Ex Parte Tarbell et al

Patent Trial and Appeal Board

May 28, 2013

10531260 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES SCOTT TARBELL and DAVID JOHN GARVEY

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Appeal 2010-010934
Application 10/531,260
Technology Center 2100
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Before ERIC B. CHEN, JOHNNY A. KUMAR, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 46-91. Claims 1-45, 92, and 93 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a method of journaling changes to
system objects. A dummy function is substituted for a system function and
the system function is executed under the operation of the dummy function.
Copies of system objects changed by the execution of the system function
are generated for journaling. (Abstract.)
Claim 46 is exemplary, with disputed limitations in italics:
46. A computer implemented method of journaling in
a database journal changes to system objects in an operating
system with a processor, the method including:
i) executing a dummy function in place of a system
function when the system function is called;
ii) executing the system function under operation of
the dummy function; and generating copies of system objects,
changed by the execution of the system function, for journaling.

Claims 46-56, 62-66, 68-78, and 84-91 stand rejected under 35 U.S.C.
§103(a) as being obvious over Bills (U.S. Patent Application Publication
No. 2002/0152195 A1; Oct. 17, 2002) and Tanaka (U.S. Patent No.
6,665,735 B1; Dec. 16, 2003).
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Claim 67 stands rejected under 35 U.S.C. §103(a) as being obvious
over Bills, Tanaka, and Cloud (U.S. Patent No. 6,253,369 B1; June 26,
2001).1
Claims 57-59 and 79-81 stand rejected under 35 U.S.C. §103(a) as
being obvious over Bills, Tanaka, and Owen (U.S. Patent Application
Publication No. 2003/0217031 A1; Nov. 20, 2003).
Claims 60, 61, 82, and 83 stand rejected under 35 U.S.C. §103(a) as
being obvious over Bills, Tanaka, and Suzuki (U.S. Patent No. 6,829,768
B1; Dec. 7, 2004).

ANALYSIS
We are unpersuaded by Appellants’ arguments (App. Br. 11-14) that
the combination of Bills and Tanaka would not have rendered obvious
independent claim 46, which includes the limitation “generating copies of
system objects, changed by the execution of the system function, for
journaling.”
The Examiner found that a method 500 of Bills to journal an object
when a system user explicitly creates an object or modifies an existing
object corresponds to the limitation “generating copies of system objects,
changed by the execution of the system function, for journaling.” (Ans. 4;
Bills, ¶ [0058], fig. 5.) We agree with the Examiner.
Claim 46 recites “generating copies of system objects, changed by the
execution of the system function, for journaling” (emphasis added). Thus,

