Ex Parte Rivera et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10786843 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSE GERMAN RIVERA and LILLIAN CHOU
____________

Appeal 2009-014652
Application 10/786,843
Technology Center 2100
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
ANDREW J. DILLION, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4-11, 14-21, 24-31, 34-41, and 44-49, which are the
remaining claims in the application. Claims 2, 3, 12, 13, 22, 23, 32, 33, 42
and 43 were cancelled during prosecution. We have jurisdiction under 35
U.S.C. § 6(b).
We Affirm.
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Invention
Appellants’ invention relates generally to monitoring computer
software. More particularly, the invention on appeal is directed to receiving
an assertion from an executing process, recording the assertion when it is
violated, and allowing the executing process to continue execution. (Para.
[0010]).
Illustrative Claim
1. A method for monitoring computer software comprising:
receiving an assertion from an executing process, wherein the
executing process is integral to an operating system and wherein
receiving an assertion comprises:

receiving an assertion request;
performing at least one of:
recognizing an assertion request type corresponding to
the assertion request; or

determining a component that sourced the assertion
request; and

accepting the assertion request for at least one of:
an assertion request of an enabled recognized
assertion request type; or
an assertion request of a determined component
which has assertion requests enabled;

recording the assertion when the assertion is violated; and
allowing the executing process to continue execution.

(emphasis added regarding disputed limitation).
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Rejections
1. Claims 1, 4, 5, 7-11, 14, 15, 17-21, 24, 25, 27-31, 34, 35, 37-41,
and 44-49 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Williams (“Microsoft
Visual C# .NET,” May 15, 2002), GNU (“The GNU Library”
Aug. 12, 1999), and PHP (“PHP Manual” May, 30, 2003).
2. Claims 6, 16, 26, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of
Williams, GNU, PHP, and Cantrill (US 7,146,473, Dec. 5,
2006).
Claim Grouping
Appellants argue the obviousness rejection of claims 1, 4, 5, 7-11, 14,
15, 17-21, 24, 25, 27-31, 34, 35, 37-41, and 44-49 as a single group. (App.
Br. 3-8). We select independent claim 1 as the representative claim. See 37
C.F.R. § 41.37(c)(1)(vii).
ISSUE (1)
Under §103, did the Examiner err in finding that the cited
combination of references would have taught or suggested
“receiving an assertion from an executing process, wherein the
executing process is integral to an operating system, within the
meaning of claim 1?
ANALYSIS
Appellants contend that neither Williams nor the GNU reference
disclose or suggest “receiving an assertion from an executing process,
wherein the executing process is integral to an operating system” in the
entirety. (App. Br., sec. VII A. 1). To the extent that Appellants are
contending that neither reference teaches the entire claim limitation, we
observe that the Examiner relied on Williams to teach or suggest “receiving
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an assertion from an executing process” (Ans. 4), and GNU to teach or
suggest that the “executing process is integral to an operating system.” (Ans.
4). Therefore, we do not find persuasive Appellants’ singular attacks on
Williams and GNU.1
Appellants also contend that GNU fails to disclose receiving an
assertion from an executing process integral to an operating system. (App.
Br. sec. VII A. 2). 2 In particular, Appellants contend:
The PTO asserts that the "GNU reference is used to teach the
limitation of 'the executing process is integral to an operating
system.'" The PTO is in error and has not responded to
Appellants arguments showing that GNU fails to disclose
receiving an assertion from an executing process integral to an
operating system. GNU appears to describe using an assert
macro to check for "an error return from an operating system
function" and not receipt of an assertion from an operating
system. The error return, as described, causes the program
assertion to fail and abort, but there is no disclosure of an
assertion from the operating system.
Further, GNU states that on an assertion being given invalid
input, a program will abort. See page 2, penultimate paragraph
("your program should not abort when given invalid input, as
assert would do").
(Id.). (emphasis added).

1
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.).

