Ex Parte Trowbridge

Board of Patent Appeals and Interferences

Oct 22, 2009

09817880 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SEAN E. TROWBRIDGE
____________________

Appeal 2009-004409
Application 09/817,8801
Technology Center 2100
____________________

Decided: October 22, 2009
____________________

Before JAMES D. THOMAS, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 26, 2001. The real party in interest is Microsoft
Corporation.
Appeal 2009-004409
Application 09/817,880
STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 33 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

Appellant’s invention relates to a method and system for generating
executable code for operating a computer. In the words of Appellant:
In order to address … intermediate language compilers have
been developed that convert source code written in many
different languages (e.g., C++, BASIC, Pascal) to an
intermediate language that operates in a virtual environment
sometimes referred to as a virtual machine. This provides a
layer of abstraction to the source code that enables a single code
source to execute on multiple hardware platforms and operating
environments. Thus, the virtual machine converts the
intermediate language into the particular instructions required
of the platform. Although platform independence and reduced
development time is generally achieved by this model, some
program performance is sacrificed when converting the
intermediate language to machine-dependent instructions. Thus,
a tradeoff exists between higher performance program
operations provided by standard native compilers and the
compilation and development time benefits provided by
intermediate language systems. Consequently, there is a need
for a system and methodology to provide program performance
approaching that of native compiled systems while also
providing the development benefits of intermediate language
systems.
. . . .
More particularly, the present invention stores and/or
caches possible executable images associated with at least one
operating environment in a repository, such as an image
database. A loader searches the repository for a possible
executable image at run time in a virtual execution
environment. If the loader finds a suitable image, the image is
loaded and executed by a virtual code execution engine. If a
suitable image is not found by the loader, a logging component
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logs information about the current execution environment
according to the operating conditions of the execution engine.
The logged information is provided as feedback and analyzed
either manually and/or automatically to generate a new and/or
specialized executable image that may then be stored in the
repository and utilized in future operations of the execution
engine. The specialized image generally provides higher
performance operations within a virtual system in contrast to
generating native code anew from a generic intermediate
language according to operating environment differences.
Analysis for generating the specialized executable may include
operating environment considerations such as hardware
configurations, operating system versions, processor
architectures and configurations, component versions,
developer parameters, domain determinations, security
considerations, along with a plurality of other factors.

(Spec. 2, ll. 5-20; Spec. 3, ll. 13-28.)

Claim 1 and claim 30 are exemplary:
1. A computer implemented system for generating
specialized executables, comprising the following computer
executable components:

a virtual subsystem that processes a generic code image;

a loader to determine availability of a specialized image
that is associated with an operating environment of the virtual
subsystem; and

a log to store generic code image runtime information
relating to the operating environment of the virtual subsystem,
the runtime logged information includes at least a set of
information related to a particular user to create a native
executable according to the particular user, the logged
information is employed as feedback to generate the native
executable based upon the availability of the specialized image,
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the native executable is utilized to provide improved
performance of the virtual subsystem

30. A computer implemented signal transmitted between at
least two processes executing on one or more computers
facilitating generation of specialized executables, comprising:

a signal for communicating between one or more
components of a virtual system, the virtual system processing a
generic code image and logging information relating to an
operating environment and a particular user of the virtual
system via the signal, the logged information includes at least a
set of information to create a specialized native executable
according to the particular user;

wherein the logged information is employed as feedback
across the signal to generate a specialized native executable if
the generic code image is determined incompatible with the
operating environment of the virtual system, the specialized
native executable is utilized to provide improved performance
of the virtual system.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Breslau US 5,761,512 Jun. 02, 1998
Knight US 6,126,330 Oct. 03, 2000
Goodwin US 6,158,049 Dec. 05, 2000
Nelin US 6,253,368 Jun. 26, 2001
Ramezani US 6,457,122 B1 Sep. 24, 2002
Spyker US 6,571,389 May 27, 2003
Fogarty US 6,721,946 Apr. 13, 2004

Armstrong, HotSpot: A new breed of virtual machine, JavaWorld, March
1998, http://www.javaworld.com.

Aho, Compilers: Principles, Techniques, and Tools 1-24 (Michael A.
Harrison ed., Addison Wesley 1988) (1986).

