Ex Parte Umamageswaran

Board of Patent Appeals and Interferences

Jul 16, 2007

10184379 (B.P.A.I. Jul. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KOTHANDA UMAMAGESWARAN
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Appeal 2007-1649
Application 10/184,379
Technology Center 2100
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Decided: July 16, 2007
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO,
and ANITA PELLMAN GROSS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-31, 33, and 35-46. Claims 32 and 34 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-1649
Application 10/184,379

Appellant’s claimed invention relates to memory access monitoring in
which one or more processes of a computer program are instructed by a user
to monitor accesses to a memory region. A log including information
related to the memory accesses is created and analyzed for debugging
memory access bugs. New processes that are spawned also monitor memory
accesses similar to existing processes. (Specification 4-5).
Claim 1 is illustrative of the invention and it reads as follows:
1. A computer–implemented method of monitoring memory accesses for
a computer program including a plurality of processes, the computer-
implemented method comprising:
receiving input to monitor memory accesses to a memory region that
is shared by the plurality of processes included in the computer program;
directing each of the plurality of processes to monitor memory
accesses to the memory region; and
monitoring memory accesses to the memory region using each of the
plurality of processes.
The Examiner relies on the following prior art references to
show unpatentability:
Mandal US 6,158,024 Dec. 5, 2000
Li US 2003/0056200 A1 Mar. 20, 2003
(filed Sep. 19, 2001)

Claims 1-4, 10-19, 25-31, 33, 35, and 41-46 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Li. Claims 5-9, 20-24, and 36-40
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Li in
view of Mandal.
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Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C § 102(e), does Li have a disclosure which
anticipates the invention set forth in claims 1-4, 10-19, 25-31, 33, 35, and
41-46 ?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 5-9,
20-24, and 36-40, has the Examiner established a prima facie case of
obviousness based on the combination of Li and Mandal?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
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Application 10/184,379

citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346,
51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
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 doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
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S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)(quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

35 U.S.C. § 102(e) REJECTION
With respect to the 35 U.S.C. § 102(e) rejection of independent claim
1 based on the teachings of Li, the Examiner indicates (Answer 3-4) how the
various limitations are read on the disclosure of Li. In particular, the
Examiner directs attention to the illustrations in Figures 1 and 5 of Li, as
well as the disclosure at paragraphs [0013], [0067], [0076], and [0090] of Li.
Appellant’s arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Li so
as to establish a prima facie case of anticipation. Appellant’s arguments (Br.
6-7; Reply Br. 1-2) focus on the contention that, in contrast to the language
of claim 1 which requires that each of the claimed plurality of processes be
directed to monitor memory accesses, the elements in Li identified by the
Examiner as monitoring memory regions are not part of the program
processes. According to Appellant (Reply Br. 2), it is “non-processes” such
as the software probes and the interceptor in Li which direct the memory
access monitoring, not the program processes.
Our review of the disclosure of Li, however, finds ample evidence to
support the Examiner’s position. As indicated at paragraphs [0064] and
[0067] of Li, software probes inserted into the program processes log data in
the log storages 113-115. Further, at paragraph [0086], Li describes these
probes as being configured to perform the function of shared memory usage
monitoring.
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Further, we find no convincing arguments from Appellant that
convince us of any error in the Examiner’s finding that the interceptor
described at paragraph [0090] of Li is also part of the program processes
which monitor and log shared memory usage information. We also make
the observation that, to whatever extent Appellant may be correct in the
assertion (Br. 7) that the interceptor in Li is external to the program
processes, the claim language does not preclude the use of an intermediary
external element by the software probes incorporated into the program
processes to direct the monitoring of memory accesses.
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Li, the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claim 1, as well as dependent claims 2-4, 10-13,
and 45 not separately argued by Appellant, is sustained.
The Examiner’s 35 U.S.C. § 102(e) rejection of independent claims
14 and 15 (and its dependent claim 16), based on Li, is also sustained. We
find no error in the Examiner’s finding (Answer 18) that the plurality of
program processes illustrated, for example, in Figure 1 of Li as a multi-
threaded software system (LI, paragraphs [0039] and [0125]) are stored on a
computer readable medium. We further find no error in the Examiner’s
finding that the shared memory usage monitoring function of Li discussed
earlier with respect to appealed claim 1 operates through an interface as
disclosed, for example, at paragraphs [0169] and [0170] of Li.
Turning to a consideration of the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claims 17 (and its dependent claims 18, 19, 25-27,
and 46), 28, and 29 (and its dependent claim 30), based on Li, we sustain
this rejection as well. We agree with the Examiner that the dynamically
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spawned threads disclosed at paragraph [0112] of Li satisfy the claimed
requirement of a new process which is directed to monitor memory accesses.
We find it to be particularly noteworthy that Li refers to these dynamically
spawned threads as “additional logging processes.” (Li, par. [0112], ll. 12-
13).
We also sustain the Examiner’s 35 U.S.C. § 102(e) rejection, based on
Li, of independent claim 31, as well as dependent claims 33, 35, and 41-44
not separately argued by Appellant. We find no convincing arguments from
Appellant that convince us of any error in the Examiner’s finding that Li’s
description (paragraphs [0013] and [0039]) of the run time execution of the
function call which provides monitoring of memory accesses satisfies the
requirements of independent claim 31.

35 U.S.C. § 103(a) REJECTION
Appellant’s arguments in response to the Examiner’s obviousness
rejection of dependent claims 5-9, 20-24, and 36-40 based on the
combination of Li and Mandal reiterate those arguments made alleging the
deficiencies of Li in disclosing the claimed memory access monitoring
features. For all of the reasons discussed, supra, we find such arguments to
be unpersuasive.
We also find no error in the Examiner’s finding (Answer 10-12) that
the ordinarily skilled artisan would have recognized and appreciated that the
memory access code locating features taught by Mandal would serve as an
obvious enhancement to the system of Li. Accordingly, since the
Examiner’s prima facie case of obviousness has not been overcome by any
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convincing arguments from Appellant, we sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of dependent claims 5-9, 20-24, and 36-40.

CONCLUSION
In summary, we have sustained the Examiner’s rejections of all the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
1-31, 33, and 35-46 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(effective
September 13, 2004).

AFFIRMED

KIS

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