Ex Parte Bates

Patent Trial and Appeal Board

Dec 20, 2016

12969804 (P.T.A.B. Dec. 20, 2016)

United States Patent and Trademark Office
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.
12/969,804 12/16/2010 Cary L. Bates ROC920100312US1 4927
12/22/201630206 7590
IBM CORPORATION
ROCHESTER IP LAW DEPT. 917
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
LOUIE, JUE WANG
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARY L. BATES
Appeal 2015-007777
Application 12/969,804
Technology Center 2100
Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and
ALEX S. YAP, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal “relates to computer
systems and more particularly to multiple threads of a program that
encounters] breakpoints.” Spec. 11.
Appeal 2015-007777
Application 12/969,804
Representative Claim
1. A method comprising computer-executed steps of:
receiving input specifying a first instruction of a program
containing a plurality of instructions as a breakpoint;
responsive to a first thread of a plurality of threads of said
program encountering said first instruction during execution of
said first thread, halting execution of said first thread at said first
instruction and receiving control by a debug engine, said debug
engine presenting an interactive debug engine user interface for
said first thread to a user;
[LI] responsive to halting execution of said first thread at
said first instruction and receiving control by said debug engine,
automatically setting at least one all-threads breakpoint while
said first thread is halted at said first instruction;
responsive to automatically setting an all-threads
breakpoint while said first thread is halted at said first instruction,
[L2] automatically detecting any occurrences of
encountering said at least one all-threads breakpoint by
threads of said plurality of threads other than saidfirst thread to
determine a subset of the plurality of threads that execute the first
instruction while the first thread is halted at the first instruction,
wherein the first instruction is a read instruction; and
[L3] presenting identifiers of the subset of the plurality of
threads that execute the first instruction while the first thread is
halted at the first instruction via said debug engine user interface
for the first thread.
(Contested limitations LI, L2, and L3 are emphasized.)
Rejections
A. Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 18, and 19 are rejected under 35
U.S.C. § 103(a) as being obvious over the combined teachings and
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suggestions of Erickson et al. “Effective Data-Race Detection for the
Kemel”(2010) (hereinafter “Erickson”), in view of Sistare et al. (US
7,865,883 Bl; Jan. 4, 2011, hereinafter “Sistare”), further in view of
Bates et al. (US 6,378,125 Bl; Apr. 23, 2002, hereinafter “Bates
‘125”).
B. Claims 3,10, and 16 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Erickson,
Sistare, Bates ‘125, and Kekic et al. (US 5,999,179; Dec. 7, 1999,
hereinafter “Kekic”), and further in view of Marejka (US 7,512,950
B1; Mar. 31,2009).
C. Claims 4, 11, and 17 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Erickson,
Sistare, Bates ‘125, and further in view of Bates et al. (US 6,587,967
Bl; July 1, 2003, hereinafter “Bates ‘967”).
D. Claims 7, 14, and 20 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Erickson,
Sistare, Bates ‘ 125, Bates ‘967, and further in view of Blasciak et al.
(US 5,265,254; Nov. 23, 1993, hereinafter “Blasciak”).
Grouping of Claims
Based upon Appellant’s arguments, we decide the appeal of rejection
A of claims 1, 5, 6, 8, 12, 13, 18, and 19 on the basis of representative claim
1. We address rejection A of claims 2, 9, and 15 separately, infra. To the
extent Appellant has not advanced separate, substantive arguments for
rejections B—D of the remaining claims on appeal, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/969,804
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We find Appellant’s arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the action from which this appeal is taken, and
(2) the findings, legal conclusions, and explanations set forth in the Answer
in response to Appellant’s arguments. (Ans. 13—27). We highlight and
address specific findings and arguments for emphasis in our analysis below.
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of references would have taught or suggested contested
limitations LI—L3, within the meaning of independent claim 1, under a
broad but reasonable interpretation?
We find this appeal turns upon claim construction, particularly
regarding the contested claim term “all-threads breakpoint.” (Claim l).1
Regarding independent claim 1 and Erickson, Appellant contends,
inter alia: “Erickson does not disclose setting an ‘all-threads breakpoint’
or detecting threads which encounter it.” (App. Br. 8). Appellant clarifies
his interpretation of “breakpoint” (claim 1), as follows:
As used in appellant’s specification and claims, a “breakpoint”
is a code instruction which causes a break in execution when
encountered. Typically, a special instruction is inserted into the
code at the breakpoint causing a trap to a breakpoint handling
routine. Thus, the break only occurs when the specific code
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997); Cf with Spec. 1 53 (“The previous detailed
description is, therefore, not to be taken in a limiting sense.”).
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Application 12/969,804
instruction is encountered.
(App. Br. 11).
We note there are two types of breakpoints recited in claim 1:
(1) “receiving input specifying a first instruction of a program containing a
plurality of instructions as a breakpoint;” and, (2) “automatically setting at
least one all-threads breakpoint while said first thread is halted at said first
instruction; . . . .”
