Ex Parte Delmonte et al

Board of Patent Appeals and Interferences

Oct 6, 2011

11089109 (B.P.A.I. Oct. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JANIS DELMONTE, JOE DOUGLAS BOLDING, and
DANIEL G. TORMEY
____________
Appeal 2009-010388
Application 11/089,1091
Technology Center 2100
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on March 24, 2005. The real party in interest is Hewlett-Packard
Development Co., L.P. (App. Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1-11 and 18-25. (App. Br. 2.) Claims
12-17 have been cancelled. (Id.) We have jurisdiction under 35 U.S.C. §
6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method, computer-readable medium, and
system for evaluating code usage that includes monitoring instructions
executed by a processor, counting instances of execution of each instruction,
correlating the executed instructions with source code instructions, and
providing an indication of source code usage to a user. (Spec. 2, ll. 10-14.)
Illustrative Claim
1. A method for evaluating code usage, the method
comprising:

monitoring instructions of a program executed by a
processor;

counting instances of execution of each of the
instructions;

correlating the executed instructions with source code
instructions; and

providing from the correlating an indication of source
code usage to a user;

wherein no code is added to the program to facilitate
monitoring.

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Prior Art Relied Upon
Bolosky US 5,485,574 Jan. 16, 1996
Levine US 2005/0071816 A1 Mar. 31, 2005
(filed on Sept. 30, 2003)
Bennett US 6,934,935 B1 Aug. 23, 2005
(filed Apr. 25, 2000)
Dimpsey US 2005/0210452 A1 Sept. 22, 2005
(filed Mar. 22, 2004)

Rejections on Appeal
Claims 1, 8-10, 18, and 22 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bolosky.
Claims 2-7 and 19-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bolosky and Levine.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bolosky and Dimpsey.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bolosky and Bennett.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bolosky, Bennett, and Levine.
Appellants’ Contentions
Appellants contend that Bolosky’s disclosure of counting the number
of instructions executed by a function each time the function is called does
not describe “counting instances of execution of each of the instructions,” as
recited in independent claim 1. (App. Br. 9; Reply Br. 2-3.) Further,
Appellants argue that Bolosky’s disclosure of not requiring modifications to
the program being monitored does not describe that “no code is added to the
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program to facilitate monitoring,” as claimed. (App. Br. 10-11; Reply Br.
3.) In particular, Appellants allege that Bolosky’s disclosure of adding code
to the program being monitored to enable breakpoints necessary to count
execution of the instructions directly contradicts the Examiner’s position that
Bolosky’s disclosure of not requiring modifications amounts to not adding
code to the program being monitored. (App. Br. 11-12; Reply Br. 3-5.)
Examiner’s Findings and Conclusions
The Examiner finds that Bolosky’s disclosure of a facility that allows
a user to count the number of executions executed by a function each time
the function is called describes “counting instances of execution of each of
the instructions,” as recited in independent claim 1. (Ans. 17.) Further, the
Examiner finds that Bolosky’s disclosure of providing a nonintrusive
approach to performance monitoring that does not require any modifications
to the program being monitored describes “no code is added to the program
to facilitate monitoring,” as claimed. (Id. at 18-19.) Moreover, the
Examiner distinguishes Bolosky’s disclosure of adding breakpoints to a
program under debugging execution from a program under normal
execution, which should not be interrupted by breakpoints. (Id. at 19.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that
Bolosky anticipates independent claim 1? In particular, the issue turns on
whether Bolosky describes the following claim limitations:
(a) “counting instances of execution of each of the instructions;”
and
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(b) “wherein no code is added to the program to facilitate
monitoring.”

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Bolosky
FF 1. Bolosky discloses a facility within the kernel of an operating
system that monitors the performance of programs. (Col. 2, ll. 13-15.) In
particular, Bolosky discloses that the facility allows a user to count the
number of instructions executed by a function each time that the function is
called. (Id. at ll. 16-18.)
FF 2. Bolosky discloses that the facility within the kernel of the
operating system enhances the speed of monitoring and provides a
nonintrusive approach to performance monitoring that does not require any
modifications to the program being monitoring. (Id. at ll. 28-32.)
FF 3. Bolosky discloses using a breakpoint interrupt to break the
uninhibited execution of a program. (Col. 3, ll. 36-37.) Bolosky discloses
that a breakpoint interrupt is helpful in debugging and performance
monitoring programs. (Id. at ll. 36-37.) Bolosky also discloses that in many
instances, the majority of a program may already be debugged or tuned and,
therefore, only a small portion of the program needs to be examined in more
detail. (Id. at ll. 39-42.) Bolosky discloses that a breakpoint interrupt is
especially suited in such circumstances. (Id. at ll. 42-43.)
FF 4. Bolosky discloses generating a breakpoint interrupt by inserting
a special operation code into a program. (Id. at ll. 43-44.)
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IV. ANALYSIS
35 U.S.C. § 102(b) Rejection
Claim 1
Independent claim 1 recites, inter alia, 1) “counting instances of
execution of each of the instructions;” and 2) “wherein no code is added to
the program to facilitate monitoring.”
As detailed in the Findings of Fact section supra, Bolosky discloses a
facility located within the kernel of an operating system that allows a user to
count the number of instructions executed by a function each time the
function is called. (FF 1.) In particular, by counting the number of
instructions executed by a function each time the function is called, Bolosky
describes identifying and recording each instance of execution of each
instruction by the function. Thus, we find that Bolosky describes “counting
instances of execution of each of the instructions,” as recited in independent
claim 1.
Further, since independent claim 1 recites “wherein no code is added
to the program to facilitate monitoring,” independent claim 1 includes a
negative limitation. Although permissible,2 a negative limitation merely
recites what a claim lacks and, therefore, is broad by its very nature.
Consequently, the scope and breadth of independent claim 1 is fully met by
a method that includes monitoring the instructions of a program executed by

