Ex Parte Arnold et alDownload PDFPatent Trial and Appeal BoardApr 23, 201411197895 (P.T.A.B. Apr. 23, 2014) Copy Citation 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. 11/197,895 08/05/2005 Jeremy Alan Arnold IBM / 193C1 8649 26517 7590 04/24/2014 WOOD, HERRON & EVANS, L.L.P. (IBM) 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER BULLOCK JR, LEWIS ALEXANDER ART UNIT PAPER NUMBER 2199 MAIL DATE DELIVERY MODE 04/24/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEREMY ALAN ARNOLD and JOHN MATTHEW SANTOSUOSSO ____________ Appeal 2011-004566 Application 11/197,895 Technology Center 2100 ____________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ELENI MANTIS MERCADER, 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 all of the pending claims 1-19 and 21. Claim 20 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 7, 2010) and the Answer (mailed Appeal 2011-004566 Application 11/197,895 2 Sep. 15, 2010) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Brief. Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants’ Invention Appellants’ invention relates to debugging an object-oriented computer program using a plurality of breakpoints that are set for a plurality of creators for a defined class in the object-oriented program. A plurality of creators, e.g., constructor methods, for the class are identified in response to user input, and a plurality of breakpoints are set on the identified creators. In response to hitting any of the breakpoints, execution of the object- oriented computer program is halted during debugging. See generally Spec. 5:1-12. Claim 1 is illustrative of the invention and reads as follows: 1. A computer-implemented method of debugging an object-oriented computer program, the method comprising: in response to user input, setting a creation breakpoint for a class defined in the object-oriented computer program, wherein setting the creation breakpoint includes: identifying a plurality of creators for the class; setting a plurality of breakpoints on the identified creators; adding an entry for the creation breakpoint in a Appeal 2011-004566 Application 11/197,895 3 breakpoint data structure resident in a computer-readable medium; storing breakpoint information for each of the plurality of breakpoints in the breakpoint data structure; and associating the breakpoint information for each of the plurality of breakpoints with the entry in the breakpoint data structure for the creation breakpoint to associate each of the plurality of breakpoints with the creation breakpoint; determining that the creation breakpoint has been hit during debugging by detecting hitting of any of the plurality of breakpoints, wherein the creation breakpoint is determined to be hit only in response to detecting hitting of a breakpoint set on an identified creator for the class; and halting execution of the object-oriented computer program during debugging in response to determining that the creation breakpoint has been hit. The Examiner’s Rejections The Examiner’s Answer cites the following prior art references: Coplien US 5,093,914 Mar. 3, 1992 Phillips US 5,321,828 June 14, 1994 Lenkov US 5,560,009 Sep. 24, 1996 West US 5,740,440 Apr. 14, 1998 Nishimura US 5,845,125 Dec. 1, 1998 Kodera US 6,718,484 B1 Apr. 6, 2004 (filed July 20, 2000) Bliss US 6,823,518 B1 Nov. 23, 2004 (filed Oct. 17, 2000) Claims 1-4, 8, 10-14, 18, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lenkov in view of Nishimura, and Kodera. Appeal 2011-004566 Application 11/197,895 4 Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lenkov in view of Nishimura, Kodera, and West. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lenkov in view of Nishimura, Kodera, West, and Coplien. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lenkov in view of Nishimura, Kodera, and Phillips. Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lenkov in view of Nishimura, Kodera, and Bliss. ANALYSIS Claims 1, 2, 4, 8, 10-12, 14, 18, 19, and 21 Appellants’ arguments, with respect to the Examiner’s obviousness rejection of independent claims 1, 11, and 19, address the alleged deficiencies of each of the applied Lenkov, Nishimura, and Kodera references. Initially, Appellants contend that, while Lenkov teaches that individual unrelated breakpoints are set at the same time on multiple functions that share a common name, there is no teaching or suggestion of any common breakpoint or data structure that collectively manages the association of multiple related breakpoints with one another. App. Br. 10- 11. Appellants further contend that Nishimura does not overcome the deficiencies of Lenkov because the types of breakpoints discussed in the cited column 12, lines 39-61 portion of Nishimura are system breakpoints which are not set by a user. According to Appellants, the only breakpoints in Nishimura that are set by a user are object breakpoints, similar to the class Appeal 2011-004566 Application 11/197,895 5 breakpoints in Lenkov, not “creation” breakpoints as claimed. App. Br. 11- 12. We agree with the Examiner, however, that Nishimura’s teaching (col. 12, l. 37-col. 13, l. 4) of setting breakpoints on constructors and deconstructors when combined with Lenkov’s teaching (col. 27, ll. 46-55 and col. 29, ll. 58-61) of user setting of creation breakpoints satisfies the claimed feature of user setting of a plurality of breakpoints for the identified plurality of class creators. Ans. 15. We further find no error in the Examiner’s determination that Nishimura’s teaching of user setting of breakpoints on functions of objects would have suggested to the ordinarily skilled artisan that constructor and deconstructor breakpoints are also set by the user. Id. We note that Appellants have not filed a Reply Brief challenging the Examiner’s line of reasoning. Further, while Appellants contend that Lenkov and Nishimura do not teach or suggest the linking of