Ex Parte Clementi et al

Patent Trial and Appeal Board

Jun 12, 2018

12576177 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/576, 177 10/08/2009
80878 7590
Brown & Michaels (END)
c/o Brown & Michaels, PC
118 North Tioga Street
Suite 400
Ithaca, NY 14850
06/14/2018
FIRST NAMED INVENTOR
Ashley Neil Clementi
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
A US920090 l 93US 1 1540
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
06/14/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@bpmlegal.com
lwood@bpmlegal.com
twood@bpmlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEY NEIL CLEMENTI,
JEAN-JACQUES HELER, and
PAUL FREDRIC KLEIN
Appeal 2016-004180
Application 12/576, 177
Technology Center 2800
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification
entered Oct. 8, 2009 ("Spec."); Final Office Action dated Dec. 15, 2014
("Final"); Appeal Brief entered June 16, 2015 ("Appeal Br."); Examiner's
Answer dated Oct. 22, 2015 ("Ans."); and Reply Brief entered Dec. 28, 2015
("Reply Br.").
Appeal 2016-004180
Application 12/576,177
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1, 3-10, 12, 14--17, 19, 20, and
24--30. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The invention relates to monitoring transactions, including composite
transactions and business transactions. Spec. ,r,r 2, 17. "A transaction may
be initiated at a client or desktop, ... may traverse one or more application
environment(s), and may return to the client or desktop." Id. ,r 17. "An
application environment includes a set of protocols and services which host
the execution of a transaction, and may span one or more server platforms,"
e.g., "a webserver, a main[]frame, a distributed application, an application
server," etc. Id. ,r 19. Each application may include one or more monitoring
agents. Id. "A monitoring agent may include anything ... that may invoke
an API [ ( application programming interface)] and/ or monitor an application
environment, including a human user. Monitoring includes tracking." Id. ,r
28. "[M]easurement point data received through APls [may be used] to
correlate local transactions, monitor a transaction, and/or provide an end-to-
end view of a transaction." Id. ,r 36. "[For] example, APls may take the
form Point (timestamp, vertical link-id, vertical stitch list, horizontal link-id,
horizontal stitch list, context), where Point is a type of measurement point,
and timestamp, vertical link-id, vertical stitch list, horizontal link-id,
horizontal stitch list, and context are parameters." Id. "Horizontal
integration may be used to couple one application's visibility to another
2 Appellants identify the real party in interest as International Business
Machines Corporation. Appeal Br. 3.
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Application 12/576,177
application's visibility." Id. ,r 33. "Vertical integration may be used to
recognize that an application environment has been monitored a plurality of
times and to suppress redundancies." Id. ,r 34. "As a result of the horizontal
integration ... coupling consecutive application environments and the
vertical integrations ... removing redundancies, a complete end-to-end view
of the transaction may be provided." Id. ,r 35.
Of the appealed claims, claims 1, 12, and 17 are independent. See
Appeal Br. 17-25. Claim 1 is illustrative, and is reproduced below.
1. A computer implemented method of timing a
transaction, the
method comprising:
receiving a first measurement point from a first
monitoring agent, wherein the first measurement point includes
a first timestamp and a first transaction attribute;
storing the first timestamp in a persistent storage
medium;
receiving a second measurement point from a second
monitoring agent, wherein the second measurement point
includes a second timestamp and a second transaction attribute,
and wherein the first monitoring agent and the second
monitoring agent both have visibility in a first environment and
a third monitoring agent has visibility in a second environment,
and wherein the first monitoring agent and the second
monitoring agent do not have visibility in the second
environment and the third monitoring agent does not have
visibility in the first environment;
storing the second timestamp in the persistent storage
medium;
associating the first and second measurement points in a
vertical integration;
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Application 12/576,177
determining, by a computer, a length of time the
transaction took to flow from the first measurement point to the
second measurement point by using the first timestamp and the
second time stamp;
receiving a third measurement point from the third
monitoring agent, wherein the third measurement point includes
a third timestamp and a third transaction attribute; and
associating the second and third measurement points in a
horizontal integration.
Appeal Br. 17 [ claims appendix], ( emphasis added).
Claims 1, 3-10, 12, 14--17, 19, 20, and 24--30 stand finally rejected
under (1) 35 U.S.C. § 112, second paragraph (pre-AIA) or 35 U.S.C.