2 Appellants’ principal Brief contains no page numbers. Appellants are
advised to heed such formalities in the future.
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The Examiner concludes as a matter of claim construction that the
plain language of the claim does not require that the assertion is from the
operating system as argued by Appellants (Id.), only that the executing
process is integral to an operating system. (Ans. 14, see also claim 1). We
agree.
Regarding the disputed claimed phrase “integral to an operating
system,” we begin our analysis by looking to Appellants’ Specification for
context. Appellants’ Specification discloses that “where a process is, for
example, integral to an operating system, the operation system will not crash
the system.” (Spec. para. [0012])(underline added).
Since the exemplary language given in Appellants’ Specification does
not give notice to an artisan of a specific definition, and cannot be read into
the claims, we accord the claim term “integral to” its broadest reasonable
interpretation consistent with the Specification. We particularly observe that
Appellants’ Specification at para [0012] further informs the artisan that
“[t]he present method is applicable to many various types of software and
the scope of the appended claims is not intended to be limited to examples
herein cited; e.g. such as an operating system or a user application.”
(emphasis added).
The Examiner construed the aforementioned phrase as “an assertion
from a process of a program running or executing under (integral to) the
operating system[,] which includes any assertions from any executing
processes of an application program.” (Ans. 14). Given the exemplary non-
limiting language found in Appellants’ Specification at paragraph [0012], on
this record we are not persuaded that the Examiner’s claim construction is
overly broad, unreasonable, or inconsistent with the Specification.
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Given the aforementioned claim construction, we agree with and
adopt the Examiner’s findings regarding the disputed limitation: “receiving
an assertion from an executing process integral to an operating system.”
(Ans. 5; see also claim 1).
As pointed out by the Examiner, GNU discloses:
When you're writing a program, it's often a good idea to put in
checks at strategic places for "impossible" errors or violations
of basic assumptions. These kinds of checks are helpful in
debugging problems with the interfaces between different parts
of the program, for example.
(GNU pg. 1).
In addition, GNU discloses:
Sometimes the “impossible” condition you want to check for is
an error return from an operating system function. Then it is
useful to display not only where the program crashes, but also
what error was returned. The assert_perror macro makes this
easy.
(GNU pg. 2).
Thus, the first portion of GNU discusses putting in checks for
“impossible errors.” (GNU 1). The second portion discusses a particular
type of “impossible” condition, in the program being written, which is an
error return from an operating system function that was called by the
program executing within the context of a process. (GNU 2).
Based on the two aforementioned findings, we agree with the
Examiner that GNU at least strongly suggests an executing process that is
“integral to” (i.e., running under the control of ) an operating system, within
the broad scope of claim 1.
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In the Reply Brief, Appellants restate that GNU teaches checking for
an error from an operating system and not integral to an operating system.
(Reply Br. 4). Appellants next attempt to define “integral to” according to
an unidentified dictionary definition (as meaning “part of”), and by the
aforementioned example found in paragraph [0012] of Appellants’
Specification. (Reply Br. 4). Given that Appellants have not provided a
specific named dictionary source (XI. Evidence Appendix – “None.”), and in
light of the express non-limiting language found in Appellants’ Specification
at paragraph [0012], we find Appellants’ arguments unpersuasive of
Examiner error.
Moreover, Appellants could have amended their claims during
prosecution to recite “part of” instead of “integral to” to clarify the meaning
and intended scope of the disputed claim limitation “an executing process
integral to an operating system.” (Claim 1). However, Appellants chose
not to do so.3 Because “applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004)).
In particular, Appellants have not persuaded us that an error code
returned by an operating system call that is trapped by a calling program that

3 The claim as a whole must be considered to determine whether it apprises
one of ordinary skill in the art of its scope, and therefore serves the notice
function required by 35 U.S.C. § 112, second paragraph by providing clear
warning to others as to what constitutes the infringement of the patent.
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000).
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is being written and debugged, as discussed in GNU (pages 1-2), is not an
executing process that is “integral to” an operating system, or at least
suggestive of Appellants’ claimed subject matter.
For these reasons, we are not persuaded that the Examiner erred in
finding that the cited combination of references would have taught or
suggested “receiving an assertion from an executing process, wherein the
executing process is integral to an operating system,” within the meaning of
claim 1. (emphasis added).

ISSUE (2)
Under § 103, did the Examiner err in finding that Williams,
GNU, and PHP would have taught or suggested allowing the
executing process to continue execution, within the meaning of
claim 1?

ANALYSIS
Appellants contend that the Examiner relied on GNU to teach or
suggest allowing the executing process to continue execution, (App. Br. sec.
VII A. 3). We disagree for the reasons discussed below.
The Examiner relied on the teachings of Williams to teach or suggest
the allowing the executing process to continue execution. (Final Office
Action, 4; see also Ans. 5, last paragraph referring to the Dialog Box shown
in Williams’ Fig. 9-3). According to Williams, a Dialog box is generated by
trace and debug output. (Williams pgs. 10-11, Fig. 9-3). The dialog box
includes an “Ignore” button. (Fig. 9-3). The Examiner contends that the
“Ignore” button teaches or suggests continuing the execution of the process.
(Ans. 5).
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Appellants disagree. Appellants contend that Williams fails to
definitively disclose the contents of the displayed dialog box and what
happens as a result of activating one of the displayed buttons. (See sixth
enumerated point under the “Stated Rejections from the Final Office Action”
heading on an unnumbered page of the principal Brief.). See n.2 supra.
Although we agree with Appellants that Williams does not
definitively disclose what happens after the “Ignore” button is activated, it is
nevertheless our view that when presented with “Abort” and “Retry”
buttons, Williams at least strongly suggests that activation of the “Ignore”
button would result in the process continuing, as opposed to stopping
(Abort) or restarting (Retry).
On this record, we are not persuaded that the Examiner erred in
determining that the cited combination of references would have taught or
suggested allowing the executing process to continue execution, within the
meaning of claim 1.
ISSUE (3)
Under §103, did the Examiner err in combining GNU and Williams?