2 See generally Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 923
(Fed. Cir. 1991) (“The use of a negative limitation to define the metes and
bounds of the claimed subject matter is a permissible form of expression.”)
(citation omitted).
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a processor wherein the method does not otherwise include the negative
limitation—namely adding code to facilitate monitoring.
Bolosky discloses that the facility located within the kernel of the
operating system provides a nonintrusive approach to performance
monitoring that does not require any modifications to a program being
monitored. (FF 2.) Since the disclosed performance monitoring does not
require any modifications to a program being executed by the processor, we
agree with the Examiner that such failure to modify the program is
tantamount to “wherein no code is added to the program to facilitate
monitoring” as recited in independent claim 1. (Ans. 18-19.)
Moreover, we are not persuaded by Appellants’ argument that
Bolosky’s disclosure of adding code to the program being monitored to
enable breakpoints necessary to count execution of the instructions directly
contradicts the Examiner’s position that Bolosky’s disclosure of not
requiring modifications amounts to not adding code to the program being
monitored. (App. Br. 11-12; Reply Br. 3-5.) We find Appellants’ argument
irrelevant to whether the Examiner’s position is in error.
Nonetheless, in order to fully address Appellants’ argument, Bolosky
discloses that generating a breakpoint interrupt by inserting special operation
code into a program is helpful in order to break the uninhibited execution of
a program. (FFs 3 and 4.) In particular, Bolosky discloses that breakpoint
interrupts are especially suited in circumstances where only a small portion
of the program needs to be examined in more detail. (FF 3.) We find that
such disclosure implies that although generating a breakpoint interrupt may
be suitable in some circumstance, it may not be suitable in other
circumstances. Since independent claim 1 does not explicitly differentiate
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between monitoring the instructions of a long and short program, we find
that the special circumstance where the instructions of a short program are
being monitored breakpoint interrupts need not be generated. Therefore, we
are satisfied that Bolosky’s disclosure specifically prescribes against adding
special operation code to a program to facilitate monitoring (e.g., monitoring
the instructions of a short program). As a result, we find that Appellants’
argument does not show reversible error in the Examiner’s rejection.
Consequently, since the textual portion of Bolosky relied upon by the
Examiner sufficiently describes the negative limitation, it follows that
Appellants have not shown the Examiner erred in finding that Bolosky
anticipates independent claim 1.
Claims 8-10
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 8-10. (See App. Br. 8-10.)
Consequently, we accept Appellants’ grouping of dependent claims 8-10
with independent claim 1. (Id.) Therefore, dependent claims 8-10 fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 18 and 22
Independent claim 18 recites similar claim limitations as independent
claim 1. (See App. Br. 13.) Therefore, for the same reasons discussed
supra, Appellants have not shown the Examiner erred in finding that
Bolosky anticipates independent claim 18. Moreover, Appellants do not
provide separate and distinct arguments for patentability with respect to
dependent claim 22. (Id.) Consequently, we accept Appellants’ grouping of
dependent claim 22 with independent claim 18. (Id.) Therefore, dependent
claim 22 falls with independent claim 18. See 37 C.F.R. § 41.37(c)(1)(vii).
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35 U.S.C. § 103(a) Rejections
Claims 2-7, 11, 19-21, and 25
Appellants argue that neither Levine, Dimpsey, nor Bennett cure the
noted deficiencies of Bolosky and, therefore, the cited combinations do not
render dependent claims 2-7, 11, 19-21, and 25 unpatentable. (See App. Br.
14-17.) We do not agree. As discussed supra, we find no such deficiencies
in Bolosky for Levine, Dimpsey, or Bennett to remedy. It follows that
Appellants have not shown the Examiner erred in concluding that: 1) the
combination of Bolosky and Levine renders dependent claims 2-7 and 19-21
unpatentable, 2) the combination of Bolosky and Dimpsey renders
dependent claim 11 unpatentable; and 3) the combination of Bolosky,
Bennett, and Levine renders dependent claims 25 unpatentable.
Claims 23 and 24
Appellants contend that Bennett’s disclosure of counting the number
of cycles to execute the instructions of a basic block does not teach or
suggest “count[ing] instances of execution of each instruction,” as recited
independent claim 23. (App. Br. 15-16.) However, we find that Appellants’
argument is misplaced. As discussed supra, the Examiner relied upon
Bolosky to teach or suggest the disputed limitation. It follows that
Appellants have not shown the Examiner erred in concluding that the
combination of Bolosky and Bennett renders independent 23 unpatentable.
Moreover, Appellants do not provide separate and distinct arguments
for patentability with respect to dependent claim 24. (Id.) Consequently, we
accept Appellants’ grouping of dependent claim 24 with independent claim
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23. (Id.) Therefore, dependent claim 24 falls with independent claim 23.
See 37 C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSIONS OF LAW
1. Appellants have not shown the Examiner erred in rejecting
claims 1, 8-10, 18, and 22 as being anticipated under 35 U.S.C. § 102(b).
2. Appellants have not shown the Examiner erred in rejecting
claims 2-7, 11, 19-21, and 23-25 as being unpatentable under 35 U.S.C. §
103(a).

VI. DECISION
1. We affirm the Examiner’s decision to reject claims 1, 8-10, 18,
and 22 as being anticipated under 35 U.S.C. § 102(b).
2. We affirm the Examiner’s decision to reject claims 2-7, 11, 19-
21, and 23-25 as being unpatentable 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

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