§ 112(b); and (2) 35 U.S.C. §I03(a) in view ofHeler (US Patent Application
2007/0060367 Al, published March 15, 2007) and Breitenbach et al., (US
Patent Application 2002/0016729 Al, published February 7, 2002;
hereinafter "Breitenbach"). See Final 2-11.
Indefiniteness Rejection under 35 US.C. § 112
The Examiner contends the phrase "associating the first and second
measurement points in a vertical integration," recited in each of independent
claims 1, 12, and 17, is unclear because the application describes only
vertical integration of views in application environments. Final 3.
Appellants argue the ordinary artisan would understand from the
Specification that a determination of redundant views of a given application
environment is based on a recognition that "a measurement point being
observed by one application is the same as a measurement point being
independently observed by a different application. Hence, a vertical
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Application 12/576,177
integration depends upon one measurement point being associated with
another measurement point, for example, by vertical stitching, vertical
linking, or a combination of the two." Appeal Br. 10. In support of this
argument, Appellants cite Specification paragraphs 34, 39, and 40, which
disclose that vertical integrations may include a vertical link for "link[ing]
together two points within [a] local transaction" (Spec. ,r 39) and a vertical
stitch for "vertically stitch[ing] local transaction instances that are identical
(for example, when there are several applications monitoring the same local
transaction)" (Spec. ,r 40). Appeal Br. 10-11.
In the Answer, the Examiner agrees that the Specification discloses
vertically linking two points within a local transaction, but maintains there is
no indication that the points that are vertically linked are measurement
points. Ans. 3--4 ( arguing that a point described in the Specification as a
measurement point (i.e., the STARTED point described in Spec. ,r 37) is not
within a local transaction because it is a point taken when a local transaction
starts). Appellants, in response, argue the Examiner's position is
inconsistent with the Specification, noting that paragraph 37 discloses that a
"HERE measurement point may be a point taken anywhere in the local
transaction between, and including, the STARTED and FINISHED points"
(Spec. ,r 37). Reply Br. 12-13.
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309
(Fed. Cir. 2014). "[T]he definiteness of the language employed must be
analyzed-not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
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Application 12/576,177
one possessing the ordinary level of skill in the pertinent art." In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
Having considered the argued claim language in light of the
Specification, in particular paragraphs 33-37, 39, and 40, together with the
Examiner's and Appellants' arguments, we determine the meaning of the
phrase "associating the first and second measurement points in a vertical
integration" would be clear to the ordinary artisan for the reasons explained
by Appellants in their Appeal and Reply Briefs, as discussed above. See,
e.g., Reply Br. 11-13; Spec. ,r,r 36-37 (describing the use of measurement
point data for monitoring a transaction and correlating local transactions).
Therefore, we do not agree with the Examiner that this phrase renders the
claims indefinite under 35 U.S.C. § 112, second paragraph (pre-AIA), or 35
U.S.C. § 112(b).
Claims 25, 26, and 27 depend from claims 1, 12 and 17, respectively,
and recite "wherein the first measurement point and the second measurement
point are redundant views of said first environment." Appeal Br. 29-30.
The Examiner contends this language is indefinite, noting the term
"redundant views" is not defined in the Specification. Final 3. The
Examiner argues that the term "redundant views" is mentioned only once in
the Specification and that the term is used in connection with application
environments, not measurement points. Ans. 5.
Appellants contend that redundant views are shown and described in
connection with a number of drawings, e.g., Figures 3-7, 11, 12, 17, and 18,
and direct us, in particular, to Specification paragraphs 34--35. Appeal Br.
11-12; Reply Br. 14--16. We are persuaded that the meaning of claims 25-
27 would be clear to the ordinary artisan. As an initial matter, we note that
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Application 12/576,177
the Specification disclosure cited by Appellants uses the term "redundant" or
"redundancies" in a manner consistent with its plain and ordinary meaning
of unnecessary repetition. 3 See Spec. ,r 34 ("Vertical integration may be
used to recognize that an application environment has been monitored a
plurality of times and to suppress redundancies."). Further, as discussed
above, we are persuaded by Appellants' arguments and evidence cited in
support thereof that the ordinary artisan would understand that the meaning
of "redundant views" for a given application environment is based on a
recognition that "a measurement point being observed by one application is
the same as a measurement point being independently observed by a
different application." Appeal Br. 10. Therefore, we do not agree with the
Examiner that the phrase "wherein the first measurement point and the
second measurement point are redundant views of said first environment"
renders claims 25-27 indefinite under 35 U.S.C. § 112, second paragraph
(pre-AIA), or 35 U.S.C. § 112(b ).
