Ex Parte May et al

Patent Trial and Appeal Board

Jan 29, 2013

11290883 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/290,883 11/30/2005 Henry J. May ROC920050420US1 9453
46797 7590 01/30/2013
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
GORNEY, BORIS
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
01/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENRY J. MAY and RICHARD K. KIRKMAN
____________

Appeal 2010-008474
Application 11/290,883
1

Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
JOHN A. EVANS, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellant(s) appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7 and 21-33.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1
The real party in interest is International Business Machines Corporation.
2
Claims 8-20 have been cancelled.
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Application 11/290,883

2
STATEMENT OF THE CASE
Appellant’s invention is a method of monitoring the performance of a
multi-nodal computer system. A set of system events are instrumented, the
system events being related to the distribution of workload across each of
the nodes of the multi-nodal computer system (Spec. 12-14). System events
are associated with respective instrumentation routines which are invoked
upon occurrence of the respective instrumented event. The method calls for
performing a respective instrumentation routine when an instrument event
occurs over the course of executing a thread on the multi-nodal computer
system (Id.).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of monitoring the performance of a multi-nodal
computer system, comprising:

instrumenting a set of system events to define a plurality of
instrumented events, wherein the system events are related to the distribution
of workload across each of the nodes of the multi-nodal computer system
and wherein instrumenting comprises associating the system events with
respective instrumentation routines which are invoked upon occurrence of
the respective instrumented event;

when an instrumented event, of the plurality of instrumented events,
occurs over the course of executing a thread on the multi-nodal computer
system, performing a respective instrumentation routine, wherein the
instrumentation routine is configured to record data regarding the existing
state of the multi-nodal computer system; and

continuing to execute the thread after performing the instrumentation
routine.

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Application 11/290,883

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REFERENCES
Burgess US 5,796,633 Aug. 18, 1998
Eilert US 2001/0039559 A1 Nov. 8, 2001
Labadie US 2003/0195959 A1 Oct. 16, 2003
Bhat US 6,769,017 B1 July 27, 2004

REJECTIONS
Claims 1-3, 21-23, and 28-30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Eilert in view of Labadie.
Claims 4, 5, 24, 25, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Eilert in view of Labadie and Bhat.
Claims 6, 7, 26, 27, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Eilert in view of Labadie and Burgess.

ISSUE
Appellants argue, inter alia, that Eilert is conceded to lack a teaching
of instrumenting a set of system events, and that Labadie’s teaching of
“instrumenting the process” does not equate to teaching instrumenting a set
of system events (App. Br. 14). Appellants contend that an “event” is “a
message (i.e.[,] data) indicating that an activity has occurred” (Id.). By
contrast, the Examiner states that a computer event is “an instance of a
computer program (i.e.[,] code) that is executed (or triggered) by a processor
under certain conditions” and that “[t]here is no discernible difference for a
skilled artisan between instrumenting an event and instrumenting a process”
(Ans. 11).

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Application 11/290,883

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Appellants’ arguments present us with the following issue:
Does the combination of Eilert and Labadie teach or fairly suggest
instrumenting a set of system events to define a plurality of instrumented
events?

PRINCIPLES OF LAW
Our reviewing court states that “the words of a claim ‘are generally
given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)(internal citations omitted). The
“ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the patent
application.” Id. at 1313. The description in the specification can limit the
apparent breadth of a claim in two instances: (1) where the specification
reveals a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess; and (2), where the
specification reveals an intentional disclaimer, or disavowal, of claim scope
by the inventor. Id. at 1316.

ANALYSIS
The independent claims (1 and 21) each recite “instrumenting a set of
system events.” In order to consider Appellants’ arguments that the
Examiner erred in rejecting the claims, we must determine the meaning of
the claim term “event.”
“The words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips, 425 F.3d at 1312. The specification may
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Application 11/290,883

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limit the apparent breadth of a claim where the specification reveals a
special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. Id. at 1316. Appellants’ Specification
discloses that “[a]n event includes anything that may occur during the course
of operation of the system 100 along with any data of interest” (Spec. ¶
[0036]).
We find that the disclosed definition of “event” comports with
Appellants’ argument that an event is “a message (i.e.[,] data) indicating that
an activity has occurred” (App. Br. 14). The disclosed definition does not
support the Examiner’s argument that an event is an instance of a computer
program (i.e.[,] code) that is executed (or triggered) by a processor under
certain conditions (Ans. 11).
We find that the Specification’s definition of “event” means that the
term is not limited to “an instance of a computer program,” as urged by the
Examiner. As a result, we also disagree with the Examiner that “[t]here is no
discernible difference for a skilled artisan between instrumenting an event
and instrumenting a process” (Ans. 11).
Applying this definition to the rejection at issue, we do not agree with
the Examiner’s finding that Labadie’s teaching of “a correlator for use by
more than one provider instrumenting the process” meets the claim language
of “instrumenting a set of system events” (Ans. 5). As the Examiner
conceded that Eilert does not teach this element either, we find that the
Examiner erred in setting forth the prima facie obviousness of each of the
claims.
Accordingly, we will not sustain the § 103 rejection of claims 1-3, 21-
23, and 28-30 as being unpatentable over Eilert in view of Labadie. We have
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reviewed Bhat and Burgess, and we find that they do not remedy the
deficiencies of Eilert and Labadie. Thus, we will not sustain the Examiner’s
rejection of claims 4, 5, 24, 25, 31, and 32 over Eilert in view of Labadie and
Bhat, and we will not sustain the Examiner’s rejection of claims 6, 7, 26, 27,
and 33 over Eilert in view of Labadie and Burgess.

CONCLUSIONS
The combination of Eilert and Labadie does not teach or fairly suggest
instrumenting a set of system events to define a plurality of instrumented
events.

DECISION
The Examiner’s decision rejecting claims 1-7 and 21-33 is reversed.

REVERSED

kis