Claim 1 requires that a first thread is halted when a recited
“breakpoint” first instruction is encountered, thus responsively
“automatically setting at least one all-threads breakpoint while said first
thread is halted at said first instruction.” (Emphasis added). Thus, the “all­
threads breakpoint” is the label or moniker accorded to the second type of
breakpoint that is set automatically.2
In the Brief (11), Appellant urges:
[djuring the time window that the thread is halted, Erickson
detects and logs any accesses to the same physical memory
location that was accessed by the halted thread. The Examiner
apparently equates detecting access to a specific physical
memory location with detecting execution of a specific code
instruction. They are simply not the same.
Appellant contends Erickson’s “data breakpoint” is not the same as the
claimed “all-threads breakpoint” because “Erickson’s ‘data breakpoints’ are
2 Merely providing an automatic way to replace a manual activity, which
accomplished the same result, is not sufficient to distinguish over the prior
art. In re Venner, 262 F.2d 91, 95 (CCPA 1958). Moreover, an improved
product in the art is obvious if that “product [is] not [one] of innovation but
of ordinary skill and common sense.” KSR 550 U.S. at 421.
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not true breakpoints at all. Erickson uses the term ‘data breakpoints’ to
describe the physical memory locations which are trapped.” (App. Br. 12).
Given Appellant’s contentions {id.), we find the dispositive issue
before us on appeal is whether the scope of the contested “all-threads
breakpoint” is limited to only an instruction breakpoint, and thus precludes
the Examiner’s broader reading on Erickson’s data breakpoint. (Final Act. 3;
Ans. 14).
In the “Response to Arguments” (Ans. 14), the Examiner further
explains the basis for the rejection, and finds:
Erickson teaches that while a first thread is halted at a breakpoint
at a first instruction (i.e., when a code breakpoint fires, pc is the
first instruction, see page 152, Fig. 2, the instruction lines
“OnCodeBreakpoint (pc)”, and page 152, right column, last
paragraph), another breakpoint is automatically set (i.e.,
DataCollider sets a data breakpoint, see page 152, Fig. 2, the
instruction lines “SetDataBreakpointRW (loc, size)”, and
“SetBreakpointW (loc, size)”, and page 152, right column, last
paragraph - page 153, left column, first paragraph). Erickson
further teaches that other threads encountering the second
breakpoint are presented to the user in a report (i.e., DataCollider
sets a data breakpoint to trap conflicting accesses by other
threads, see page 152, right column, last paragraph — page 153,
left column, first paragraph, and data race reports from
DataCollider provide debug information of the racing threads,
see page 153, left column, paragraphs 3, 4).
(Emphasis added).
We find no definition of “all-threads breakpoint” in Appellant’s
claim 1, or in the Specification, that would preclude the Examiner’s broader
reading. (Final Act. 3; Ans. 14). Nor has Appellant argued a particular
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definition.3 Turning to Appellant’s Specification for context, we find the
contested claim 1 term “all-threads breakpoint” is described merely in
terms of exemplary, non-limiting embodiments:
“Fig. 5 depicts a flowchart of example processing for all-threads
breakpoints, according to an embodiment of the invention.” (Spec. 140;
see also 41—42, Fig. 5, blocks 515, 525); Appeal Br. 3 (“Summary of
Claimed Subject Matter”) (Emphasis added). Exemplary Blocks 515 and
525 of Figure 5 of the Specification merely describe: (if TRUE 515)
“DEBUG ENGINE STORES THREAD ID OF CURRENT THREAD AND
CURRENT INSTRUCTION TO THREAD HISTORY DATA.” (if FALSE
525) “DEBUG ENGINE PRESENTS UI AND SETS ALL-THREADS
BREAKPOINT AT THE CURRENT INSTRUCTION (OR AT THE
ENTRY AND EXIT INSTRUCTIONS OF THE PROCEDURE THAT
COMPRISES THE CURRENT INSTRUCTION).”
We note the “all-threads breakpoint” recited in claim 1 is silent
regarding the aforementioned language {id.), as described in blocks 515 and
525 of Figure 5 of Appellant’s Specification. We decline Appellant’s
invitation to read limitations from the Specification into the claims. (App.
Br. 10-12).
Moreover, in considering the doctrine of claim differentiation, we
note that claim 1 is broader than dependent claim 2, which further limits the
3 Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). See also
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015)
(“This court has repeatedly ‘cautioned against limiting the claimed invention
to preferred embodiments or specific examples in the specification.’”)
(quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed.
Cir. 2002)). See also n.l, supra.
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“all-threads breakpoint” of claim 1 to an instruction breakpoint (e.g., a
code breakpoint). Therefore, there is a legal presumption under the doctrine
of claim differentiation that the “all-threads breakpoint” recited in claim 1
is not limited to merely an instruction breakpoint.4 For these reasons, we
are not persuaded the Examiner’s reading is overly broad, unreasonable, or
inconsistent with Appellant’s Specification.5 See Spec. 1 53 (“The previous
detailed description is, therefore, not to be taken in a limiting sense.”).