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REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 2, 5-17, 19, 30 and 31 stand rejected under 35
U.S.C. § 103(a) for being obvious over Breslau, Spyker, Armstrong and
Knight.
R2: Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Breslau, Spyker, Armstrong and Knight and further in view of
Fogarty.
R3: Claim 18 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Breslau, Spyker, Armstrong and Knight and further in view of Nelin.
R4: Claims 20-22 and 27-29 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Goodwin in view of Knight.
R5: Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Goodwin and Knight and further in view of Aho.
R6: Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Goodwin, Knight, Aho, and further in view of Breslau.
R7: Claim 32 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Breslau in view of Spyker, Knight and Nelin.
R8: Claim 33 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Ramezani, Knight and Spyker.
R9: Claims 19, 30 and 31 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter (signals).

Concerning rejection [R9] under 35 U.S.C. § 101, the Examiner has
mistakenly stated that the rejection is not under review as the rejection has
not been argued in the Appellant’s Brief. (Ans. 4). Mere failure to argue a
rejection does not negate the appeal of that rejection (MPEP 1205.02, para.
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2). Thus, the rejection [R9] of the affected claims 19, 30 and 31 will be
considered, and the rejection will be affirmed pro forma (summarily
sustained) because the rejection has not been traversed by Appellant. It
should be pointed out that the rejection of these claims, addressed to a
signal, is consistent with the holding of In re Nuijten, 500 F.3d 1346, 1359
(Fed. Cir. 2007), en banc denied, 515 F.3d 1361 (Fed. Cir. 2008), cert.
denied, 129 S.Ct. 70 (2008).

Groups of Claims:
The rejections will be discussed in the order of the arguments.
See 37 C.F.R. § 41.37 (c) (vii). See also In re McDaniel, 293 F.3d
1379, 1383 (Fed. Cir. 2002) (“If the brief fails to meet either requirement [of
37 C.F.R. § 1.192(c)(7)], the Board is free to select a single claim from each
group of claims subject to a common ground of rejection as representative of
all claims in that group and to decide the appeal of that rejection based
solely on the selected representative claim.”).
Appellant contends that the claimed subject matter is not rendered
obvious by the combinations of references for failure of the references to
teach the specific limitations of the claims. The Examiner contends that
each of the claims is properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
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ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the combination of references teaches the logging of generic code image
runtime information including a set of information related to a particular
user, in the manner claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Appellant has invented a system and method for generating computer
code executable by specific target computer configurations (Spec. 5, l.
15). Rather than develop the code from scratch, the system starts with a
generic set of codes written in an intermediate language (Fig. 2, #60).
These are executed in a virtual machine environment by execution engine
#58, but only after first searching a library of native images from
repository #64 for a native image that specifically matches the runtime
characteristics of the required virtual environment (Spec. 7, ll. 1-11). If
the execution engine finds an already created native image that matches
the required characteristics of operating system, processor type, virtual
system version and so forth (See Fig. 6), then that image is used as it will
execute faster than the more generically compiled intermediate language
image. But if the system must use the generic image, then it will be
endured and customized by a feedback loop involving the logging of
operating characteristics of the compiling of the generic code with an
associated set of environmental information relating to the current
runtime configuration (Spec. 5, l. 9). The images may also be
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specialized according to a particular user, for example the number of
times in a given period that a particular image is loaded, perhaps by a
particular user (Spec. 6, l. 20).
2. The references Breslau, Armstrong, Spyker and Knight all address
aspects of the generation of computer code for execution on a general
purpose computer.
3. [Specific further findings of fact will be cited in the Analysis section
below as part of the analysis therein.]

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“It is well established that ‘[t]he first door which must be opened on
the difficult path to patentability is § 101.” State St. Bank & Trust Co. v.
Signature Fin. Group, Inc., 149 F.3d 1368, 1372 n.2 (Fed. Cir. 1998)
(quoting In re Bergy, 596 F.2d 952, 960 (CCPA 1979)) (quoted in In re
Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007) (“Only if the requirements
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of § 101 are satisfied is the inventor ‘allowed to pass through to’ the other
requirements for patentability.”))

