Ex Parte Bhogal et al

Patent Trial and Appeal Board

May 12, 2016

12761390 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121761,390 04/15/2010
49330 7590
DUKEW, YEE
Yee & Associates, P.C.
P.O. BOX 802333
DALLAS, TX 75380
05/16/2016
FIRST NAMED INVENTOR
Kulvir Singh Bhogal
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.
S VL920100005US 1 1066
EXAMINER
RUTTEN, JAMES D
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUL VIR SINGH BHOGAL, JENNIFER ELIZABETH KING,
CHRISTINA KAREN LAURIDSEN, and ROBERT ROSS PETERSON
Appeal2014-006535
Application 12/761,3901
Technology Center 2100
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-12 and 14--25. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellants' claimed invention relates to "a software debugger that is
activated to provide program debug data when certain Key Performance
Indicators (KPis) of a software program meet established criteria." Spec.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2014-006535
Application 12/7 61,3 90
if 1. Of the claims on appeal, claim 1 is illustrative of the subject matter of
the appeal and is reproduced below.
1. A computer-implemented method for debugging a
computer program, comprising:
establishing a target value and a normal operating range
for a Key Performance Indicator related to the performance of
the program, wherein a debugger coupled to the program is
activated when the indicator reaches the target value, wherein the
target value and the normal operating range include utilization
percentages for a monitored resource, wherein the Key
Performance Indicator relates to a network bandwidth;
enabling the debugger coupled to the program; and
activating the debugger when the Key Performance
Indicator exceeds the normal operating range and reaches the
target value during an execution of the program.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1-5, 7, 9, 10, 12, 16-18, and 20-
24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Xu et al. (US 7, 721,265 Bl; l\1ay 18, 20 l 0) (hereinafter "Xu"), \Vaclav,rsky
et al. (US 5,446,874; Aug. 29, 1995) (hereinafter "Waclawsky"), and Ennis,
Jr. et al. (US 5,867,483; Feb. 2, 1999) (hereinafter "Ennis"), collectively
referred to as the "combination."
(2) The Examiner rejected claims 6, 8, 19, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Xu, Waclawsky,
Ennis, and Tinker (US 2002/0073398 Al; June 13, 2002).
(3) The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Xu, Waclawsky, Ennis, and
Kaler et al. (US 2004/0010778 Al; Jan. 15, 2004) (hereinafter "Kaler").
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Application 12/7 61,3 90
(4) The Examiner rejected claims 14 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Xu, Waclawsky,
Ennis, and Iyengar (US 2007/0038738 Al; Feb. 15, 2007).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants' arguments and we incorporate herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the July 8, 2013 Final Office Action (Final Act. 3-11) and (2) the reasons
and rebuttals set forth in the Examiner's Answer (Ans. 2-5). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. We, however, highlight and address specific findings and
arguments below for emphasis.
(1) Whether Waclawsky is analogous art
"Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved." In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381F.3d1320, 1325
(Fed. Cir. 2004)(emphasis added).
Appellants contend W aclawsky is non-analogous art as to claim 1
because it fails to meet either of these two tests. App. Br. 7. The Examiner
concludes that Waclawsky is analogous art and meets both tests. Ans. 2-5.
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Application 12/7 61,3 90
(i) Same field of endeavor
Appellants contend Waclawsky is not from the same field of endeavor
as claim 1. See App. Br. at 8. Appellants first argue "Waclawsky is directed
towards establishing relative benchmarks for the varying behavior of a data
communications network, useful in expert system monitoring, analysis and
control of the data communications network, especially multimedia
environments." See id. (citing Waclawsky 3 :23-29). Appellants next argue
"Appellants' claim 1 is directed towards a 'method for debugging a
computer program."' See App. Br. 8. Appellants then contend "[t]hose of
ordinary skill would understand that establishing relative benchmarks in a
multimedia data communications network is entirely different than
debugging a computer program," and thus, Waclawsky is not in the same
field of endeavor as claim 1. 2 See id.; see also Reply Br. 4.
The Examiner finds Waclawsky teaches, inter alia, "monitoring
network resources for performance within a normal operating range," and
affecting corrective changes in the network "[i]f the network operates
outside the bounds of normal behavior." See Ans. 3 (citing Waclawsky
3:49-56). The Examiner further finds the field of endeavor of claim 1
includes monitoring a resource related to the performance of a program (e.g.,
2 Appellants also extensively discuss the facts of In re Klein and relate them
to this Appeal to argue Waclawsky is not in the same field. See App. Br. 8-
11 (citing In re Klein, 647 F.3d 1343 (Fed. Cir. 2011)). We find this
discussion inapposite because the Klein Court only had the "reasonably
pertinent to the particular problem" test before them. See Klein, 647 F.3d at
1348. We similarly find Appellants' contention that the Klein Court must
have believed the references were not in the same field because the Court
found them to be non-analogous unpersuasive. App. Br. 11 (acknowledging
the Court "did not consider the 'same field of invention' prong").
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Application 12/7 61,3 90
relating to network bandwidth) and activating a debugger if a normal
operating range is exceeded. See Ans. 3; see also id. at 3--4 (citing Spec.
i-fi-130, 35, 40). The Examiner concludes Waclawsky and claim 1 share the
same field of endeavor relating to resource monitoring and benchmarking,
including for "perform[ing] problem determination and analysis to identify
and analyze temporary failures," which is "a form of debugging." Ans. 4
(citing Waclawsky 1 :66-2:8, 9: 15-18, 9:31-35).
We agree with the Examiner that W aclawsky is in the same field of
endeavor as the claimed invention. We find Waclawsky and the claimed
