation of the clone
environment is performed in Beaty, Beaty does not disclose or suggest the
recited language of claim 6." App. Br. 23-24. Appellants also argue the
cited portions of Beaty show a cloning request from a client, whereas claim
6 recites a query to a client.
The Examiner finds Rosenan's "query of whether or not the second
client is authenticated equates to a query to the first client of whether or not
the second client is permitted by the first client" because "a group of clients
are pre-invited by the first client." Ans. 27 ( citing Rosenau ,r,r 28, 30, Figs.
2, 3).
We are persuaded the Examiner erred. We agree with the Examiner
that Rosenau discloses a first client inviting other clients to participate in a
cloned environment. Ans. 27; see Rosenau ,r 28. Furthermore, the
Examiner is correct that Rosenau discloses authenticating the client after
receiving that client's notice of intent to participate. Ans. 27; see Rosenau
,r 30. However, we see nothing in the cited sections of Rosenau that teaches
or suggests sending a request to the first client seeking authorization of
another client. Rather, Rosenan's server receives information from the first
client regarding a request to clone an environment. Rosenau ,r,r 24--27.
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Subsequently, in response to a request from another client to register to
participate in the cloned testing environment, the server passes the request
through a gateway to a VPN to authenticate the client requesting
registration. Id. ,r,r 29-30. No request is sent to the first client "after receipt
of the notice of intent to participate," as recited in claim 6. Accordingly, we
do not sustain the Examiner's rejection of claim 6.
DECISION
We affirm the Examiner's decision to reject claims 1-5 and 7-20
under 35 U.S.C. § 103 as obvious.
We reverse the Examiner's decision to reject claim 6 under 35 U.S.C.
§ 103 as obvious.
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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