Ex parte Fortin et al.

Board of Patent Appeals and Interferences

Dec 7, 2000

08400779 (B.P.A.I. Dec. 7, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL R. FORTIN and ROBERT J. URQUHART
____________
Appeal No. 1998-0718
Application No. 08/400,779
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ON BRIEF
____________
Before HAIRSTON, JERRY SMITH and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1, 2, 4, 7-9, 12
and 13, which constitute all the claims remaining in the
application. The final rejection of claims 1 and 2 is not
being appealed. Therefore, this appeal relates only to the
rejection of claims 4, 7-9, 12 and 13. An amendment after
final rejection was filed on May 7, 1997 but was denied entry
by the examiner.
Appeal No. 1998-0718
Application No. 08/400,779
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The disclosed invention pertains to a method and
apparatus for monitoring the execution of a software program
on a computer system.
Representative claim 4 is reproduced as follows:
4. A system for monitoring execution of a software
program having a plurality of executable instructions on a
computer system, said system comprising:
storage means for storing a plurality of monitoring
programs;
instrumentation means for modifying said software program
for execution monitoring by replacing one of said plurality of
executable instructions with an invocation of a first one of
said plurality of monitoring programs, said instrumentation
means comprising:
means for copying one of said plurality of instructions
to said first monitoring program;
means for replacing said one of said plurality of
instructions in said software program with an instruction
invoking said first monitoring program; and
means for returning control from said first monitoring
program to said software program upon completion of said
first monitoring program; and
means for invoking a second of said plurality of
monitoring programs from said first monitoring program before
returning control to said software program.
The examiner relies on the following references:
Haswell-Smith 4,866,665 Sep. 12, 1989
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Application No. 08/400,779
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Will 5,129,087 July 07, 1992
Claims 4, 7-9, 12 and 13 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers
Haswell-Smith in view of Will.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 4, 7-9, 12 and 13. Accordingly, we reverse.
Appeal No. 1998-0718
Application No. 08/400,779
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In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
Appeal No. 1998-0718
Application No. 08/400,779
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case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to
make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
Independent claims 4 and 9 are drafted in similar
functional means language except that claim 4 is directed to a
system whereas claim 9 is directed to a computer program
product. The examiner essentially rejects claims 4 and 9 on
the same rationale. Specifically, the examiner notes that
Haswell-Smith teaches a system for monitoring the execution of
a computer program, but the examiner recognizes that Haswell-
Appeal No. 1998-0718
Application No. 08/400,779
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Smith does not teach the plurality of monitoring programs as
claimed [answer, pages 3-5]. Will teaches a system for
monitoring data structures representative of a plurality of
users in a distributed computer processing system. Although
Will has apparently nothing to do with monitoring execution of
a software program (as intended by Haswell-Smith and
appellants), the examiner finds the claimed plurality of
monitoring programs to be broadly met by the control blocks of
Will which are assigned to each individual user. The examiner
asserts the obviousness of applying the teachings of Will to
the system of Haswell-Smith to provide that system with
enhanced capability [id.]. The examiner also points to a
teaching of Bolosky [answer, page 6] although Bolosky is no
longer a reference being relied on.
Appellants argue that Haswell-Smith does not teach a
plurality of monitoring programs as recited in the claimed
invention and that Will also does not teach a plurality of
monitoring programs despite the examiner’s assertions to the
contrary. Appellants argue that the monitoring units of Will
only monitor the status of a connected user and not the
instructions of a computer program. Thus, appellants argue
Appeal No. 1998-0718
Application No. 08/400,779
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that neither Haswell-Smith nor Will teaches the chain of
monitoring programs as recited in the claims. Appellants also
argue that Haswell-Smith and Will come from non-analogous art
areas and there would be no valid rationale for combining
their teachings [brief, pages 5-9].
Although some of appellants’ comments in the brief appear
to be directed to the invention of claim 1 which is not being
appealed, we nevertheless agree with most of appellants’
arguments as set forth in the brief. Specifically and most
critically, we agree with appellants that Will is completely
unrelated to the chaining of a plurality of monitoring
programs for monitoring execution of a software program. We
find the examiner’s attempt to interpret the claim language as
broad enough to be met by Will’s control modules to be
untenable. Will not only provides no basis for making the
modification of Haswell-Smith proposed by the examiner, but we
fail to see how the modification proposed by the examiner
actually results in the invention being claimed because Will
relates only to the monitoring of a plurality of data
structures, not software programs. The combination of
Appeal No. 1998-0718
Application No. 08/400,779
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Haswell-Smith and Will is nothing more than an improper
attempt to reconstruct appellants’ invention in hindsight.
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Therefore, we do not sustain the rejection of the
appealed claims based on the teachings of Haswell-Smith and
Will. Accordingly, the decision of the examiner rejecting
claims 4, 7-9, 12 and 13 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
jg
Appeal No. 1998-0718
Application No. 08/400,779
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