Ex Parte Pekowski

Board of Patent Appeals and Interferences

Oct 30, 2003

08763135 (B.P.A.I. Oct. 30, 2003)

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and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RAYMOND P. PEKOWSKI
____________
Appeal No. 2002-0596
Application No. 08/763,135
____________
ON BRIEF
____________
Before KRASS, RUGGIERO, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3, 5-
12, 14-18, and 25, which are all of the claims pending in this application. Claims 4, 13,
19-24 and 26-38 have been canceled.
We REVERSE.
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Application No. 08/763,135
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Appellant's invention relates to an apparatus and method for demand load
analysis. An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. A method, implemented in an information handling system, for
selecting one or more dynamic link libraries (DLLs), utilized in an
application program, to be demand loaded, said method comprising the
steps of:
identifying a DLL referenced by the application program;
tracing outputs from the DLL;
examining the traced output of the DLL to determine whether the
DLL was executed; and
selecting the DLL to be demand loaded if the DLL was not
executed.
The prior art of record relied upon by the examiner in rejecting the appealed
claims are as follows:
Cobb 5,835,749 Nov. 10, 1998
(filed May 5, 1995)
Johnson et al. (Johnson) 5,878,384 Mar. 02, 1999
(filed Mar. 29, 1996)
Claims 1-3, 5-12, 14-18, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Johnson in view of Cobb.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
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Application No. 08/763,135
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answer (Paper No. 23, mailed Jul. 31, 2001) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 22, filed Apr. 16, 2001) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellant argues that the initial burden of establishing a prima facie case of
obviousness lies with the examiner and Office. (See brief at page 6.) Appellant argues
that the combination of Johnson and Cobb does not teach or suggest the second and
third steps of the claimed method. Specifically, the combination of Johnson and Cobb
does not teach or suggest “tracing outputs from the DLL” and “examining the traced
output of the DLL to determine whether the DLL was executed.” (See brief at page 6.)
We agree with appellant.
The examiner maintains that the combination would have taught the claimed
invention even though the examiner admits that Johnson does not teach the second
through fourth limitations. (See answer at page 3.) The examiner maintains that the
motivation to combine the teachings is that the use of dynamic linked libraries (DLL’s)
adds flexibility to the system operation. (See answer at page 3.) While we agree with
Appeal No. 2002-0596
Application No. 08/763,135
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the examiner that the use of DLL’s adds flexibility, this aspect is already realized by
Johnson since the calling program is embodied in a DLL and is demand loaded. We
find no teaching or suggestion in either reference and the examiner has provided no
convincing line of reasoning as to why it would have been obvious to one of ordinary
skill in the art to look to the teachings of Cobb to further enhance the performance of
the system of Johnson.
Appellant argues that the examiner has not provided support for the allegations
that Cobb teaches the claimed tracing and examining steps of the claimed method.
(See brief at pages 7-10.) We agree with appellant and find that the examiner’s
conclusions throughout the answer that “the identifier is considered to be the traced
output” and “the criteria is also equated to be the traced output” are not adequately
rationalized with respect to the claimed invention. We find that to “trace” something
there must be some following of the path of operation whereas a mere identifier does
not follow a path, but merely identifies a state. Further, we find that a list of criteria also
does not follow the path of operation whereas mere criteria do not follow a path of
operation, but merely identify meeting the set condition(s).
Appellant argues that Johnson does not teach demand loading of DLL’s and
improving system performance. Appellant argues that neither of Johnson or Cobb
teach or suggest the problem which appellant addresses. (See brief at page 11.) We
agree with appellant, but agree with the examiner that the language of independent
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claim 1 does not explicitly recite an improvement in performance. Therefore, this
argument is not persuasive.
Appellant argues that the broad allegation that Johnson and Cobb teach using a
dynamic linked library (DLL) does not provide an adequate basis, in itself to establish
an obviousness rejection. (See brief at pages 11-12.) We agree with appellant. The
examiner maintains that the limitations have not been ignored and that Johnson
teaches that a DLL is demand loaded by an intermediate DLL and Cobb teaches that a
DLL can selectively load a DLL if it is unprocessed in order to enhance performance
and the examiner refers back to the prior responses. (See answer at page 10.) We
disagree with the examiner as discussed above and do not find that the examiner has
established a prima facie case of obviousness of the claimed invention, and we will not
sustain the rejection of independent claim 1 and its dependent claims. Claims 10 and
25 contain similar limitations concerning the tracing and examining steps/means.
Therefore, we will not sustain the rejection of independent claims 10 and 25 and their
dependent claims.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-3, 5-12, 14-18,
and 25 under 35 U.S.C. § 103(a) is reversed.
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Application No. 08/763,135
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REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JD/RWK
Appeal No. 2002-0596
Application No. 08/763,135
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DUKE W. YEE
CARSTENS YEE & CAHOON, LLP
P.O. BOX 802334
DALLAS, TX 75380