Ex Parte Barsness et al

Board of Patent Appeals and Interferences

May 31, 2012

10970412 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC LAWRENCE BARSNESS and
JOHN MATTHEW SANTOSUOSSO
____________

Appeal 2010-003689
Application 10/970,412
Technology Center 2100
____________

Before JOSEPH L. DIXON, THU A. DANG, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003689
Application 10/970,412

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22, 25-30, and 33-35. (App. Br. 2.) Claims 23, 24, 31, and 32
were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 1 follows:
1. An apparatus comprising:

at least one processor;

a memory coupled to the at least one processor;

a computer program residing in the memory and
executed by the at least one processor;

an integrated development environment
comprising:

an editor that allows making changes to the
computer program; and

an automatic event profile generation
mechanism that automatically generates at least
one event profile according to the changes made to
the computer program using the editor, wherein
each automatically-generated event profile
specifies type of events to collect.

The Examiner rejected claims 1-22, 25-30, and 33-35 under 35 U.S.C.
§ 103(a) as being unpatentable over Harkema (Harkema et al., Performance
Monitoring of Java Applications, Proc. of 3rd Int’l Workshop on Software
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and Performance, Rome: secession, 114-127 (2002)) in view of Gove (U.S.
Patent Application Pub. No. 2004/0006760 A1). (Ans. 3-16.)

ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Does the combination of Harkema and Gove teach or suggest “an
automatic event profile generation mechanism that automatically generates
at least one event profile according to the changes made to the computer
program using the editor,” as recited in independent claim 1, and as similarly
recited in the other independent claims?

ANALYSIS
We disagree with Appellants’ assertions regarding the Examiner’s
obviousness rejections of the claims. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 3-27) in response to arguments made in the Appellants’
Appeal Brief. We concur with the conclusion reached by the Examiner. We
highlight and address certain findings and arguments below.
Appellants assert that claim 1 is not obvious because neither Harkema
nor Gove teaches or suggests “automatically generating at least one event
profile according to the changes made to the computer program using the
editor.” (App. Br. 10.) Appellants argue that “the events of interest in
Harkema are not automatically generated as recited in claim 1” because
some manual intervention is required in Harkema (Id. at 7.) Although we
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Application 10/970,412

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agree that there is some manual intervention in Harkema’s process of
generating an event profile with a process performed on a computer, we note
that the Examiner points that the automatic event profile generation
mechanism described in Appellants’ specification also includes a user
interface to allow input from a user. (Ans. 18.) And Appellants failed to file
a Reply to distinguish the manual intervention in the Specification from the
manual intervention in Harkema. Thus, we find that the Examiner has given
the claim its broadest reasonable meaning consistent with the Specification,
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) in concluding that claim
1 does not preclude some manual intervention in the automatic generation of
event profiles.
Appellants also argue that Gove does not teach the generation of an
event profile according to changes made to a computer program because
Gove’s profiles are output from a profiler and, therefore, “cannot specify
type of events to collect because the output shows the events already
collected.” (App. Br. 9.) But the Examiner did not rely solely on Gove to
teach this element. (See Ans. 20-21.) Rather, the Examiner noted that
Harkema teaches the creation of event profiles and “Gove teaches collecting
and recollecting profile data based on modifications to code . . . .” (Id. at
21.) Accordingly, in light of these teachings, the Examiner concludes that it
would have been obvious to create event profiles “to collect the statistics
based on the code modifications of Gove.” (Id.) We find no error in the
Examiner’s conclusion, and thus, we sustain the Examiner’s rejection of
independent claim 1.
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With respect to dependent claim 4, Appellants assert that “[n]owhere
does Harkema teach or suggest the user-provided profiler agent allows a user
to select the at least one event profile when profiling the computer system
. . .” (App. Br. 14.) Harkema, however, teaches that subscriptions can be
made to events of interest and that a profiler agent can collect profiling
information. (Harkema, p. 117.) Accordingly, we find no error in the
Examiner’s conclusion that Harkema teaches or suggests a profiler agent
that permits the selection of an event profile as required by claim 4. (Ans.
14-15 and 26.)
Thus, we sustain the Examiner’s rejections of claims 1 and 4 as well
as the other claims on appeal because Appellants did not set forth any
separate or different patentability arguments for them. (See App. Br. 5-15.)

DECISION
We affirm the Examiner’s decision rejecting claims 1-22, 25-30, and
33-35 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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