Ex Parte Randall

Board of Patent Appeals and Interferences

Dec 20, 2011

10356304 (B.P.A.I. Dec. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH H. RANDALL
____________

Appeal 2009-010677
Application 10/356,304
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-9, 11-21, and 26-28. The
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).

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INVENTION
The Appellant describes the invention at issue on appeal as
"measuring heap usage of each of a plurality of applications running inside a
single heap. Preferred embodiments of the present invention work by
traversing a set of objects in a heap. During this traversal, sets of strongly
connected components are identified." (Spec. 42, ll. 6-9.)

ILLUSTRATIVE CLAIM
1. A method for determining usage of a resource by a set of
running applications, said resource being represented as a
component in a set of components representing a set of
resources, the method comprising:
associating each component in the set of components
with a plurality of running applications responsible for the
respective component;
identifying components that are shared components
among the plurality of running applications executing under a
single virtual machine;
apportioning resource requirements of each shared
component among the plurality of running applications when
said shared component is associated with more than one of the
plurality of running applications executing under the single
virtual machine; and
for each running application executing under the single
virtual machine, determining usage of each shared component
by each such run application based on a resultant share of the
resource requirements for that shared component apportioned to
the respective running application.

REJECTION
Claims 1-9, 11-21, and 26-28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over U.S. Patent No. US 6,658,652 B1 ("Alexander")
and U.S. Patent Application Pub. No. US 2002/0100034 A1 ("Croix").
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DISCUSSION
Based on the Appellant's arguments, we will decide the appeal of
claims 1, 11-21, and 26-28 on the basis of claim 1 and the appeal of
claims 2-9 on the basis of claim 2. See 37 C.F.R. § 41.37(c)(1)(vii).
Therefore, the issues before us follow.
Did the Examiner err in finding that combined teachings of Alexander
and Croix would have suggested identifying components that are shared
among applications executing under a single virtual machine ("VM"), as
required by representative claim 1?
Did the Examiner err in finding reason to combine teachings of
Alexander and Croix to reject representative claims 1 and 2?
Did the Examiner err in finding that Alexander teaches the limitations
of representative claim 2?
We address the issues seriatim.

REPRESENTATIVE CLAIM 1
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted). "The test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)).
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Here, the Appellant makes the following admissions about Alexander.
Figure 3B and column 9, lines 27-41 in Alexander teach
a Java virtual machine (Jvm) 350 that includes a run time data
area 354 with a method area 370, heap 372, and other data
areas. Column 10 teaches that the method area and heap are
"shared by all threads running inside the Jvm" (col. 10, line 18).
In other words, different executing threads in the Jvm can share
the method area and heap.
(Reply Br. 3.) The same reference explains that "[m]ethod area 370 contains
class data while heap 372 contains all instantiated objects." (Alexander, col.
10, ll. 14-15.) Because the different executing threads in the JVM can share
the heap, and the heap contains objects, the thread can share the objects.
These teachings of the reference support the Examiner's findings that
"Alexander teaches components that are shared components among the
plurality of running applications executing under a single virtual
machine" (Ans. 16), i.e., that "the class data . . . are shared components . . .
among the plurality of running applications (all threads) executing under a
single virtual machine (JVM)" (id.).
Alexander further discloses that "[m]ost JVMs choose to have one
method area and one heap, each of which is shared by all threads running
inside the Jvm." (Alexander, col. 10, ll. 16-18.) We find that choosing one
method area and one heap would have suggested identifying the chosen
method area and the chosen heap.
Furthermore, the Examiner makes the following further findings.
Croix teaches identifying components that are shared
components among the plurality of running applications (Croix,
[0054], "using a set of first programs with a second program . . .
the second program at least one of a set of plug-ins from a
database responsive to a dataset identified to be associated with
the at least one of the set of first programs. The at least one of
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the set of first programs may be identified for the second
program by analyzing the dataset with the second program"),
also see [0025], emphases added).
(Ans. 16-17.) The latter paragraph cited by the Examiner explains that the
"[a] set of first programs may be a set of application programs . . . .
[The] second program may be a shared object library having a generic code
for use with the set of first programs." (Croix, ¶ 0025.) "A set of third
programs may be a plurality of application specific shared objects . . . ."
(Id.)
The former paragraph cited by the Examiner teaches "providing . . . to
the [shared object library] at least one of a set of plug-ins from a database
responsive to a dataset identified to be associated with the at least one of the
set of [application] programs." (Croix, ¶ 0054) (emphasis added). In other
words, the reference teaches identifying a set of data to be associated with
plural application programs.
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing Keller, 642 F.2d at 425). In determining obviousness,
furthermore, a reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole." Id.
Here, the Appellant argues that "[e]ven though sharing does occur in
Alexander, the Jvm does not identify which components are being shared
with the applications" (Reply Br. 3), and "Paragraph [0054] in Croix is not
related to virtual machines . . . ." (Id. at 4.) Such attacking of Alexander
and Croix individually, arguing that each reference does not teach what the
Examiner relies on the other to teach, cannot establish non-obviousness.
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Therefore, we conclude that the Examiner did not err in finding that
combined teachings of Alexander and Croix would have suggested
identifying components that are shared among applications executing under
a single VM, as required by representative claim 1.