ANALYSIS
Appellants contend that the PTO failed to provide a proper motivation
to combine Williams and GNU. (App. Br. sec. VII, A. 4).
The Examiner’s stated rationale is reproduced below:
Therefore, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to put the
assertion in the operation system code to monitor the error from
the system call. One would have been motivated to do so to
display all the error information and further help to debug
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problem as suggested by GNU (see for example, p.1, section
"Explicitly Checking Internal Consistency", first paragraph,
"These kinds of checks are helpful in debugging problem...").
(Ans. 4)
Based upon our review of the record, it is our view that the
Examiner’s proffered motivation consists of an articulated reasoning with
sufficient rational underpinning to support the ultimate legal conclusion of
obviousness.
The Supreme Court guides that the conclusion of obviousness can be
based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art, and an obviousness “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., 550
U.S. 398, 418 (2007). See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Here, it is our view that an artisan possessing common sense and
creativity at the time of the invention would have been familiar with various
methods of debugging computer programs. While we are fully aware that
hindsight bias often plagues determinations of obviousness, Graham v. John
Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme
Court has clearly stated that 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, 401
(2007)..
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We note that Appellants have not rebutted the Examiner’s legal
conclusion of obviousness by showing that the claimed combination of
familiar elements produces any new function. Therefore, we find
Appellants’ arguments unavailing regarding the combinability of the cited
Williams and “GNU” references for essentially the same reasons articulated
by the Examiner in the Answer. (Ans. 4, 17), and as further discussed above.
For these reasons, we find Appellants’ arguments unpersuasive that the
Examiner erred by improperly combining the cited references under § 103.

ISSUE (4)
Under §103, did the Examiner err in finding that the
combination of Williams, GNU and PHP, would have taught or
suggested recognizing an assertion request type, within the
meaning of independent claim 1?

ANALYSIS
Appellants contend that the “PHP” document does not disclose
recognizing an assertion request type. (App. Br. sec. 6). Appellants further
contend that the “PTO has failed to articulate how setting/getting various
assert flags corresponds to recognition of an assertion request type as
claimed in claim 1.” “The PTO has failed to identify any such disclosure or
teaching of an ‘assert request type’ in PHP.” (App. Br. sec. VII A. 5).
We disagree for the reasons discussed infra.
The Examiner cited PHP to teach an assertion request type as “Assert
Options.” (Ans. 17). The Examiner articulated how the cited portion of PHP
corresponds to the recognition of an assertion type. (Ans. 17). We note that
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Appellants have not addressed the Examiner’s specific findings articulated
in the Answer.
Appellants’ conclusory arguments do not persuade us of Examiner
error. (See App. Br. sec. VII A. 5). This form of argument is ineffective in
demonstrating error in the Examiner’s underlying factual findings or
ultimate legal conclusion of obviousness. See Ex parte Belinne, No. 2009-
004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf
Based on this record, we are not persuaded that the Examiner erred in
finding that the combination of Williams, GNU and PHP would have taught
or suggested recognizing an assertion request type, within the meaning of
independent claim 1.
Appellants also contend that the cited references do not teach or
suggest determining a component that sourced the assertion request, as
recited in claim 1. We note that this limitation is complementary to the
“recognizing” limitation discussed supra. Regarding this limitation, we
agree with the Examiner’s responsive argument as articulated on page 18 of
the Answer.
Based on this record regarding Issues 1-4, we sustain the Examiner’s
rejection of representative claim 1, and claims 4, 5, 7-11, 14, 15, 17-21, 24,
25, 27-31, 34, 35, 37-41, and 44-49, which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Claims 6, 16, 26, and 36 – second-stated rejection
As noted above, claims 6, 16, 26, and 36 stand rejected over the
combination of Willams, GNU, PHP and Cantrill. Appellants do not present
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separate arguments for the patentability of these claims and instead rely on
the arguments previously presented for claim 1, which we have fully
addressed supra, and found unpersuasive. Therefore, we sustain the
Examiner’s obviousness rejection of claims 6, 16, 26, and 36 for the same
reasons discussed above regarding independent claim 1.

DECISION
We affirm the § 103 rejections of claims 1, 4-11, 14-21, 24-31, 34-41,
and 44-49.
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) (2011).

ORDER
AFFIRMED

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