Ex Parte Kalra

Board of Patent Appeals and Interferences

Aug 24, 2010

10229186 (B.P.A.I. Aug. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MOHIT KALRA
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Appeal 2009-000716
Application 10/229,186
Technology Center 2100
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 16-35. We have jurisdiction under 35 U.S.C. § 6(b).

Invention
Appellant’s invention relates to the use of breakpoints in debuggers to
initiate time-based breaks (Spec. 1, ll. 5-6).
Independent claim 16 is illustrative:
16. A method comprising:
setting, in response to a user request, a breakpoint at a
first location in the executable code of a computer
program;
encountering the breakpoint during execution of the
executable code;
activating a timer in response to encountering the
breakpoint;
monitoring the timer;
performing a first specified action when a specified time
period has elapsed.
References
The Examiner relies on the following references as evidence in
support of the rejection:
Andrew P. Tolmach et al., Debugging Standard ML Without Reverse
Engineering, Proc. of the 1990 ACM Conference on LISP and
Functional Programming, pp. 1-12 (1990) (“Tomalch ’90”).

Andrew P. Tolmach et al., Debuggable Concurrency Extensions for
Standard ML, Proc. of the 1991 ACM/ONR Workshop on Parallel and
Distributed Debugging, pp. 120-131 (1991) (“Tomalch ’91”).
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Rejection
Claims 16-35 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Tomalch ’90 and Tomalch ’91.2

ISSUES
Issue 1
Appellant argues that “the counter disclosed in [Tolmach ’90] is
activated upon initialization of a program and is incremented each time an
‘event’ is executed” (App. Br. 9).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches
activating a timer in response to encountering a breakpoint?
Issue 2
Appellant argues that Tolmach ’90 “discloses incrementing a counter
whenever an automatically inserted event is encountered in the code” (App.
Br. 9).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches
performing a first specified action when a specified time period has elapsed?

2 The Examiner merely uses Tolmach ’91 as evidence that “[p]ausing is
inherent in debugging process, particularly it is associated with time [sic]”
(Ans. 11) (emphasis added). Appellant is aware that Tolmach ’91 “is only
referenced with respect to dependent claim 31” (App. Br. 6), but Appellant
does not raise any issues based on the Examiner’s use of Tolmach ’91.
Therefore, we do not address the proprietary of the Examiner’s use of
Tolmach ’91 in conjunction with Tolmach ’90 as the basis for the § 102(b)
rejection of claim 31, and claim 32 which depends therefrom.
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Issue 3
Appellant argues that Tolmach ’90 “discusses how breakpoints can be
set with respect to location or with respect to a number of events that have
been executed” (App. Br. 9).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches
performing a second specified action if a specified time period has not
lapsed?
Issue 4
Appellant argues that “to effectuate location-based breakpoints,
[Tolmach ’90] teaches monitoring of a counter that identifies when events
have been encountered, which is the same mechanism used to effectuate
‘time’-based breakpointing” (App. Br. 10).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches
determining whether a breakpoint is a time-based breakpoint, and wherein
activating a timer includes activating the timer if the breakpoint is a time-
based breakpoint?
Issue 5
Appellant argues that Tolmach ’90 “discloses . . . the incrementing of
a counter each time an event that is automatically inserted into code by the
debugger is executed” (App. Br. 10) (footnote omitted).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches a
timer that measures the time during which a central processing unit executes
a specified process, a timer that measures the time during which an operating
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system kernel is allocated to a process, and a timer that measures a wall-
clock time?
Issue 6
Appellant argues that Tolmach ’90 “is devoid of any reference to a
hardware breakpoint” (App. Br. 10).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches a
hardware breakpoint?
Issue 7
Appellant argues that “[t]he Examiner has misconstrued [claim 30]”
(App. Br. 11).
Issue: Did the Examiner err in finding that Tolmach ’90 teaches
wherein a specified action includes re-activating a timer and wherein a
method includes repeating a step of performing?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Tolmach ’90 discloses that “encountering a breakpoint simply
returns control to the user; in principle, it would be easy to
associate actions with these breakpoints as well” (p. 4, col. 2).
2. Tolmach ’90 discloses that “[t]o restart the user program from an
arbitrary previous time t, the debugger resets the program state to
the latest time ≤ t for which it has a checkpoint, sets targetTime
to t, and re-executes forward” (p. 4, col. 1).
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3. Tolmach ’90 discloses that the “time-travel mechanism is
encapsulated in a routine called gotoTime, which is used as a
primitive by many debugger commands” (p. 4, col. 1).
4. Tolmach ’90 discloses that “a break is taken at an event execution
if the time of that event matches the value of a targetTime
variable maintained by the debugger” (p. 2, col. 2).
5. Tolmach ’90 discloses “[a] summary of . . . instrumentation code”
(p. 2, col. 2):
fun event(eventNum,lastBindTime,boundValues) =
(currentTime := !currentTime + 1;
if (!currentTime) = (!targetTime) then
break (eventNum,lastBindTime,boundValues)
else ();
update (eventTimes,eventNum,!currentTime))
(p. 3, fig. 1).
6. Tolmach ’90 discloses that “the methods described can handle
multiple breakpoints and mixtures of time- and location-based
breakpoints without difficulty” (p. 4, col. 2).
7. Tolmach ’90 discloses that “Execution Time [measured in CPU
(central processing unit) seconds] is the time needed to execute
the instrumented program to completion without taking breaks”
(p. 8, cols. 1-2; tab. 1).
8. Tolmach ’90 discloses an I/O (input/output) program
instrumented for debugging (p. 7; tab. 1).
9. Tolmach ’90 discloses that an “instrumented version [of code]
requires only a small additional data structure describing events”
(p. 9, col. 1).
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10. The Specification discloses that “[t]he ‘wall-clock’ time tracks
. . . the time elapsed . . . . as if an external entity is using an
accurate stopwatch to calculate the time elapsed” (p. 20, ll. 9-11).