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellant’s
claims under 35 U.S.C. § 103(a). The prima facie case is presented on pages
6 to 19 of the Examiner’s Answer. In opposition, Appellant presents a
number of arguments.

Arguments with respect to the rejection
of claims 1, 2, 5 to 17 and 19, 30 and 312
under 35 U.S.C. § 103(a) [R1]

Claims 19, 30 and 31 are subject to a non-argued rejection under 35
U.S.C. § 101 [R9] which we have sustained pro forma above. As statutory
subject matter is a “first door” consideration for patentability, barred at the
threshold, the analysis of these claims under 35 U.S.C. § 103(a) is not
necessary. (See In re Comiskey, 499 F.3d at 1371.)
Concerning the remaining claims, Appellant first argues that “The
cited art does not disclose or suggest how this table [in Breslau, a table that
equates affinity values to runtime environments,] is populated and

2 Claim 31 states that it depends from itself. This is obviously a
typographical error, and we presume that Appellants intended for claim 31
to depend from claim 30.
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specifically is silent regarding logging information during runtime execution
of the compiled image as in applicant’s claimed invention.” (App. Br. 7,
middle).
Breslau teaches a computer compiler system that has multiple
execution environments (Abstract). The unique execution environment
characteristics that define a class of objects to be compiled are called
affinities in the Breslau patent (Col. 3, l. 13). Affinities include such items
as the operating system of the environment, the processor, the user interface,
etc. (Fig. 2; Col. 4, l. 28-30). The characteristics of the execution
environment associated with the compiling of a class of objects are listed in
the Affinity Resource Table (Col. 4, l. 63). A subset of the table for the
specific environment being compiled is listed in the System Environment
Table (SET) that includes such items as the processor type and operating
system used for the specific instantiated class of objects (Fig. 2; col. 5, l.
17). If there is a specific set of affinities listed for the compiling of a certain
set of objects, then a customized compilation takes place; if not, then the
compiling is performed for any available execution environment (Col. 5, l.
55). This teaching is read by the Examiner on the use of a specific native
executable if available and if not on the claimed generic code image (Ans. 8,
middle). Armstrong reinforces that teaching by disclosing “When a method
is invoked, the native machine-code version is used, if it exists. Otherwise
the bytecodes are reinterpreted.” (Armstrong 4, top). Spyker likewise
teaches the execution of a runtime image, under user control, on a virtual
subsystem (Col. 14, ll. 44-53).
In answer to Appellant’s argument above, Examiner states that Knight
was cited to teach the information logged during the execution of the
application, not Breslau, Spyker or Armstrong, although they are all in the
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analogous art of compiling computer objects for multiple environments
(Ans. 19-20). Rather, indicates the Examiner, Knight was cited for teaching
the feedback, during the runtime execution of a program, of information
related to the use by a particular user (Ans. 20, bottom). Examiner points to
Knight (Col. 6, ll. 22-27) for the teaching. We find Knight does indeed
teach a user interface that indicates object identifiers “being changed,
affected by or interacted with in some way by the developer/user, are logged
in object display area 15 of the screen of setup tool 10.” (Id.).
We thus agree with the Examiner that the cited references do teach the
claimed log to store runtime information, which information relates to a
particular user which is employed as feedback. That feedback is used to
generate customized, native executables (Knight col. 6, ll. 39-43; col. 8, ll.
1-6).
Appellant argues that Knight does not teach runtime logged feedback
from the user used to generate a native executable (App. Br. 10, top and
bottom; 11, middle). We agree with the Examiner (Answer 21, bottom) that
Knight does indeed teach the claimed limitation for the reasons cited by the
Examiner on that point.
We, thus, are not persuaded of error in the Examiner’s rejection [R1].

Arguments with respect to the rejections
of all other claims
under 35 U.S.C. § 103 [R2 to R8]

All of Appellant’s other arguments for rejections [R2] to [R8] are
based on the alleged deficiency of the cited art to indicate the feedback
based on information related to a particular user to create a native executable
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(App. Br. 10-13). As we do not agree that such a deficiency has been
established, we are not persuaded of error in these rejections.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-33 under rejections [R1] to
[R9].
DECISION
The Examiner’s rejections of claims 1-33 under rejections [R1] to
[R9] are Affirmed.
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).

AFFIRMED

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