COMBINING TEACHINGS OF ALEXANDER AND CROIX
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted). "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'l Co.v. Teleflex Inc.,
550 U.S. 398, 416 (2007). More specifically, "when a patent 'simply
arranges old elements with each performing the same function it had been
known to perform' and yields no more than one would expect from such an
arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR, 550 U.S. at 417.
Here, the Examiner makes the following findings and conclusion.
It would [have] be[en] obvious to one having ordinary
skill in the computer art at the time of the invention was made
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to modify the method disclosed by Alexander to include
identifying components using the teaching of Croix. The
modification would [have] be[en] obvious because one of
ordinary skill in the art would [have] be[en] motivated to
provide through the use of the application procedural interface,
to [a] second program at least one of a set of plug-ins from a
database responsive to a dataset identified to be associated
(shared) with the at least one of the set of first programs. The at
least one of the set of first programs may be identified for the
second program by analyzing the dataset with the second
program as once suggested by Croix . . . [00[54]].
(Ans. 6.) The cited reference supports the Examiner's findings by
"providing an application procedural interface [("API")] for communication
between [a] set of first programs and [a] second program" (Croix, ¶ 0054)
and "providing, through the use of the [API], to the second program at least
one of a set of plug-ins from a database responsive to a dataset identified to
be associated with the at least one of the set of first programs." (Id.
(emphasis added).)
The Appellant argues that "the Examiner is performing an improper
piecemeal construction that uses hindsight to arrive at the claim elements."
(App. Br. 17.)
Any judgment on obviousness is . . . necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also Radix
Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) ("[A]ny
obviousness inquiry necessarily involves some hindsight.").
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Here, the Examiner's reason for combining teachings from Alexander
and Croix is based on a teaching of Croix. This reason does not include
knowledge gleaned only from the Appellant's disclosure.
The Appellant also argues that the "architecture for implementing the
embodiments of Alexander is quite different and not compatible with the
exemplary embodiments of Croix." (App. Br. 17.)
"What appellant[ ] overlook[s] is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review." In re Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983
(citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed.
Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
The test for obviousness is not whether the features of a reference may be
bodily incorporated into the structure of another reference but what the
combined teachings of those references would have suggested to one of
ordinary skill in the art. Keller, 642 F.2d at 425.
Here, the Examiner does not propose that the physical embodiments
of Croix be bodily incorporated into the physical structure of Alexander.
Instead, the Examiner asserts that the combined teachings of the references
would have suggested to one of ordinary skill in the art the Appellant’s
invention. The Appellant's argument overlooks "the relevant combined
teachings of the . . . references." Andersen, 391 F.2d at 958 (dismissing the
argument that a combination would result in an inoperative structure).
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Therefore, we conclude that the Examiner did not err in finding reason
to combine teachings of Alexander and Croix to reject representative claim 1
and 2.

REPRESENTATIVE CLAIM 9
The Examiner makes the following "specific fact finding," Ex parte
Belinne, No. 2009-004693, 2009 WL 2477843, at *4 (BPAI Aug. 10, 2009)
(informative) regarding Alexander.
Alexander teaches traversing each component included in a
set of components accessible from the root component of the
application (Alexander, FIG. 13, steps 1356 - 1368, and related
text, for example, col. 18, lines 22-32, the tree is traversed to
the parent (using the parent pointer) ... ) to identify one or
more sets of strongly-connected components, wherein each
component in a set of strongly-connected components is
accessible from each other component in the set of strongly-
connected-components (for example, Alexander, Parent/Child
nodes (strongly-connected components), FIG. 11B, col. 17 . . .
the pointers for each node include a pointer to (to identify) the
node's parent, a pointer to the first child of the node (i.e. the
left-most child), a pointer to the next sibling of the node, and a
pointer to the next instance of a given routine in the tree).
(Ans. 19.)
"[T]he Board reviews the particular finding(s) contested by an
appellant anew in light of all the evidence and argument on that issue." Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI Feb. 26, 2010) (precedential).
"Filing a Board appeal does not, unto itself, entitle an appellant to de novo
review of all aspects of a rejection. If an appellant fails to present arguments
on a particular issue - or, more broadly, on a particular rejection - the Board
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will not, as a general matter, unilaterally review those uncontested aspects of
the rejection." Id. (citations omitted).
Here, although the Appellant filed a reply brief, he chose not to
address the aforementioned findings therein. We decline to unilaterally
review those uncontested findings.
Therefore, we conclude that the Examiner did not err in finding that
Alexander teaches strongly-connected-components, as required by
representative claim 2.

DECISION
We affirm the rejection of representative claims 1 and 2 and of
claims 3-9, 11-21, and 26-28, which fall therewith.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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