For the above reasons, we do not sustain the rejection of claims 1, 3-
10, 12, 14--17, 19, 20, and 24--30 under 35 U.S.C. § 112, second paragraph
(pre-AIA), or 35 U.S.C. § 112(b ).
Obviousness Rejection under 35 US.C. § 103
The Examiner finds Heler discloses the invention as claimed in
independent claims 1, 12, and 17 (Final 4--5), with the exception that
"He[l]er does not disclose associating the first and second measurement
3 htt12://www.dictionary.com/browse/redundant?s=t (last visited June 11,
2018).
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Application 12/576,177
points in a vertical integration and associating the second and third
measurement points in a horizontal integration" (id. at 5). The Examiner
finds one of ordinary skill in the art would have been motivated to modify
Heler to include this feature in view of Breitenbach's disclosure that vertical
integration provides multiple functionalities within an environment and
horizontal integration provides functionalities across multiple environments.
Id.
Appellants do not dispute the Examiner's findings with respect to the
teachings of Heler. See generally, Appeal Br. 12-15. Appellants argue
Breitenbach "has nothing whatsoever to do with measurement points in a
computer implemented method of timing a transaction," but discloses
"vertical and horizontal integrations ... pertain[ing] to the scheduling of
resources and calendaring of people within a common event-based
scheduling system." Id. at 14--15. Appellants thus contend the Examiner has
not explained sufficiently why the ordinary artisan would have applied
Breitenbach's teachings to Heler's method and system of tracking the
processing of a transaction. See id. at 13-15. Appellants further contend
that even if Heler and Breitenbach were combined, the present invention
would not have resulted because neither reference discloses or suggests
"associating the first and second measurement points in a vertical
integration" and "associating the second and third measurement points in a
horizontal integration" as recited in each of independent claims 1, 12, and
17. Id. at 13-15; see also Reply Br. 20.
"A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art." In re Warner, 379 F.2d 1011, 1017 (CCPA
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Application 12/576,177
1967). "[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)); see
also, In re Vaidyanathan, 381 Fed. Appx. 985,994 (Fed. Cir. 2010) (non-
precedential) ("KSR did not free the PTO' s examination process from
explaining its reasoning. In making an obviousness rejection, the examiner
should not rely on conclusory statements that a particular feature of the
invention would have been obvious or was well known. Instead, the
examiner should elaborate, discussing the evidence or reasoning that leads
the examiner to such a conclusion.").
Having considered the respective positions of Appellants and the
Examiner, we find that, on the present record, the Examiner's obviousness
analysis fails to contain the requisite articulated reasoning with rational
underpinning to support a finding that the ordinary artisan would have been
motivated to combine Heler and Breitenbach in the manner claimed. The
Examiner's rejection, as stated in the Final Office Action, is based on a
conclusory statement that the ordinary artisan would have modified Heler in
view of Breitenbach to include "associating the first and second
measurement points in a vertical integration" and "associating the second
and third measurement points in a horizontal integration" as recited in claims
1, 12 and 17, "for the purpose of for providing functionalities within an
environment and across multiple environments." Final 5---6. The Examiner
does not cite to evidence to support this statement, or otherwise explain why
the ordinary artisan would have had a reason to employ Breitenbach's
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Application 12/576,177
technique in Heler's method or system. In the Answer, the Examiner
responds to Appellants' argument by stating that "Breitenbach is combinable
with Heler." Ans. 6. However, the Examiner again fails to explain
persuasively why the ordinary artisan would have combined the references.
Accordingly, because the Examiner has failed to sufficiently explain
the evidence or reasoning that led to the conclusion of obviousness, we do
not sustain the rejection of claims 1, 3-10, 12, 14--17, 19, 20, and 24--30
under 35 U.S.C. § 103(a) as unpatentable over Heler and Breitenbach.
REVERSED
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