PRINCIPLES OF LAW
Claim interpretation
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d
1473, 1477 (Fed. Cir. 1998).
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
Issue 1
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
activating a timer in response to encountering a breakpoint. Based on
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Appellant’s arguments in the Appeal Brief, we will decide the appeal of
claims 16-35 with respect to issue 1 on the basis of claim 16. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Tolmach ’90 teaches that a break is taken at an event execution if the
time of that event matches the value of a targetTime variable (FF 4).
Tolmach ’90 further teaches returning control to a user after encountering a
breakpoint (FF 1) and restarting a user program at time t by setting
targetTime to t (FF 2). The time-travel mechanism is encapsulated in a
routine called gotoTime, which is used by many debugger commands
(FF 3).
The targetTime variable is a timer because it establishes a time at
which to break. Setting targetTime to time t enables this time-based break,
therefore setting targetTime activates the timer. Appellant claims
“activating a timer in response to encountering [a] breakpoint” (claim 16).
However, the meaning of “in response to,” given a reasonably broad
interpretation, allows for additional prerequisites for the activating, such as a
user request. Therefore, Tolmach ’90 teaches activating a timer (setting
targetTime to t) in response to (after the user invokes a debugger command
that uses gotoTime) encountering a breakpoint (the user having regained
control after a breakpoint was encountered).
For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejection of claim 16, and claims 17-35
which fall therewith with respect to this issue.
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Issue 2
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
performing a first specified action when a specified time period has elapsed.
Based on Appellant’s arguments in the Appeal Brief, we will decide the
appeal of claims 16-35 with respect to issue 2 on the basis of claim 16. See
37 C.F.R. § 41.37(c)(1)(vii).
Tolmach ’90 teaches that a break is taken at an event execution if the
time of that event matches the value of a targetTime variable (FF 4). This
only occurs when the currentTime variable has been incremented a
sufficient number of times (FF 5). Time is needed to execute the
instrumented program (FF 7), thus, currentTime is incremented as time
passes. Therefore, Tolmach ’90 teaches performing a first specified action
(breaking) when a specified time period has elapsed (once currentTime
equals targetTime).
For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejection of claim 16, and claims 17-35
which fall therewith with respect to this issue.
Issue 3
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
performing a second specified action when a specified time period has not
elapsed.
Tolmach ’90 teaches performing an update when currentTime does
not equal targetTime (FF 5). If execution of the instrumented code resumes
after a break, then this update can also be performed when currentTime
equals targetTime (id.). However, the claim language does not preclude
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performing a second specified action in the event that a specified time period
has elapsed. Therefore, Tolmach ’90 teaches performing a second specified
action (updating) if a specified time period has not elapsed (when
currentTime does not equal targetTime).
For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejection of claim 19 with respect to this
issue.
Issue 4
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
activating a timer based on a time-based breakpoint. Based on Appellant’s
arguments in the Appeal Brief, we will decide the appeal of claims 20 and
21 with respect to issue 4 on the basis of claim 20. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Tolmach ’90 teaches handling mixtures of time- and location-based
breakpoints (FF 6). Tolmach further teaches setting targetTime as part of a
time-travel mechanism encapsulated in a routine called gotoTime.
Therefore, Tolmach ’90 teaches determining (handling) whether a
breakpoint is a time-based breakpoint (vis-à-vis a location-based
breakpoint), and wherein activating a timer (setting targetTime) includes
activating the timer if the breakpoint is a time-based breakpoint (as part of
gotoTime).
For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejection of claim 20, and claim 21 which
falls therewith with respect to this issue.
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Issue 5
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
the claimed time measurements.
As discussed previously, in Tolmach ’90 currentTime is incremented
as time passes (FF 5, 7). Tolmach ’90 teaches that a break is taken in
