Ex Parte Emuchay et al

Patent Trial and Appeal Board

Sep 28, 2016

11193840 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111193,840 0712912005
37945 7590 09/30/2016
DUKEW, YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Nduwuisi Emuchay
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.
AUS920050545US 1 9212
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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 NDUWUISI EMUCHA Y and
JEANX. YU
Appeal2014-008826
Application 11/193,8401
Technology Center 3600
Before HUBERT C. LORIN, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Nduwuisi Emuchay, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner's Final rejection of claims 1, 11, 33, 35, 37-
42, 44, and 46-50.2 We have jurisdiction under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
2 Claims 21, 34, 36, 43, 45 and 51-59 were withdrawn from appeal. See
Appeal Brief, filed Sept. 6, 2011, 4.
Appeal2014-008826
Application 11/193,840
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method for correlating business
workflows with transaction tracking by a computer, comprising:
identifying, by the computer, an instrumentation point in a
business process of a business workflow that invokes an IT resource
that carries out at least a portion of the business process;
and
associating, by the computer at the instrumentation point, the
business process and the IT resource with a transaction name having
business semantics such that correlation data gathered about the IT
resource is linked with the business process.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bansal et al.
("Bansal")
Mamou et al.
("Mamou")
Rees et al.
("Rees")
US 2003/0120593 Al
US 2005/0222931 Al
US 7,437,734 B2
June 26, 2003
Oct. 6, 2005
Oct. 14, 2008
The following rejections are before us for review:
1. Claims 1, 11, 33, 35, 40-42, 44, 49 and 50 are rejected under 35
U.S.C. § 102(b) as being anticipated by Bansal.
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Application 11/193,840
2. Claims 37 and 46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bansal and Mamou.
3. Claims 38, 39, 47, and 48 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bansal, Mamou, and Rees.
ISSUES
Did the Examiner err in rejecting claims 1, 11, 33, 35, 40-42, 44, 49
and 50 are rejected under 35 U.S.C. § 102(b) as being anticipated by Bansal?
Did the Examiner err in rejecting claims 37 and 46 under 35 U.S.C.
§ 103(a) as being unpatentable over Bansal and Mamou?
Did the Examiner err in rejecting claims 38, 39, 47, 48 under 35
U.S.C. § 103(a) as being unpatentable over Bansal, Mamou, and Rees?
ANALYSIS
The rejection of claims 1, 11, 33, 35, 40--42, 44, 49 and 50 are rejected
under 35 U.S.C. § 102(b) as being anticipated by Bansal.
We will reverse the rejection for the reasons stated in the Appeal
Brief.
The Specification defines an "instrumentation point [as] a call to a
transaction tracking tool to begin gathering information about the
transaction." Spec. 2: 14--15. All the claims require "an instrumentation
point in a business process of a business workflow that invokes an IT
resource that carries out at least a portion of the business process"
(independent claims 1, 11 and 21 ). In other words, as reasonably broadly
construed in light of the Specification, the claims require a call (i.e., an
instrumentation point) in a business process of a business workflow that
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Application 11/193,840
invokes an IT resource which IT resource carries out at least a portion of
the business process.
The Examiner cites paragraphs 922-932 of Bansal as evidence that
said claimed instrumentation point is described in the prior art. Final Act. 4.
We have reviewed said passages. We agree with the Appellants that,
albeit the phrase "instrumentation points" is recited, the discussion there is
directed to "probe points." Said "probe points" are described as
"incorporated into the application code itself, to capture timing information
that can be used to assess the performance of important sub-functions within
the application." Bansal para. 923; see also App. Br. 9. This does not
identically describe a call (i.e., an instrumentation point) in a business
process of a business workflow that invokes an IT resource which IT
resource carries out at least a portion of the business process as claimed.
The Examiner responded to the Appellants arguments by arguing that
Paragraphs 0923-0932 then go on to lay out additional
instrumentation points (considered probative) that are another flavor
of monitoring (i.e. similar to the monitoring in previous paragraphs)
which capture additional information. The "probe points"
terminology is not to introduce some different type of instrumentation
but merely to describe the type of monitoring being done. In fact, the
paragraph goes on to say, "[t]his type of monitoring, application
instrumentation, requires probe (descriptive) points . ... " Simply put
and mirroring the first sentence of 0923, these "probe points" are just
a second type of instrumentation points that are monitoring with a
different flavor. The fact that the monitoring is accomplished by
incorporation into the "application code" is not germane to Appellants
limitations. Lastly, the identification of instrumentation points is
explicit if not inherent in the fact that they are addressing precisely the
function, location and operation of the instrumentation points. It
logically follows that if the points had not been identified then they
cannot be utilized for the precise functionality they were intended;
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Application 11/193,840
monitoring. From the reverse perspective, could someone monitor
something they have not identified. Therefore, the Examiner not only
considers the instrumentation points as "identified" but also for the
functions they are to identify.
Paragraphs 0924-0932 further recite the counting of times the
section of code, object or module has been invoked, logging the
information to the extent that 0932 goes on to provide an exemplary
system where Measure Ware allows for various application
performance monitoring. In the least, the Examiner considers these
disclosures as an "instrumentation point in a business process of a
business workflow that invokes an IT resource that carries out at least
a portion of the same business process." Simply put these
instrumentation (probe) points invoke an IT process (i.e. monitoring)
that is a part of the overall process and workflow.
Ans. 8-9.
However, as we understand it, the "probe points" are used for
"application-internal-monitoring". See Bansal para. 923. "Measure Ware" is
an example of a product whereby such application performance monitoring
can be accomplished. See Bansal paras. 928-932. But this is not identical to
a call (i.e., an instrumentation point) in a business process of a business
workflow that invokes an IT resource which IT resource carries out at least a
portion of the business process as claimed. It is different. To anticipate,
there must be no difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field of the
invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576 (Fed. Cir. 1991). It is possible that the Bansal probe points
could be made to invoke an IT resource which IT resource carries out at
least a portion of the business process as part of the application performance
monitoring. But "[i]nherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
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Application 11/193,840
from a given set of circumstances is not sufficient." Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939), quoted in Continental Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
For the foregoing reasons, the rejection is not sustained.
The rejection of claims 37 and 46 under 35 U.S.C. § 103(a) as being
unpatentable over Bansal and Mamou.
The rejection of claims 38, 39, 47, and 48 under 35 U.S.C. § 103(a) as being
unpatentable over Bansal, Mamou, and Rees.
These rejections are also not sustained. The claims here rejected are
dependent claims and their rejection relies on the finding that Bansal
describes the "instrumentation point" as claimed. Because we found Bansal
does not so describe said "instrumentation point" as claimed and there is no
other position but for that Bansal describes it, we find that a prima facie case
of obviousness has not been made out in the first instance for claims 37-39
and 46-48.
CONCLUSIONS
The rejection of claims 1, 11, 33, 35, 40---42, 44, 49 and 50 are
rejected under 35 U.S.C. § 102(b) as being anticipated by Bansal is reversed.
The rejection of claims 37 and 46 under 35 U.S.C. § 103(a) as being
unpatentable over Bansal and Mamou is reversed.
The rejection of claims 38, 39, 47, 48 under 35 U.S.C. § 103(a) as
being unpatentable over Bansal, Mamou, and Rees is reversed.
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Application 11/193,840
DECISION
The decision of the Examiner to reject claims 1, 11, 33, 35, 37--42, 44,
and 46-50 is reversed.
REVERSED
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