Ex parte Smith et al.

Board of Patent Appeals and Interferences

Sep 11, 2000

08478974 (B.P.A.I. Sep. 11, 2000)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN J. SMITH and K. SRIDHARAN
____________
Appeal No. 1997-2658
Application No. 08/478,974
____________
ON BRIEF
____________
Before MARTIN, BARRETT, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-41, all of the claims pending in the present
application.
Appeal No. 1997-2658
Application No. 08/478,974
2
The claimed invention relates to a program tuning adviser
in which code samples are analyzed and critical regions of
program code are identified. More particularly, Appellants
indicate at pages 3 and 4 of the specification that the tuning
advisor suggests improvements to the source code related to
the displayed graphical views of the identified critical
program code regions.
Claim 1 is illustrative of the invention and reads as
follows:
1. In a computer system including a central processing unit
(CPU) and a number of program modules running on said CPU, a
method comprising steps of:
(A) collecting code samples from one of said modules;
(B) analyzing said samples to identify critical regions
in said code samples;
(C) displaying a first graphical view of said critical
regions;
(D) displaying source code related to a particular one
critical region selected by a user from said first graphical
view of said critical regions resulting in displayed source
code;
(E) running a performance tuning advisor on a code
portion selected by a user from said displayed source code,
said performance tuning advisor providing optimization advice
related to said code portion; and,
Appeal No. 1997-2658
Application No. 08/478,974
At page 1 of the Reply Brief, Appellants call attention1
to the misspelling of “critical” at line 5 of claim 39. We
also point out that “critical” is misspelled at claim 40, line
3 and claim 41, lines 5 and 7.
3
(F) displaying said optimization device for said section
of code.
The Examiner relies on the following prior art:
Van Dyke et al. (Van Dyke) 5,175,856 Dec. 29,
1992
Spix et al. (Spix) 5,179,702 Jan. 12,
1993
O’Hair 5,187,789 Feb. 16,
1993
Claims 1-41 stand finally rejected under 35 U.S.C. § 103.
As evidence of obviousness, the Examiner offers O’Hair in view
of Spix with respect to claims 1-3, 5, 7, 9, 10, 12, 14-16,
18-22, 24, 26, 28, 29, 31, 33, and 35-41, and adding Van Dyke
to the basic combination with respect to claims 4, 6, 8, 11,
13, 17, 23, 25, 27, 30, 32, and 34. 1
Appeal No. 1997-2658
Application No. 08/478,974
The Appeal Brief was filed January 6, 1997. In response2
to the Examiner’s Answer dated February 19, 1997 a Reply Brief
was filed April 24, 1997, which was entered by the Examiner
without further comment in the letter dated April 21, 1998.
4
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth
in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 2-21 and 34-41. We reach the opposite conclusion
Appeal No. 1997-2658
Application No. 08/478,974
5
with respect to claims 1 and 22-33. Accordingly, we affirm-
in-part.
In the “Grouping of Claims” section of the Brief,
Appellants list each of the appealed independent claims 1, 2,
15, 16, 39, and 41. Consistent with this listing, Appellants
have separately argued the patentability of each of the
independent claims. We will consider the claims separately
only to the extent that separate arguments are of record in
this appeal. No separate arguments have been provided for any
of the dependent claims 3-14, 17-38, and 40 and, accordingly,
these claims will stand or fall with their base claim. Note
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983). In addition, any arguments which Appellants could
have made but elected not to make in the Briefs have not been
considered in this decision (note 37 CFR § 1.192).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
Appeal No. 1997-2658
Application No. 08/478,974
6
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17-18, 148 USPQ 459, 467 (1966), and to provide a reason why
one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Appeal No. 1997-2658
Application No. 08/478,974
7
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 2, 15, 16, 39, and 41,
the Examiner, as the basis for the obviousness rejection,
proposes (Answer, page 4) to modify the system of O’Hair by
relying on Spix to supply the missing teaching of utilizing a
program tuning advisor to provide optimization advice to a
user of the system. In the Examiner’s view, the skilled
artisan, in attempting to address source code bug problems in
O’Hair, would have found it obvious to utilize the interactive
visual display features of Spix’s tuning advisor.
In response, Appellants’ arguments against the Examiner’s
establishment of a prima facie case of obviousness center on
the alleged failure of the disclosure of the claimed feature
Appeal No. 1997-2658
Application No. 08/478,974
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of identification of critical regions of program code through
program execution by O’Hair, the primary reference relied on
by the Examiner for this feature. After reviewing the O’Hair
reference in light of the arguments of record, we are in
agreement with Appellants’ interpretation of the operation of
O’Hair. As asserted by Appellants (Brief, pages 6 and 7),
particular program regions to be displayed and examined in
O’Hair are selected by a user. Notwithstanding the differing
interpretations of the term “critical” by Appellants and the
Examiner, we find no disclosure of the identification of
regions to be displayed, “critical” or otherwise, in O’Hair,
or in Spix, by execution of a program.