instrumented code when currentTime equals targetTime (FF 4 , 5). Thus,
targetTime is a timer that measures when sufficient time has passed.
Execution time is measured in CPU seconds (FF 7). Therefore,
Tolmach ’90 teaches a timer (targetTime) that measures (measuring) the
time during which a central processing unit (when sufficient CPU time has
passed) executes a specified process (within instrumented code).
Tolmach ’90 provides an I/O program as an example of program
instrumented for debugging (FF 8). Appellant does not dispute the
Examiner’s finding that the I/O program “meets the definition of [an
operating system] kernel program” (Ans. 19). Therefore, Tolmach ’90
teaches a timer (targetTime) that measures (measuring) the time during
which an operating system kernel is allocated (when sufficient CPU time has
passed) to the process (within an instrumented operating system kernel
program).
As disclosed in the Specification, wall-clock time is like an external
entity calculating elapsed time with an accurate stopwatch (FF 10). Wall-
clock time elapses while Execution Time elapses (FF 7). Therefore,
Tolmach ’90 teaches a timer (targetTime) that measures (measuring) a
wall-clock time (Execution Time).
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For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejections of claim 22, 23, and 24 with
respect to this issue.
Issue 6
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
a hardware breakpoint. Based on Appellant’s arguments in the Appeal
Brief, we will decide the appeal of claims 28 and 33 with respect to issue 6
on the basis of claim 28. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant submits that “one example of . . . a hardware breakpoint is a
debug register which is part of a chip” (App. Br. 10) (emphasis added).
Because hardware breakpoints are not limited to debug registers, we find
that a hardware breakpoint is any breakpoint implemented with the aid of
hardware. Tolmach ’90 teaches breakpoints implemented with instrumented
code (FF 5). Tolmach ’90 further teaches that an instrumented version of
code requires an additional data structure (i.e., memory, a type of hardware)
describing events (FF 9). Therefore, Tolmach ’90 teaches a breakpoint that
is a hardware breakpoint (implemented with the aid of memory).
For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejection of claim 28, and claim 33 which
falls therewith with respect to this issue.
Issue 7
Appellant challenges the Examiner’s finding that Tolmach ’90 teaches
a specified action that includes re-activating a timer and repeating a step of
performing.
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Tolmach ’90 teaches a specified action of breaking (FF 4) and
returning control to a user (FF 1). Tolmach ’90 also teaches restarting a
program and setting targetTime to t (FF 2) based on the invocation of a
debugger command (FF 3). When currentTime equals targetTime, the
breaking is once again performed (FF 4- 5). Therefore, Tolmach ’90 teaches
wherein a specified action (a break) includes re-activating a timer (setting
targetTime to t based on invocation of a debugger command) and wherein a
method includes repeating the step of performing (re-enabling the breaking
once currentTime equals the new targetTime).
For at least these reasons, we find no evidence persuasive of error in
the Examiner’s 35 U.S.C. § 102(b) rejection of claim 30 with respect to this
issue.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we find no
evidence persuasive that the Examiner erred in finding:
1. that Tolmach ’90 teaches activating a timer in response to
encountering a breakpoint (issue 1);
2. that Tolmach ’90 teaches performing a first specified action when
a specified time period has elapsed (issue 2);
3. that Tolmach ’90 teaches performing a second specified action if a
specified time period has not lapsed (issue 3);
4. that Tolmach ’90 teaches determining whether a breakpoint is a
time-based breakpoint, and wherein activating a timer includes
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activating the timer if the breakpoint is a time-based breakpoint
(issue 4);
5. that Tolmach ’90 teaches a timer that measures the time during
which a central processing unit executes a specified process, a
timer that measures the time during which an operating system
kernel is allocated to a process, and a timer that measures a wall-
clock time (issue 5);
6. that Tolmach ’90 teaches a hardware breakpoint (issue 6); and
7. that Tolmach ’90 teaches wherein a specified action includes re-
activating a timer and wherein a method includes repeating a step
of performing (issue 7).
DECISION
We affirm the Examiner’s decision rejecting claims 16-35 under
35 U.S.C. § 102(b).
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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