Ex parte Burch et al.Download PDFBoard of Patent Appeals and InterferencesOct 23, 200008370963 (B.P.A.I. Oct. 23, 2000) Copy Citation THIS OPINION WAS NOT WRITTEN FOR PUBLICATION The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. Paper No. 9 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CARL D. BURCH and RAJIV KUMAR ____________ Appeal No. 1998-1514 Application No. 08/370,963 ____________ ON BRIEF ____________ Before HAIRSTON, FLEMING, and DIXON, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the examiner's final rejection of claims 1 and 2, which are all of the claims pending in this application. We REVERSE. Appeal No. 1998-1514 Application No. 08/370,963 2 BACKGROUND The appellants' invention relates to a profile based optimization of shared libraries. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below. 1. A method of operating a digital computer to provide instrumentation data for a shared library running in an environment in which programs are loaded and unloaded by a loader, said environment supporting the operation of at least one program in addition to said shared library, said program utilizing at least one function provided by said shared library, said environment including means for storing a predetermined environment variable that may be read by any program running in said environment, said method comprising the steps of: causing said loader to examine said environment to determine if said predetermined environment variable has been set; and storing profile based optimization data stored in said shared library code in a location specified by said predetermined environmental variable if said predetermined environmental variable was present in response to a command being sent to said loader. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Janis et al. (Janis) 5,247,681 Sep. 21, 1993 Graham et al., “gprof: a Call Graph Execution Profiler”, Association for Computing Machinery (1982) (Graham) Appeal No. 1998-1514 Application No. 08/370,963 3 Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being unpatentable over Graham in view of Janis. Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellants regarding the above-noted rejections, we make reference to the examiner's answer (Paper No. 8, mailed Oct. 27, 1997) for the examiner's reasoning in support of the rejections, and to the appellants’ brief (Paper No. 7, filed July 14, 1997) for the appellants’ arguments thereagainst. OPINION In reaching our decision in this appeal, we have given careful consideration to the appellants’ specification and claims, to the applied prior art references, and to the respective positions articulated by the appellants and the examiner. As a consequence of our review, we make the determinations which follow. Appellants describe the operation of shared libraries and the problem which exists in profiling their operation because the shared libraries remain resident in the operating environment as opposed to client programs which are loaded, run and unloaded by the computer operating system. (See brief at page 2.) Appellants argue that Graham does not discuss the problem inherent in instrumenting shared libraries. Appeal No. 1998-1514 Application No. 08/370,963 4 Id. at 3. We agree with appellants. Appellants argue that Graham does not teach the step of “causing said loader to examine said environment to determine if said predetermined environment variable has been set” as recited in claim 1. We agree with appellants. Appellants argue that Janis does not remedy the deficiency in Graham and further does not teach saving information of any kind to a location specified by an environmental variable. We agree with appellants. Appellants further argue that the teachings of Graham could be modified, but that the examiner has not pointed to any suggestion in the prior art to modify Graham to address the inherent problem with shared libraries. We agree with appellants. Here, the examiner has not, in our view addressed the language of the claims nor has the examiner provided evidence or a convincing line of reasoning to modify the teaching of Graham to address the inherent problem of instrumenting shared libraries. Therefore, the examiner has not set forth a prima facie case of obviousnesss, and we will not sustain the rejection of claim 1 or dependent claim 2. Appeal No. 1998-1514 Application No. 08/370,963 5 CONCLUSION To summarize, the decision of the examiner to reject claims 1 and 2 under 35 U.S.C. § 103 is reversed. REVERSED KENNETH W. HAIRSTON ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT MICHAEL R. FLEMING ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JOSEPH L. DIXON ) Administrative Patent Judge ) jld/vsh Appeal No. 1998-1514 Application No. 08/370,963 6 RECORDS MANAGER LEGAL DEPARTMENT 20BO HEWLETT PACKARD COMPANY P O BOX 10301 PALO ALTO, CA 94303-0890 Copy with citationCopy as parenthetical citation