We have also reviewed the disclosure of Van Dyke which
was applied to the combination of O’Hair and Spix to address
the data type optimization features of several of the
dependent claims. We find nothing in the disclosure of Van
Dyke which would overcome the innate deficiencies of O’Hair
and Spix.
We note that the feature of identifying critical regions
through program execution discussed supra is present, although
in different forms, in each of appealed independent claims 2,
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Application No. 08/478,974
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5, 16, 39, and 41. Claim 2 recites “running an application
which includes application code modules” and “analyzing said
application code modules to identify critical regions.” Each
of independent claims 15 and 16 recites “analyzing a program
with a performance analysis tool to identify critical regions”
which we interpret in the claimed context as being a run-time
analysis. Similarly, independent claims 39 and 41 each recite
the computer implemented steps of “executing computer
executable code” and “identifying a critical region of said
computer executable code.” In view of the above
discussion, it is our opinion that, since all of the claim
limitations are not taught or suggested by the applied prior
art, the Examiner has not established a prima facie case of
obviousness. Accordingly, the 35 U.S.C. § 103 rejection of
independent claims 2, 15, 16, 39, and 41, as well as claims 3-
14, 17-21, 34-38, and 40 dependent thereon, is not sustained.
We next turn to a consideration of independent claim 1
and note that, while we found that the Examiner had failed to
establish a prima facie case of obviousness with respect to
independent claims 2, 15, 16, 39, and 41, we reach the
opposite conclusion with respect to independent claim 1. The
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Application No. 08/478,974
10
burden is, therefore, upon Appellants to come forward with
evidence or arguments which persuasively rebut the Examiner’s
prima facie case of obviousness.
After reviewing Appellants’ arguments in response, we
remain convinced of the Examiner’s position as stated in the
Answer. We note that claim 1, contrary to the other appealed
independent claims, is not limited to identification of
program regions by program execution. Rather, claim 1 recites
“collecting code samples” and “analyzing said samples to
identify critical regions.” In our view, the disclosure of
O’Hair would meet these limitations as well as the claimed
display of graphical views of critical regions and related
source code (O’Hair, Figures 3 and 4a). The connections
contained in the intermediate representations of O’Hair are
used to collect program samples and the user can perform
analysis to identify portions in need of debugging (O’Hair,
column 5, lines 46-54).
We also find Appellants’ assertion of error in the
Examiner’s interpretation of the term “critical regions” to be
unpersuasive. We agree with the Examiner (Answer, page 14)
that, barring any limiting defining claim language, the
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Application No. 08/478,974
11
terminology “critical regions” can be broadly interpreted to
include any portion of a program which would cause incorrect
execution of a computer program.
With respect to the proposed combination of O’Hair and
Spix, Appellants assert (Brief, page 16) that the Examiner has
not established motivation for combining the references. We
disagree. The Examiner’s statement of the grounds of
rejection at page 4 of the Answer provides clear motivation
for combining O’Hair and Spix. As asserted by the Examiner,
the skilled artisan, using the program debugger of O’Hair
would clearly be aided by the use of the interactive visual
display features of the program tuner of Spix.
As to Appellants’ assertion (Brief, page 18) that Spix
has no disclosure of the identification of “critical regions,”
we point out that Spix is used in combination with O’Hair to
address the claim limitations. One cannot show nonobviousness
by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F. 2d
413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.
2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
For all of the above reasons, it is our view that
Appeal No. 1997-2658
Application No. 08/478,974
12
the Examiner has established a prima facie case of obviousness
with respect to independent claim 1 which remains unrebutted
by any convincing arguments offered by Appellants.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103 is
sustained. Since, as noted above, no separate arguments have
been made with regard to any of the dependent claims, claims
22-33 fall with claim 1 in accordance with 37 CFR §
1.192(c)(7). Thus, it follows that the decision of the
Examiner to reject claims 22-33 under 35 U.S.C.
§ 103 is also sustained.
In summary, we have sustained the 35 U.S.C. § 103
rejection of claims 1 and 22-33, but have not sustained the
35 U.S.C. § 103 rejection of claims 2-21 and 34-41.
Therefore, the Examiner’s decision rejecting claims 1-41 is
affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1997-2658
Application No. 08/478,974
13
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
lp
Appeal No. 1997-2658
Application No. 08/478,974
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OWEN L LAMB
PO BOX 240
SANTA BARBARA CA 93102-0240
Leticia
Appeal No. 1997-2658
Application No. 08/478,974
APJ RUGGIERO
APJ BARRETT
APJ MARTIN
DECISION: AFFIRMED IN PART
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 17, 2001
Draft Final
3 MEM. CONF. Y N
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