1 Appellants do not present any arguments with respect to the rejection of
dependent claim 67 under 35 U.S.C. §103(a). Thus, any such arguments are
deemed to be waived. See 37 C.F.R. § 41.37(c)(iv).
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the phrase “changed by the execution of the system function” modifies the
claim language “copies of system objects.”
Bills relates to “automatic journaling of objects in a computer file
system.” (Abstract.) Bills explains that a journal file system (JFS) is a file
system with a digital storage device that maintains data integrity (¶ [0006]),
such that one primary area of support when an object is journaled is
“recording changes to objects” (¶ [0008]). Furthermore, Figure 5 of Bills
illustrates “a method 500 to journal an object whenever an application or a
system user explicitly creates an object or modifies an existing object.”
(¶ [0058].) Thus, Bills teaches the limitation “generating copies of system
objects, changed by the execution of the system function, for journaling.”
Appellants argue that “Bills is not concerned with storing objects after
they have changed.” (App. Br. 12.) In particular, Appellants argue that “the
JFS 56 of Bills does not store objects after they have changed; it merely
keeps a record of the changes that were made and stores an indication as to
‘whether a journal record 61 should be journaled upon the occurrence a
predefined event affecting an object.’” (App. Br. 14 (quoting Bills,
¶ [0045]).) However, the claim language “generating copies of system
objects, changed by the execution of the system function . . .” is broad
enough to encompass the JFS of Bills, which records changes to objects
during journaling. Furthermore, claim 46 does not expressly define when
the claimed “objects” are journaled.
Thus, we agree with the Examiner that the combination of Bills and
Tanaka would have rendered obvious independent claim 46, which includes
the limitation “generating copies of system objects, changed by the
execution of the system function, for journaling.”
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We are further unpersuaded by Appellants’ arguments (App. Br. 14-
16) that the Examiner improperly combined Bills and Tanaka.
The Examiner acknowledged that Bills does not disclose the
limitations “executing a dummy function in place of a system function when
the system function is called” and “executing the system function under
operation of the dummy function” (Ans. 4), and thus relied upon Tanaka for
teaching a replaced function (e.g., func2) that is executed instead of an
original function (e.g., func1) (Ans. 4; Tanaka, col. 2, ll. 48-55; col. 6, ll. 9-
12). The Examiner concluded that:
it would have been obvious to one having ordinary skill in the
art at the time of invention was made to modify Bills’s system
to comprise: executing a dummy function in place of a system
function when the system function is called, as taught by
Tanaka, in order to expand a programming function without
altering the original programming function of the system.
(Ans. 4 (citation omitted).) We agree with the Examiner.
Tanaka relates to “changing a dynamic link library function.” (Col. 1,
ll. 10-11.) Tanaka further describes a program module, which implements a
dynamic linkage, such that “functions having the same names as the
replaced function names are linked and are executed in place of an original
function.” (Col. 2, ll. 48-55.) In particular, “at the time of executing the
program module, the func2 is called instead of the func1 and a preprocess or
a postprocess can be added to the process of the func1” (col. 6, ll. 9-12),
such that the preprocess or the postprocess is executed to expand a function
without altering the original function (col. 2, ll. 58-60). Thus, Tanaka
teaches the limitations “executing a dummy function in place of a system
function when the system function is called” and “executing the system
function under operation of the dummy function.”
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A person of ordinary skill in the art would have recognized that
incorporating the method of Tanaka for executing a replaced function (e.g.,
func2) instead of an original function (e.g., func1) with the known method of
Bills for journaling modifications to objects, would improve Bills by
expanding a function without altering the original function. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Similarly, the combination of
Bills and Tanaka is nothing more than incorporating the known method of
Tanaka for executing a replaced function (e.g., func2) instead of an original
function (e.g., func1) with the known method of Bills for journaling
modifications to objects, to yield predictable results. Id. at 416. Thus, we
agree with the Examiner (Ans. 4) that modifying Bills to incorporate the
method of Tanaka for executing a replaced function instead of an original
function, would have been obvious.
Appellants argue that:
because Tanaka is related to problems wholly unrelated to
database journaling, it is clear that (l) Tanaka is not “reasonably
pertinent” to Applicant’s field of endeavor, (2) would not have
“logically . . . commended itself to an inventor’s attention in
considering his or her invention as a whole,” and therefore (3)
cannot be considered analogous art.
(App. Br. 15.) However, Appellants’ Specification describes that “[t]he
creation, deletion and changing of system objects may be recorded in the
Audit Journal for the primary purpose of providing an audit of activity
related to these objects.” (¶ [0002].) Tanaka “relates to a method of
changing a dynamic link library function efficiently and a computer system
for executing the same” (col. 1, ll. 10-12), such that “[a] linker is a program
which links object modules, acquired by separate compiling, into a single
loadable module by adjusting a reference relationship among the object
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modules or addresses” (col. 1, ll. 14-17). Thus, Tanaka is from the same
field of endeavor as Appellants’ claimed invention because both relate to the
manipulation of objects (e.g., creating, deleting, modifying or linking) in a
computing system. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellants further argue that “[o]ne of ordinary skill in the art at the
time of the invention would not have modified Bills in view of Tanaka in the
manner alleged in the Office Action ‘to expand a programming function
without altering the original programming function of the system.’” (App.
Br. 15.) However, Appellants have not provided any persuasive arguments
or rebuttal evidence to address why the rationale provided by the Examiner
is not proper.
Therefore, the Examiner has properly combined Bills and Tanaka to
reject independent claim 46 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of independent claim 46 under
35 U.S.C. § 103(a). Claims 47-56 and 62-66 depend from claim 46, and
Appellants have not presented any additional substantive arguments with
respect to these claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). The arguments presented do not point out with
particularity or explain why the limitations of the dependent claims are
separately patentable. Instead, Appellants merely provides citations to
Tanaka with a conclusory statement that Tanaka does not teach the
limitations of the dependent claims. Therefore, we sustain the rejection of
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claims 47-56 and 62-66 under 35 U.S.C. § 103(a), for the same reasons
discussed with respect to independent claim 46.
Independent claim 68 recites limitations similar to those discussed
with respect to independent claim 46, and Appellants have not presented any
additional substantive arguments with respect to this claim. We sustain the
rejection of claim 68, as well as dependent claims 69-78 and 84-91, for the
same reasons discussed with respect to claim 46.
Although Appellants nominally argue the rejection of dependent
claims 57-59 and 79-81 separately (App. Br. 17), the arguments presented
do not point out with particularity or explain why the limitations of the
dependent claims are separately patentable. Instead, Appellants argue that
“[t]he further introduction of Owen does not make up for these fundamental
deficiencies [of Bills and Tanaka].” (Id.) We are not persuaded by these
arguments for the reasons discussed with respect to claims 46 and 68, from
which claims 57-59 and 79-81 depend. Accordingly, we sustain this
rejection.
Although Appellants nominally argue the rejection of dependent
claims 60, 61, 82, and 83 separately (App. Br. 17), the arguments presented
do not point out with particularity or explain why the limitations of the
dependent claims are separately patentable. Instead, Appellants argue that
“[t]he further introduction of Suzuki does not make up for these fundamental
deficiencies [of Bills and Tanaka].” (Id.) We are not persuaded by these
arguments for the reasons discussed with respect to claims 46 and 68, from
which claims 60, 61, 82, and 83 depend. Accordingly, we sustain this
rejection.

Appeal 2010-010934
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DECISION
The Examiner’s decision rejecting claims 46-91 is affirmed.
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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