Accordingly, we conclude the scope of the contested “all-threads
breakpoint” broadly but reasonably encompasses the “data breakpoint”
(“SetDataBreakpointRW”) taught by Erickson (p. 152, col. 2), as found by
the Examiner. (Ans. 14).
In the event our reviewing court might adopt a more narrow
construction, we find substituting a code or instruction breakpoint for a data
breakpoint would have merely realized a predictable result to an artisan at
4 “When different words or phrases are used in separate claims, a difference
in meaning is presumed.” Nystrom v. TREXCo., Inc., 424 F.3d 1136, 1143
(Fed. Cir. 2005). Under the doctrine of claim differentiation, “the presence
of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.” Phillips v. AWHCorp, 415 F.3d 1303, 1315 (Fed. Cir. 2005). This
presumption is “especially strong when the limitation in dispute is the only
meaningful difference between an independent and dependent claim, and
one party is urging that the limitation in the dependent claim should be read
into the independent claim.” SunRace Roots Enterprise Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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the time of Appellant’s invention, and thus would have been a “predictable
use of prior art elements according to their established functions.” KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Further, because there are a
finite number of limited options (code or instruction breakpoints versus data
breakpoints), we conclude such substitution would have at least been
obvious to try.6
Therefore, on this record, and regarding the contested “all-threads
breakpoint” recited in limitations LI and L2, Appellant has not persuaded
us the Examiner erred. Additionally, regarding contested limitation L3, we
agree with and adopt the Examiner’s findings regarding limitation L3
(“presenting identifiers ....”) as being taught or suggested by the debugging
user interface of Bates ’125 (Col. 8,11. 45—63, col. 9,11. 9—22). (Ans. 6). 7
6 Where “the problem is known, the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option,” a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008), citing
KSR, 550 U.S. at 398. See also Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (stating the number of options
must be “small or easily traversed”).
7 Regarding the recited contested L3 step of “presenting identifiers” (claim
1), the Manual of Patent Examining Procedure (MPEP) guides: “where the
claim as a whole is directed [to] conveying a message or meaning to a
human reader independent of the intended computer system, and/or the
computer-readable medium merely serves as a support for information or
data, no functional relationship exists.” MPEP § 2111.05 (III.) (9th Ed., Rev.
07.2015, Last Revised Nov. 2015). See also Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”).
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Regarding the Examiner’s proffered combination of references,
Appellant further urges: “The suggestion to collect the information and
present it as claimed came from only one source: [Ajppellanf s disclosure”
(App. Br. 16). However, Appellant does not point to any evidence of record
that shows combining the references in the manner proffered by the
Examiner would have been “uniquely challenging or difficult for one of
ordinary skill in the art” or would have “represented an unobvious step over
the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor has Appellant
provided objective evidence of secondary considerations which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, on this record, and based upon a preponderance of the
evidence, Appellant has not persuaded us of error regarding the Examiner’s
ultimate legal conclusion of obviousness regarding contested limitations El,
L2, and L3 of representative claim 1. Accordingly, we sustain the
Examiner’s rejection A of representative claim 1, and rejection A of grouped
claims 5, 6, 8, 12, 13, 18, and 19 (not separately argued), which fall with
claim 1 (see Grouping of Claims, supra).
Rejection A of Claims 2, 9, and 15
Claim 2 recites: “The method of claim 1, wherein the automatically
setting at least one all-threads breakpoint while the first thread is halted at
said first instruction comprises: automatically setting an all-threads
breakpoint at the first instruction while the first thread is halted at the first
instruction.” (Emphasis added).
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Regarding claims 2, 9, and 15 Appellant additionally contends:
Even assuming argue[ndo] that it was proper to read Erickson’s
“data breakpoint” as an “all-threads breakpoint” as recited in
claim 1, an assertion appellant vigorously contests for the reasons
stated in Part 1A above, the additional limitations of claim 15 and
dependent claims 2 and 9 refute any such interpretation, and
make it perfectly clear that Erickson does not disclose the setting
of an “all-threads breakpoint”, as that term is qualified in the
claims.
(App. Br. 17).
We note claims 9 and 15 recite similar language that further limits the
scope of the “all-threads breakpoint” to an instruction breakpoint (i.e.,
synonymous with code breakpoint). See our discussion above regarding the
doctrine of claim differentiation. See also n.4, supra.
However, because we have found above (regarding our discussion of
claim 1) that substituting a code or instruction breakpoint for a data
breakpoint would have merely realized a predictable result to an artisan at
the time of Appellant’s invention (and therefore would have been obvious
under the guidance of KSR), on this record, Appellant has not persuaded us
the Examiner’s legal conclusion of obviousness for claims 2, 9, and 15 is in
error. Accordingly, we sustain the Examiner’s rejection A of claims 2, 9,
and 15.
Remaining Rejected Claims
Appellant does not separately and/or substantively argue the
remaining dependent claims which are rejected under rejections B, C, and D.
Argument not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, we sustain the Examiner’s rejections B, C, and D of the
remaining claims over the cited combinations of prior art.
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Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s rejections of claims 1—20 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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