Ex Parte Kushnirskiy et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10113479 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IGOR DAVIDOVICH KUSHNIRSKIY and SERGEY V.
LUNEGOV
____________________

Appeal 2010-003665
Application 10/113,479
Technology Center 2400
____________________

Before THU A. DANG, CAROLYN D. THOMAS, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/113,479

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I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-12
under 35 U.S.C. § 134 (2007). We have jurisdiction under 35 U.S.C.
§ 6(b)(2007).
We affirm-in-part.

A. INVENTION
According to Appellants, the invention relates to the field of computer
software and, in particular, to calling virtual machines across processes
(Spec. 1, ll. 5-6).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for cross-process virtual machine calling
comprising:

determining whether a virtual machine is running in a
first process;

if no virtual machine is running in said first process,
issuing a call to a virtual machine in a second process from said
first process;

forwarding said call from said first process to said second
process; and

delivering said call to said virtual machine in said second
process.
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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ruehle US 6,553,428 B1 Apr. 22, 2003
(filed Nov. 18, 1997)
Bodin US 6,604,106 B1 Aug. 05, 2003
(filed Dec. 10, 1998)

Claims 1-12 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Ruehle in view of Bodin.
Claims 9-12 stand rejected under 35 U.S.C. § 101 being directed to
non-statutory subject matter (Final Rej. January 13, 2006, pp. 2-3).
Appellants do not address this rejection in their Appeal Brief and do not
provide a Reply Brief. In the Supplemental Examiner’s Answer, the
Examiner maintains that claims 9-12 stand rejected under 35 U.S.C. § 101
(Ans. 3-4).
Because the Examiner has not withdrawn the rejection under 35
U.S.C. § 101 and the involved claims 9-12 are subject to this Appeal, we
therefore summarily affirm the rejection of claims 9-12 under 35 U.S.C. §
101 because Appellants fail to argue against the 35 U.S.C. § 101 rejection in
the Brief. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

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II. ISSUE
The outstanding issue subject to this Appeal is whether Appellants
shown that the Examiner erred in finding that the combined teachings of
Ruehle and Bodin disclose “if no virtual machine is running in said first
process, issuing a call to a virtual machine in a second process from said first
process” (Claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Ruehle
1. Ruehle discloses a client system 10 and a server system 11 connected
by a physical socket 12 and wire 18, wherein data is sent over JAVA
physical socket 12 by JAVA client process object 13 to a JAVA
server process object 16, and wherein the JAVA physical socket 12
and the JAVA process object 16 are running in a JAVA virtual
machine 14 on a Windows NT platform 15 (col. 5, ll. 45-50; Fig. 1).
Bodin
2. Bodin discloses examining the HTTP request to determine whether
the client machine is plug-in enabled (col. 5, ll. 62-64).

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V. ANALYSIS
Appellants contend that, contrary to the Examiner’s findings, Ruehle
does not disclose “issuing a call to a virtual machine in a second process
from said first process” as required by claim 1 because “the java process
objects 13 and 16 are not processes” but “are instead merely object (i.e. class
instantiations) that are used by processes” (App. Br. 7). Appellants further
contend that “[t]he only determination made in Bodin that is apparent to the
Appellants is determining whether a client machine is plug-in enabled”
(App. Br. 6).
The Examiner finds that Ruehle does disclose “issuing a call to a
virtual machine in a second process from said first process” as required by
claim 1 because “client 10 issues a request to java virtual machine 14 (i.e.,
virtual machine) from a java process object” (Ans. 14). The Examiner
further finds that Bodin “discloses the feature of determining whether the
client is plug-in enable[d]” which includes “determining whether the java
applet is running a JVM in a client machine [first process],” and thus Bodin
does “suggest the feature of determining whether a virtual machine is
running in a first process” (Ans. 13).
Reviewing the record on appeal, we find no teaching or even
suggestion of issuing a call to a virtual machine in a second process from a
first process “if no virtual machine is running in said first process” as
required by claim 1 (emphasis added) in the portions of Ruehle and Bodin
referenced by the Examiner. Ruehle merely discloses sending data from a
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JAVA client process object to a JAVA server process object 16 running in a
JAVA virtual machine 14 (FF 1), while Bodin merely discloses examining
an HTTP request to determine whether the client machine is plug-in enabled
(FF 2).
The Graham framework requires that the Examiner demonstrates that
the claim elements are known in the prior art in order to make a prima facie
case that the claimed subject matter is likely to be obvious. Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). Though the Examiner
finds that Ruehle does disclose “issuing a call to a virtual machine in a
second process from said first process” (claim 1) because “client 10 issues a
request to java virtual machine 14” (Ans. 14) and that Bodin “discloses the
feature of determining whether the client is plug-in enable[d]” which
suggests “the feature of determining whether a virtual machine is running in
a first process” (Ans. 13), we find no teaching or even suggestion of issuing
a call to a virtual machine “if no virtual machine is running in said first
process,” since the combined teachings do not disclose such conditional
nature. That is, even if Ruehle does disclose issuing a call to a virtual
machine in a second process from a first process and even if Bodin does
disclose determining whether a virtual machine is running in a first process,
we find no suggestion of the issuing of a call in a hypothetical combination
being conditional on whether or not there is no virtual machine running in a
first process in the portions of the references cited by the Examiner.
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Since the Examiner has not clearly demonstrated where such
conditional teaching would be suggested in the applied references, we are
constrained to reverse the rejection of representative claim 1 over Ruehle
and Bodin. Independent claims 5 and 9 recite similar features and thus stand
with claim 1, as well as claims 2-4, 6-8, and 10-12 depending respectively
therefrom over Ruehle and Bodin.

VII. CONCLUSION AND DECISION
A. Appellants have shown that the Examiner erred in finding claims 1-12
unpatentable under 35 U.S.C. § 103(a).
B. Appellants fail to show that the Examiner erred in finding that claims
9-12 do not recite statutory subject matter under 35 U.S.C. § 101.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRM-IN-PART

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