invention both relate to resource benchmarking (i.e., establishing a normal
operating range so divergence can be recognized) and monitoring to identify
and analyze problems and failures. Waclawsky 1:66-2:8, 3:36-37, 3:49-56,
9:15-18, 9:31-35; App. Br. 20 (claim 1); Spec. 3-5, 30, 35, 40. We also
note that the scope of analogous art is to be construed broadly. See Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme
Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 ...
(2007), directs us to construe the scope of analogous art broadly.").
(ii) Reasonably pertinent to the particular problem
Appellants argue Waclawsky is not reasonably pertinent to the
problems they faced in claim 1. See App. Br. 12. Specifically, Appellants
argue "the problems to be solved by claim 1 relate to issues associated with
activating a program debugger during execution without having to know an
approximate location for setting a code breakpoint." See id. at 13 (citing
Spec. i-fi-13-5). Appellants contend Waclawsky instead "is directed towards
establishing network benchmarks, and particularly to accumulating network
transaction and activity information to establish benchmark values, and then
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Application 12/7 61,3 90
comparing current network transactions and activities to those benchmark
values." See App. Br. 13 (citing Waclawsky Abstract). Appellants also
argue the Examiner improperly broadens the scope of the problem faced by
Appellants rather than adhering to the actual problem they faced for claim 1.
See App. Br. 14--15 (citing In re Oetiker 977 F.2d 1443, 1446 (Fed. Cir.
1992)); Reply Br. 3.
The Examiner finds the faced problems concern when to activate a
debugger, as well as how to monitor and associate performance indicators
with system resource and program behavior for such activation. See Ans. 5.
The Examiner further finds Waclawsky relates to debugging, including via
its teachings of system monitoring, performance evaluation, and program
behavior and troubleshooting. See id. (citing Waclawsky col. 3:36-37,
3:49-56). The Examiner concludes Waclawsky is reasonably pertinent to
the problems faced by Appellants. Ans. 5.
We find Appellants' arguments unpersuasive. To determine what is
"analogous prior art" for the purpose of analyzing the obviousness of the
subject matter at issue, "any need or problem known in the field of endeavor
at the time of the invention and addressed by the ... [application] at issue
can provide a reason for combining the elements in the manner claimed."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). We agree with the
Examiner that a problem Appellants faced in claim 1 concerns determining
when to activate a debugger. See App. Br. 20 (claim 1); Spec. i-fi-13-5. We
also agree with the Examiner and find Waclawsky is reasonably pertinent to
this problem. See Waclawsky 1 :66-2:8 (teaching monitoring for when a
performance network factor exceeds a predefined threshold in identifying
failures and degradations); 3:36-37, 3:49-56 (teaching building benchmarks
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Application 12/7 61,3 90
for use in monitoring when a characteristic is outside normal behavior for
performing corrective action). We also note Appellants reliance on Oetiker
with respect to a strict teaching, suggestion, or rnotivation to combine
("TS1\tf") test is rnisp1aced because this test has been superseded. See App.
Br. 14 (citing Oetiker); but see KSR, 5501.J.S. at 415.
(2) Whether the combination fails to teach a limitation of claim 1
Appellants argue the combination fails to teach or suggest
"establishing a target value and a normal operating range for a Key
Performance Indicator related to the performance of the program, wherein a
debugger coupled to the program is activated when the indicator reaches the
target value, wherein the target value and the normal operating range include
utilization percentages for a monitored resource, wherein the Key
Performance Indicator relates to a network bandwidth," as recited in claim 1.
App. Br. 5. Specifically, Appellants argue the combination fails to teach or
suggest the "debugger coupled to the program is activated when a Key
Performance Indicator relating to a network bandwidth reaches a target
value." See App. Br. 6-7.
The Examiner finds the combination teaches or suggests this disputed
limitation. Final Act. 3. As to Xu, the Examiner finds it teaches invoking a
debugger upon the occurrence of a watched event (i.e., target value). See id.
(citing Xu Fig. 3, 7:66-8:2 ("watched events are monitored by the debugger"
and "can be any event for which the debugger can be configured to
respond"). As to Waclawsky, the Examiner finds it teaches establishing a
normal operating range for a network and monitoring the network resources
for performance indicators. See Final Act. 3--4 (citing Waclawsky 3: 10-16,
3:49-56). As to Ennis, the Examiner finds it teaches or suggests
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Application 12/7 61,3 90
"monitoring network bandwidth as a performance indicator using a
utilization percentage." See Final Act. 4 (citing Ennis Abst., 3:24--29).
We are not apprised of any error in the Examiner's finding that the
combination teaches or suggests this disputed limitation. See Xu Fig. 3,
7:66-8:2; Waclawsky 3:10-16, 3:49-56; Ennis Abstract, 3:24--29.
Furthermore, we note the combination, and its combined teachings, must be
considered as a whole, rather than attacking individual references in
isolation. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding each reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole.").
CONCLUSION
Based on the above findings and reasoning, we sustain the Examiner's
rejection of claim 1. Appellants did not provide separate arguments for the
patentability of claims 2-5, 7, 9, 10, 12, 16-18, and 20-24, which were the
subject of this same rejection, and, thus, we also sustain the Examiner's
rejection of these claims. As to the remaining three rejections and claims on
appeal - claims 6, 8, 11, 14, 15, 19, and 25 -, Appellants rely on their
arguments for claim 1. Accordingly, we also sustain the Examiner's
rejections of these claims.
DECISION
We affirm the Examiner's decision rejecting claims 1-12 and 14--25.
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
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