Ex Parte Mahlik et al

Board of Patent Appeals and Interferences

Apr 13, 2009

10163650 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. MAHLIK and SUSETTE M. TOWNSEND

____________

Appeal 2008-4707
Application 10/163,6501
Technology Center 2400
____________

Decided: 2 April 14, 2009
____________

Before JEAN R. HOMERE, JAY P. LUCAS, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

1 Application filed June 6, 2002. The real party in interest is International
Business Machines Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date.
Appeal 2008-4707
Application 10/163,650

2
DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-30 mailed August 15, 2006, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellants invented a system, method, and computer readable storage
medium for monitoring one or more performance metrics of a computer
system over a monitor interval. A monitor program increases a length of the
monitor interval in response to determining that the monitor program has
fallen behind in processing data for the one or more performance metrics.
(Spec., Abstract.)

B. ILLUSTRATIVE CLAIM
This appeal contains claims 1-30. Claims 1, 15, and 22 are
independent claims. Claim 1 is illustrative:
1. A method for dynamically adjusting a monitor interval
specifying how often to collect data values for one or more
performance metrics, comprising:
monitoring, with a monitor program, the one or more
performance metrics of a computer system over the monitor interval;
determining whether the monitor program has fallen
behind processing data values for the one or more performance
metrics collected during previous intervals of the monitor interval;
and
Appeal 2008-4707
Application 10/163,650

3
if so, automatically increasing a duration of the monitor
interval.

C. REFERENCES
The sole reference relied upon by the Examiner in rejecting the claims
on appeal are as follows:
Yamaguchi US 5,802,303 Sep. 1, 1998

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 1-30 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Yamaguchi.

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Appeal
Brief (App. Br.) on January 16, 2007. The Examiner mailed an Examiner’s
Answer (Ans.) on May 24, 2007. Appellants filed a Reply Brief (Reply Br.)
on July, 24, 2007.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Yamaguchi
1. Yamaguchi discloses that “[t]he monitor data is periodically
transmitted at the monitor acquisition interval designated when the monitor
is activated” (col. 4, ll. 52-54).
Appeal 2008-4707
Application 10/163,650

4
2. In Yamaguchi, “[e]ven when the pertinent monitor data is not
completely processed by the monitor data receiving process 032, the
network interface 91 of the control node 10 is able to write the next monitor
data in the memory in an overlapping manner in which the current data
overlaps with the previous data in the storage area” (col. 4, ll. 54-59).
3. In Yamaguchi, “the processing is not adversely influenced by the
delay in the process of the monitor data collecting program 03” (col. 4, ll.
59-61).
4. In Yamaguchi, “the monitor data acquiring process and monitor
collecting process are conducted independently of each other. Thanks to this
provision, it is possible to remove, for example, the problem in which the
overall monitor data acquiring process is delayed due to a temporary
retardation in the monitor collecting process” (col. 5, ll. 16-21).

IV. PRINCIPLES OF LAW
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004).

Appeal 2008-4707
Application 10/163,650

5
V. ANALYSIS
Common Feature In All Claims
Our representative claim, claim 1, recites, inter alia, “determining
whether the monitor program has fallen behind processing data values for
the one or more performance metrics collected during previous intervals of
the monitor interval; and if so, automatically increasing a duration of the
monitor interval.” Independent claims 15 and 22 recite similar limitations.
Thus, the scope of each of the independent claims includes determining
whether the monitor program has fallen behind, and, if so, increasing the
duration of the monitor interval.

The Anticipation Rejection
We now consider the Examiner’s rejection of claims 1-30 under 35
U.S.C. § 102(b) as being anticipated by Yamaguchi.

The Examiner cites to Yamaguchi, col. 2, lines 11-15 and found that
“because Yamaguchi discloses a ‘monitor program’ that has a configurable
monitor interval, it anticipates the present claims” (Ans. 5).
Appellants contend that “[n]othing in the static monitor interval,
‘specified at initiation of the monitor’ discloses a monitor program
configured to determine whether the monitor program has fallen behind . . .”
(App. Br. 13-14). Appellants further contend that “[w]hen the monitor
program disclosed in Yamaguchi is initiated, a user specifies a monitor
interval . . . .If the user desires to change the interval, the monitor program
may be stopped, and restarted with a new interval” (id. at 13).
Appeal 2008-4707
Application 10/163,650

6
Issue: Have Appellants shown that the Examiner erred in finding that
Yamaguchi discloses determining whether the monitor program has fallen
behind processing data values and if so, automatically increasing the
duration of the monitor interval?

The Examiner suggests that because Yamaguchi discloses a
configurable monitor interval, Yamaguchi anticipates the determining step
and the automatically increasing the duration of the monitor interval step
(Ans. 5). We disagree.
While Yamaguchi discloses that “the interval of time to reference the
acquired data can be appropriately set according to the processing capability
of the collecting node” (Yamaguchi, col. 2, ll. 13-15), the Examiner has not
shown, and we do not readily find where Yamaguchi discloses conditionally
increasing a duration of the monitor interval if the monitor program has
fallen behind in processing data values, as set forth in claim 1.
Instead, Yamaguchi discloses that the monitor interval is designated
when the monitor is activated (FF 1) and in situations where data is not
completely processed by the monitor (i.e., a fall behind condition) data is
written into memory in an overlapping manner (FF 2). Thus, in Yamaguchi,
processing is not adversely influenced by fall behind conditions (i.e., delays)
(FF 3) because the data acquiring process and the collecting process are
conducted independently of each other (FF 4).
In other words, Yamaguchi’s independent process has eliminated any
problems associated with fall behind conditions (FF 4) and hence fails to be
concerned with determining whether this situation has even occurred. As a
result, the absence of determining whether the monitor program has fallen
Appeal 2008-4707
Application 10/163,650

7
behind negates anticipation. Therefore, we reverse the anticipation rejection
of claim 1 and claims 2-30 which stand therewith.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
Yamaguchi renders claims 1-30 unpatentable.

VI. CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-30.

VII. DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 1-30.

REVERSED

erc

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER MN 55901-7829