Ex Parte Golender et al

Board of Patent Appeals and Interferences

Oct 8, 2009

09799338 (B.P.A.I. Oct. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VALERY GOLENDER, IDO BEN MOSHE, and SHLOMO
WYGODNY
____________________

Appeal 2009-002126
Application 09/799,3381
Technology Center 2100
____________________

Decided: October 9, 2009
____________________

Before JAY P. LUCAS, ST. JOHN COURTENAY III, and STEPHEN C.
SIU, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 5, 2001. Appellants claims the benefit under
35 U.S.C. § 119 of provisional application 60/186,636, filed 3/3/2000. The
real party in interest is BMC Software, Inc.
Appeal 2009-002126
Application 09/799,338
STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1-32 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). The oral
hearing scheduled for October 6, 2009 was waived.

Appellants’ invention relates to a system and method for debugging
software from a remote location. In the words of Appellants:
The present invention overcomes these and other
problems associated with debugging and tracing the execution
of computer programs. The present invention provides features
that allow a remote software developer or help desk person to
debug configuration problems such as missing or corrupted
environment variables, files, DLLs, registry entries, and the
like. In one embodiment, a "visual problem monitor" system
includes an information-gathering module that gathers run-time
information about program execution, program interaction with
the operating system and the system resources. The
information-gathering module also monitors user actions and
captures screen output. In one embodiment, file interactions,
DLL loading and/or registry accesses are monitored non-
intrusively. In one embodiment, the relevant support
information captured by the information-gathering module is
saved in a log file. The information-gathering module passes
the gathered information to an information-display module. In
one embodiment, the information-gathering module attaches to
the running program using a hooking process. The program
being monitored need not be specially modified or adapted to
allow the information-gathering module to attach.
The information-display module allows a support
technician (e.g., a software developer, a help desk person, etc.)
to see the user interactions with the program and corresponding
reactions of the system. This eliminates the "questions and
answers" game that support personnel often play with users in
order to understand what the user did and what happened on the
user's PC. In one embodiment, the information-display module
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Application 09/799,338
allows the support technician to remotely view environment
variables, file access operations, system interactions, and user
interactions that occur on the user's computer. In one
embodiment, the information-display module allows the
support technician to remotely view crash information (in the
event of a crash on the user's computer), system information
from the user's computer, and screen captures from the user's
computer.

(Spec. 4, l. 14 to Spec. 5, l. 10).

Claim 1 is exemplary:
1. A software system that facilitates the process of
identifying and isolating software execution problems within a
client program without requiring modifications to the
executable of the client program, said system comprising :

an information-gathering module for monitoring
selected events occurring during execution of the client
program and storing data describing said events in a log
file, wherein said information-gathering module monitors
API events, message events, and program events, and
wherein said information-gathering module obtains
screen captures during execution of the client program,
and wherein said information-gathering module connects
to said client program at runtime by hooking an in-
memory executable image of said client program; and

an information-display module for displaying
information from said log file to a user, wherein said
information-display module lists events logged in said
log file, and wherein said information-display module
displays screen captures obtained by said information-
gathering module, and wherein said information-display
module runs on a different computer than said
information-gathering module, thereby allowing remote
troubleshooting of said client program

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Appeal 2009-002126
Application 09/799,338
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Parker US 5,781,720 Jul. 14, 1998
Kaler US 6,467,052 B1 Oct. 15, 2002

REJECTION
The Examiner rejects the claims as follows:

R1: Claims 1-32 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Kaler in view of Parker.

Groups of Claims:
The arguments will be reviewed in the order of their presentation.
Appellants contend that the claimed subject matter is not rendered
obvious by Kaler in combination with Parker for failure of the references to
be properly combined and for the failure of Parker to teach the claimed
limitations as stated in the rejection. The Examiner contends that each of the
claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
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ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the references are properly combined and whether Kaler and Parker teach
the gathering of screen captures during execution of the client program as
claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a system and method that provides support for
remotely debugging software already installed at the client’s offices.
(Spec 1, l. 15). An information-gathering module, hooked onto the client
software, gathers run-time information about the software while it is
running, including events and screen captures, and stores the results in a
log. (Spec 4, l. 19). The information is passed to an information-display
module where the information is remotely processed, analyzed, and
screen shots are viewed. (Spec 5, l. 6).
2. The patent reference Kaler teaches a method and apparatus for analyzing
the performance of a data processing system, either in real time or later
after gathering data, in a “post mortem” analysis. (Abstract; Col. 9, l.
53). More specifically, a client program is analyzed using a system
called a Visual Studio Analyzer (VSA) at a remote site. (Col. 10, l. 53).
Events are monitored and stored in logs, and then analyzed. (Col. 22, ll.
13-34). The VSA provides viewing on a screen of an animated model of
the application, including the key variables. (Fig. 19; Col. 41, ll. 5 to 9).
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3. The Parker patent reference presents a method for testing computer
programs which use a Graphical User Interface. (Title, Abstract). When
reporting the result of an analysis of the test program, the data may be
stored and later compare it to subsequent runs of a test. (Col. 27, l. 60).
The captured information about the information includes bitmap
snapshots and screen shots. (Col. 30, ll. 8-15).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 401.

“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).
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References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). 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 Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejection of Appellants’
claims under 35 U.S.C. § 103 on pages 3 to 11 of the Examiner’s Answer.
In opposition, Appellants present a number of arguments.
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Arguments with respect to the rejection
of claims 1 and related claims
under 35 U.S.C. § 103 [R1]

The Examiner has rejected claim 1 (and all other claims) for being
obvious over the combination of Kaler in view of Parker. Kaler is proposed
to teach all of the elements of the claim except obtaining screen captures
during execution of the client program. That feature is said to be taught by
the patent to Kaler, in a patent from related field of endeavor (software
testing). (Ans. 4, bottom).
Appellants first argue that a person of skill in the art would not
combine Parker with Kaler as there is no suggestion to combine the
references except by hindsight from the Appellants’ disclosure. The
Examiner argues well that the combination is proper, as both references
derive from the same field of endeavor. (Ans. 12, middle). (See also In re
Kahn,441 F.3d at 985-86, and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
both cited above.) In view of this judicial guidance and the recited findings
of the Examiner, we decline to find error in this rejection.
Appellants next argue that Parker, which was cited for its teaching of
displaying screen captures, does not in fact do that. (Br. 7, middle). The
Examiner has specifically pointed to such teachings in Parker (Ans. 4,
bottom) and has fully discussed their use in the rejection. (Ans. 12, bottom).
We find no basis for finding error in the rejection based on this argument.

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We observe that these arguments are repeated in various forms for
each of the remaining claims 2-32. (Br. 6-18). As such, we conclude that
the Appellants have not established error in the rejection of all of the claims.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not demonstrated error in the Examiner’s rejection of
claims 1-32 under 35 U.S.C. § 103.

DECISION
The Examiner’s rejection [R1] of claims 1-32 is affirmed
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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