breakpoints set on creator functions to a creation breakpoint in a breakpoint data structure, it is Kodera that the Examiner has relied on for a teaching of the claimed breakpoint association data structure feature. Ans. 6 (citing Kodera, Fig. 3 and col. 8, ll. 42-64, and col. 9, ll. 1-21). We also find unpersuasive Appellants’ contention that Kodera’s teaching (col. 5, ll. 40-67) of hitting all breakpoints teaches away from the claimed feature of debugging by detecting hitting any of the plurality of breakpoints. App. Br. 13. We find no error in the Examiner’s determination that the triggering of a creation breakpoint after all breakpoints are hit encompasses the triggering after any of the individual breakpoints are hit. Ans. 20. As noted previously, Appellants have not filed a Reply Brief challenging the Examiner’s reasoning. Appeal 2011-004566 Application 11/197,895 6 We also note that, at pages 14-16 of the Brief, Appellants provide a summary of their position and conclude that none of the applied references “appreciates the desirability of enabling a user to set a single ‘creation’ breakpoint that will trigger whenever any of a plurality of creators of a class are called.” Id. at 14. We agree with the Examiner, however, that Appellants’ arguments are merely directed to the individual differences among each of the applied references rather than what the combination as a whole would teach. It is apparent from the Examiner’s line of reasoning in the Answer that the basis for the obviousness rejection is the collective teachings resulting from the combination of the prior art references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We further find that the Examiner has provided a detailed analysis of how the resultant Lenkov/Nishimura/Kodera combination would satisfy all of the claimed requirements. Ans. 15-16. Appellants have not filed a Reply Brief challenging this analysis. Lastly, we find, contrary to Appellants’ generalized contention, that the Examiner has provided a reasoned basis with a rational underpinning to support the conclusion of obviousness for the proposed combination of prior art references. Ans. 4-13. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of independent claims 1, 11, and 19, as well as the rejection of dependent claims 2, 4, 8, 10, 18, and 21 not separately argued by Appellants, is sustained. Appeal 2011-004566 Application 11/197,895 7 Claims 3 and 13 We also sustain the Examiner’s obviousness rejection of dependent claims 3 and 13. We find Appellants’ arguments (App. Br. 16) unpersuasive of error in the Examiner’s determination that the combination of Lenkov and Nishimura teaches or suggests the user setting of breakpoints on a displayed list of identified creator functions. Ans. 21. We further find that Appellants have not demonstrated error in the Examiner’s determination that a “subset” of creators that encompass an entire list can broadly, but reasonably, still be considered a “subset.” Id. Claims 5, 6, and 15 We also sustain the Examiner’s obviousness rejection of dependent claims 5, 6, and 15, in which West and Coplien have been applied in separate combinations with the Lenkov/Nishimura/Kodera applied against independent claims 1, 11, and 19. Appellants have provided no separate arguments for the patentability of these claims and instead rely on arguments asserted with respect to independent claims 1, 11, and 19, which arguments we found unpersuasive as discussed, supra. Claims 7 and 16 We also sustain the Examiner’s obviousness rejection of dependent claims 7 and 16. Appellants contend that the Examiner erred in concluding that the combination resulting from the addition of Phillips to the Lenkov/Nishimura/Kodera combination satisfies the requirements of claims 7 and 16. According to Appellants, Phillips does not teach or suggest the claimed feature of tracking a count of the number of object creations Appeal 2011-004566 Application 11/197,895 8 resulting from multiple creators for a class. App. Br. 17-18. Appellants also points to a previous Appeal Decision in Appeal 2007-003437, dated June 12, 2009, in support of their position.1 We find no error, however, in the Examiner’s determination that Phillips is not needed for a proper obviousness rejection. Ans. 22. Appellants have not challenged the Examiner’s determination that Kodera’s teaching of triggering a creation breakpoint when all individual breakpoints associated with tasks/member functions are triggered satisfies the number of hits threshold condition as claimed. As explained by the Examiner, the claimed conditional threshold is satisfied by Kodera’s halting of program execution when the total number of hits meets a threshold condition, i.e., all the breakpoints have been hit. Claims 9 and 17 The Examiner’s obviousness rejection of dependent claims 9 and 17 is also sustained. We find Appellants’ arguments (App. Br. 18) unpersuasive of error in the Examiner’s determination that the addition of Bliss to the Lenkov/Nishimura/Kodera satisfies all of the claimed limitations. As explained by the Examiner, Bliss’s teaching of a user interface permitting a user to remove breakpoints when combined with the Lenkov/Nishimura/Kodera combination satisfies the claimed feature of removing creation breakpoints and individual breakpoints in response to user input. 1 Appeal 2007-003437 involved US SN 09/997,990 (now US Patent No. 7,644,394), the parent application of the instant application on appeal. Appeal 2011-004566 Application 11/197,895 9 CONCLUSION OF LAW Based on the analysis above, we conclude that the Examiner did not err in rejecting claims 1-19 and 21 for obviousness under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s decision rejecting claims 1-19 and 21, all of the appealed claims, under 35 U.S.C. § 103(a). 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 rwk Copy with citationCopy as parenthetical citation